Overview
Lisa Nguyen is a partner in the Intellectual Property practice at Paul Hastings and is based in the firm’s Palo Alto office. She represents cutting-edge technology companies in intellectual property matters, particularly in litigation against non-practicing entities. Ms. Nguyen is adept at resolving disputes efficiently and identifying pragmatic solutions for her clients. Her practical and deliberate approach to prepare cases for trial regularly disposes of claims early in the process.
Ms. Nguyen has a proven track record obtaining successful trial verdicts, summary judgment rulings, and dismissals at the pleading stage. She has also obtained multiple walk aways for defendants (obtaining dismissals with no payment to plaintiffs), as well as attorneys’ fees. Ms. Nguyen represents both plaintiffs and defendants in complex multi-jurisdictional, multi-patent cases, and has substantial experience handling cases pending before district courts across the country, the International Trade Commission (ITC), and the Patent Trial and Appeal Board (PTAB).
Ms. Nguyen regularly speaks and writes on patent counseling and IP issues. Her speaking engagements include presentations at the Advanced Patent Law Institute, Licensing Executives Society, Berkeley Center for Law and Technology, the National Conference of Vietnamese American Attorneys, and the National Asian Pacific American Bar Association. Ms. Nguyen has been listed among the top 1% of Best Performing Attorneys in the PTAB by Patexia, Silicon Valley Business Journal’s Women of Influence, the Top 50 Women in the PTAB, an Asian Leader Worth Watching, and a Rising Star in IP Litigation.
Recognitions
- Asian Leaders Worth Watching, Diversity Journal, 2021
- Best Under 40, National Asian Pacific American Bar Association (NAPABA), 2020
- Rising Star in Intellectual Property Litigation, Northern California Super Lawyers, 2013-2016
- Top 50 Women in PTAB Trials, PTAB Bar Association, 2021
- Women of Influence, 2022, Silicon Valley Business Journal
- Top 1% of Best Performing Attorneys Overall, Patexia
Representations
- Meta Platforms in connection with representation as lead counsel in an eight patent case asserted by Jawbone Innovation involving noise suppression and voice activation detection technology. The case is still pending. [Jawbone Innovation v. Meta Platforms (W.D. Tex.)]
- Realtek Semiconductor in connection with representation as lead counsel in two litigations brought by ParkerVision involving down-conversion of RF signals to baseband signals. The case is still pending. [ParkerVision v. Realtek Semiconductor (W.D. Tex.)]
- Meta Platforms and Instagram in connection with representation as lead counsel in two litigations brought by Street Spirit involving multiple patents related to identity verifications. The Court granted dismissal with prejudice based on § 101 less than two weeks after oral argument. Plaintiff chose not to appeal [Street Spirit v. Meta Platforms (N.D. Cal.); Spirit Spirit v. Instagram (N.D. Cal.)]
- Hon Hai in connection with representation as lead counsel in a 13 patent case asserted by Bell Northern Research. After filing a motion for lack of personal jurisdiction, plaintiff voluntarily dismissed the case. [Bell Northern Research v. Hon Hai (S.D. Fla.)]
- ResMed in connection with representation as lead counsel in seven IPRs against NYU involving continuous positive airway pressure (CPAP) machines. Successfully obtained final written decisions finding all challenged claims unpatentable, invalidating over 140 claims across seven patents. [ResMed v. NYU (PTAB)]
- Niantic in connection with representation as lead counsel in a lawsuit brought by Flick Intelligence alleging infringement by Pokemon Go. Successfully obtained dismissal based on § 101. [Flick Intelligence v. Niantic (N.D. Cal.)]
- Meta Platforms and WhatsApp in connection with representation as lead counsel in IPRs against Wrinkl involving messaging technology. Successfully obtained final written decisions finding all challenged claims unpatentable. Patent Owner chose not to appeal. [Meta Platforms v. Wrinkl (PTAB)]
- Symantec and Veritas in connection with representation as co-lead counsel in a second lawsuit brought by IV alleging infringement of three patents. By the completion of summary judgment briefing, only two claims of one patent remained. Successfully obtained summary judgment of both non-infringement and invalidity based on § 101. [Intellectual Ventures v. Symantec (D. Del.)]
- NVIDIA in connection with defense in an eight-patent suit involving various semiconductor technologies, including fabrication, memory controllers, and SDRAMs. By the time of trial, only three patents remained. The judge declared a mistrial as to two patents, and the jury found the remaining patent not infringed. [Samsung Electronics. v. NVIDIA Corporation (E.D. Va.)]
- LSI defended against assertion of 12 patents by competitor Altera and represented LSI offensively in assertion of 12 additional patents in responsive counterclaims. The case settled after infringement contentions were served. [Altera v. LSI (C.D. Cal.)]
- Jaguar Land Rover in connection with a patent litigation involving instrument clusters. Successfully obtained summary judgment of invalidity and award of attorneys’ fees and costs. The Federal Circuit summarily affirmed both decisions. [Vehicle Interface Technologies v. Jaguar Land Rover (D. Del.; Fed. Cir.)]
- Symantec in connection with a second lawsuit brought by Uniloc involving software activation and anti-piracy software. Obtained favorable settlement for Symantec prior to claim construction. [Uniloc USA. v. Symantec (E.D. Tex.)]
- GEICO in connection with a patent litigation involving mobile applications. The case resulted in a walk away by the plaintiff months before trial. [MacroSolve, Inc. v. GEICO (E.D. Tex.)]
- Tropos Networks in connection with a patent litigation involving two patents related to mesh networking. Although the case had been pending for more than seven years, obtained a stay pending inter partes reexamination. The case settled on favorable terms during the stay. [IP Co., LLC v. Tropos Networks, Inc. (N.D. Ga.)]
- Linvatec in connection with a patent litigation involving nine patents related to suture anchors. Successfully ran the table on claim construction issues on all patents to obtain a favorable settlement shortly after the claim construction order issued. [Bonutti Skeletal Innovations v. Linvatec Corporation (M.D. Fla.)]
- Honda in connection with a patent litigation brought by Intellectual Ventures related to electric motors, successfully obtaining an initial determination of no violation after a one-week trial. [In the Matter of Certain Thermoplastic-Encapsulated Electric Motors, Components Thereof, and Products and Vehicles Containing Same II]
- AU Optronics in connection with a patent litigation brought by Thomson involving multiple patents related to LCD panels and semiconductor devices. After a one-week trial, the Administrative Law Judge issued an initial determination, finding that AU Optronics did not infringe any of Thomson’s patents, and invalidating most of the asserted claims. The finding of no violation was upheld by the Commission. [In the Matter of Certain Liquid Crystal Display Devices, Including Monitors, Televisions, And Modules, And Components Thereof]
Matters may have been handled prior to joining Paul Hastings.
news
Engagement & Publications
- “To Patent or Not to Patent Your Product? 7 Rules of Thumb to Follow,” Women 2.0, May 30, 2014
- “Confidentiality Agreements: Protecting Valuable Business and Technology Assets,” Women 2.0, April 29, 2014
- “25 Years of CAFC Inequitable Conduct Jurisprudence,” Patent Strategy & Management, Vol. 8, No. 7, December 2007
- “In Defense of Sell: Involuntary Medication and the Permanently Incompetent Criminal Defendant,” 597 University of Chicago Legal Forum, 2005.
Involvement
- Working with the Texas Civil Rights Project to investigate Houston ordinance limiting housing for parolees.
- Representing victims of domestic violence in applying for asylum and U Visas and obtaining restraining orders.
- Working with the Asian Pacific Islander Legal Outreach to aid victims of trafficking.
- Filing administrative complaints against police department for racial profiling of the Iu Mien community.