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Allan M Soobert

Partner, Litigation Department
Washington, D.C.
2050 M Street NW
Washington, D.C. 20036
United States

Fax: 1(202) 551-0222

Overview

Allan M. Soobert is a first-chair litigator, who specializes in patent and trade secret litigation.

Mr. Soobert represents industry leaders and major technology companies in their most-significant intellectual property cases and has successfully handled numerous high-profile disputes. He has extensive experience in all phases of complex litigation, having litigated cases before trial and appellate courts across the United States as well as before the U.S. International Trade Commission (ITC) and U.S. Patent Trial and Appeal Board (PTAB).

Mr. Soobert has been repeatedly recognized as a leading IP litigator by Chambers USA, Super Lawyers, Legal 500, and Intellectual Asset Magazine (IAM), among others. In these publications, clients and peers alike have stated that he is "a creative thinker" with a "talent for handling the most complex IP disputes."

Mr. Soobert has held various leadership positions within the firm, including serving a four-year term as vice chair of the firm's 125+ lawyer Washington, DC Office. In 2016, he was awarded the firm's Excel award for excellence in client service

Notable Wins

  • Won a sweeping dismissal of claims under the RICO Act, the Lanham Act, the California Uniform Trade Secrets Act (CUTSA), and New York trade secret law, in a case brought against client Samsung Electronics over alleged misappropriation of augmented reality technology. Separately, Mr. Soobert convinced the Northern District of California to strike the plaintiff's infringement allegations, successfully driving an end to the matter.

  • Obtained summary judgment of non-infringement in the Eastern District of Texas (Tyler) on behalf of client Apple, on a patent that the plaintiff claimed covered Internet-enabled applications, such as Facebook, Twitter, and iTunes, among other popular iPhone apps. The ruling cut hundreds of millions of dollars from the plaintiff's damages claims, and the case settled shortly thereafter.

  • Obtained a complete defense jury verdict in Eastern District of Texas (Marshall) in favor of client Sun Microsystems, prevailing on numerous patent infringement, trade secret misappropriation, unfair competition and breach of contract claims. The jury not only found in Sun's favor on all liability issues, it invalidated both patents in suit.

  • Won a seminal case before the United States Supreme Court on behalf of eBay, in which the Supreme Court issued a 9-0 decision in eBay's favor, changing the standard for obtaining injunctive relief in all patent cases. The decision allows legitimate companies to defend themselves against claims by patent holding companies with little threat of an injunction.

  • Won a major patent infringement case in the District of Delaware on behalf of client McKesson, in which the jury returned a verdict of infringement in McKesson's favor on a patented technology that has saved the healthcare industry billions of dollars.

  • Obtained summary judgment of non-infringement in the Eastern District of Virginia on behalf of client Capital One, on a patent allegedly covering online payment methods.

  • Won an appeal for Intel before the U.S. Court of Appeals for the Federal Circuit on issues of first impression involving declaratory judgment jurisdiction, in an industry-wide patent dispute over the popular 802.11 wireless standards.

  • Won an appeal before the U.S. Court of Appeals for the Federal Circuit for Moser Baer India, the world's second largest manufacturer of CDs and DVDs, successfully obtaining judgment of no liability in favor of Moser Baer.

Prior to practicing law, Mr. Soobert worked as a satellite communications engineer for four years at SAIC. In 1989, he was recognized by the Office of the Secretary of Defense for his work on the development of the Joint U.S./U.K. Anti-Jam Interoperable Waveform Standard for defense satellite communications.


Representative Experience

  • Defendant Apple Inc. in patent litigation in the Eastern District of Texas involving various computer, tablet PC and smartphone features and functionality

  • Defendant Apple Inc. in patent litigation in the Eastern District of Texas involving various smartphone features and functionality

  • Defendant Applied Materials, Inc. in California state courts in a dispute over patent indemnification issues concerning semiconductor manufacturing equipment

  • Defendant AT&T Mobility in patent litigation in the Eastern District of Texas involving various smartphone features and functionality

  • Defendants Barclays Bank PLC and Barclays Capital Inc. in patent litigation in the Northern District of Illinois involving automated securities trading systems

  • Respondent Black & Decker in proceedings before the U.S. International Trade Commission concerning power tools

  • Defendant Ericsson Inc. in patent litigation in the Northern District of Texas involving cellular telephones

  • Defendant Greenway Medical in patent litigation in the Eastern District of Texas involving various medical claims auditing software

  • Defendant Lehman Brothers, Inc. in patent litigation in the Northern District of Illinois involving automated trading systems

  • Defendant Mova Corp. in pharmaceutical patent litigation. See Upjohn v. Mova, 31 F. Supp. 2d 211 (D.P.R. 1997) (jury verdict in favor of client Mova)

  • Respondent Novo Nordisk A/S in unfair importation (Section 337) proceedings before the U.S. International Trade Commission involving human growth hormone

  • Defendant Oshkosh Truck Corp. in patent litigation in the Eastern District of Texas involving online parts ordering systems

  • Defendant PayPal Inc. in patent litigation in the District of Delaware involving payment technology

  • Defendant Research In Motion (Blackberry) in patent litigation in the Middle District of Florida involving various smartphone features and functionality

  • Defendant Research In Motion (Blackberry) in patent litigation in the Eastern District of Texas involving various smartphone features and functionality

  • Defendant Samsung Electronics in patent and trade secret litigation in the Northern District of California involving augmented reality technology

  • Defendant Samsung Electronics in patent litigation in the Eastern District of Texas involving semiconductor devices and structures

  • Defendant Samsung Electronics in patent litigation in the Eastern District of Texas involving memory architecture and related functionality in mobile devices

  • Defendant Samsung Electronics in patent litigation in the District of Delaware involving memory device fabrication and architecture

  • Plaintiff Sandvik AB in patent litigation involving power tools. See Sandvik AB v. E.J. Co., 121 F.3d 669 (Fed. Cir. 1997) (ruling in favor of client Sandvik)

  • Defendant Shuffle Master, Inc. in the Southern District of Mississippi involving antitrust and patent infringement allegations

  • Respondent Tekon Electronics in unfair importation (Section 337) proceedings before the U.S. International Trade Commission involving electrical connectors

  • Defendants UBS AG and UBS Financial Services, Inc. in patent litigation in the Northern District of Illinois involving automated securities trading systems

  • Defendant ViewSonic Corp. in patent litigation in the Eastern District of Virginia involving wireless flat-panel displays

Accolades and Recognitions

Repeatedly recognized as a leading IP litigator by numerous publications, including:

  • Chambers USA 's "America's Leading Lawyers for Business"

  • Law & Politics' "Super Lawyers "

  • The Legal 500

  • Intellectual Asset Magazine (IAM)

  • DC Magazine

Education

  • George Washington University Law School, LL.M., 1997 (highest honors )

  • University of New Hampshire School of Law, J.D., 1993 (Editor, IDEA: The Journal of Law and Technology )

  • George Mason University, M.S.E.E., 1990

  • Pennsylvania State University, B.S.E.E., 1986

Speaking Engagements

  • Frequently writes on intellectual property topics, and his work has been cited by leading publications, law reviews, and treatises, as well as in proceedings before the U.S. House of Representatives

Involvement

  • Member of the Bars of Virginia and the District of Columbia, as well as the U.S. Patent and Trademark Office, the U.S. Supreme Court, the U.S. Court of Appeals, Federal Circuit, the U.S. District Court, Eastern District of Virginia, and the U.S. District Court, Eastern District of Texas, among others.

  • Active in pro bono matters and has won multiple appeals before the Veterans' Board of Appeals on behalf of disabled veterans.

  • Officer in the Giles S. Rich American Inn of Court, which is hosted by the United States Court of Appeals for the Federal Circuit.

  • Frequently serves on the faculty for various intellectual property programs sponsored by the Practicing Law Institute, the American Bar Association and other industry organizations.

Practice Areas

Litigation
Patent Office
Patent Litigation
ITC Section 337 Investigations
Technology
Intellectual Property

Languages

anglais

Admissions

District of Columbia Bar
Virginia Bar
United States Patent & Trademark Office

Education

The George Washington University Law School, LL.M. 1997
University of New Hampshire School of Law, J.D. 1993
George Mason University, M.S.E.E. 1990
The Pennsylvania State University, B.S.E.E. 1986

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