Blair M. Jacobs is a partner in the Intellectual Property practice at Paul Hastings based in the firm's Washington, D.C. office. For more than three decades, Mr. Jacobs has served as lead trial counsel representing clients in intellectual property and trade secret matters in federal district courts throughout the U.S. He is also one of the country's foremost practitioners at the U.S. International Trade Commission ("ITC"). Mr. Jacobs has led trial teams in some of the most significant patent disputes on behalf of the world's most prominent high technology companies.
Mr. Jacobs also regularly assists clients at the Federal Circuit Court of Appeals and has presented more than twenty-five oral arguments. He has served as lead appellate counsel on several well-known precedent setting opinions shaping patent law. In addition to his decades of trial and appellate work, Mr. Jacobs is a highly regarded strategist who works closely with clients to favorably shape the law.
Mr. Jacobs has litigated extensively before the ITC, having successfully represented both complainants and respondents in Section 337 investigations involving a wide range of products and technologies. He has handled numerous cases through trial and Commission review, and he has a deep understanding of the unique rules and practice in this particularized forum. Mr. Jacobs likewise has extensive experience in related proceedings before Customs and Border Protection, the Federal Circuit, and the Court of International Trade.
Mr. Jacobs has handled numerous bet-the-company patent litigation cases and has resolved disputes across the gamut of contentious IP issues. He is routinely selected to lead teams in significant matters requiring the highest level of trial acumen and planning. According to the IAM Patent 1000 - The World's Leading Patent Practitioners, he "creatively puts arguments together in a way that juries find entertaining - and persuasive."
He has significant experience handling competitor disputes in the most active patent forums. After leading a series of trial teams in trials in the District of Delaware, Mr. Jacobs was selected as one of a handful of outside counsel to serve on the Delaware Patent Study Group, a group designed to assist in recommending best practices in complex patent litigation. He maintains a robust practice in Delaware, the Eastern District of Texas, Western District of Texas, Eastern District of Virginia, and Central District of California, among others.
Accolades and Recognitions
Mr. Jacobs is recognized as one of the top patent trial lawyers in the country. In 2019, he was selected as a Fellow in the Litigation Counsel of America, an honor limited to less than one-half of one percent of North American lawyers, judges and scholars. That same year he was nominated for inclusion of 9 Figure Litigators, a group comprising America's most elite high stakes trial attorneys.
For several years, various publications have ranked him at the top echelon of his practice for patent litigation, ITC prowess, and separately for appellate skills at the Federal Circuit. In 2015, Mr. Jacobs and his team were designated "Legal Lions" for securing a California federal judge's agreement to toss a significant jury verdict based on a flawed damages methodology. That same result was chosen by the Daily Journal publication as a "Top Defense Result" of 2014, an award bestowed on case outcomes that will have a significant impact on intellectual property law going forward. He recently received recognition as an IP Trailblazer by the National Law Journal for convincing an Eastern District of Texas judge to dismiss his client from a case shortly before a scheduled trial based on novel precedent setting arguments.
Mr. Jacobs' success as a top-echelon patent litigator, ITC practitioner, and appellate advocate have been recognized by several leading lawyer ranking guides, including
Recognized as one of the top ITC patent litigators in the United States by The Legal 500 United States (2010-present)
Recognized in the 2011- present editions of IAM Patent Litigation 250 - The World's Leading Patent LitigatorsIAM Patent 1000 - The World's Leading Patent Practitioners
Recognized by IAM Patent 1000 separately for ITC Section 337 expertise
Recognized since 2014 by IAM Patent 1000 for expertise before the Federal Circuit
Named one of the Top IP Litigation and Appellate Lawyers in the D.C. Metro area by Super Lawyers (2012-present)
Recognized by Managing IP as an IP Star (2013-present)
Recent District Court and International Trade Commission (ITC) Experience
In the Matter of Certain Dental and Orthodontic Scanners and Software, (USITC 337-TA- 1090, 1091, 1144). - Lead trial counsel for Align Technology, maker of Invisalign and developer of industry leading intraoral scanners, in three International Trade Commission investigations through trial. Secured findings of infringement on Align Technology patents and exclusion order recommendation at ITC.
Align Technology, Inc v. 3Shape A/S and 3Shape, Inc. (Del.) - Represents Align Technology, maker of Invisalign and developer of industry leading intraoral scanners, in multiple Delaware cases involving patent infringement related digital dentistry.
Oyster Optics LLC v. Ciena Corporation (EDTX, NDCA) - Represents Ciena in two actions including eight patents concerning 40G and 100G optical fiber communications equipment.
Far North v. ADVA (WDTX) - represented ADVA in case involving router technology. Convinced plaintiff to drop case prior to answer being filed.
Represented Samsung Electronic through trial in patent litigation in the Eastern District of Texas involving semiconductor devices and structures.
CCE v. AT&T et al. (EDTX) - represented AT&T in case involving LTE technology. AT&T was dismissed from case shortly before trial.
Sycamore IP Holdings v. ADVA (EDTX) - Served as counsel for ADVA and secured an extremely favorable post-claim construction settlement on a patent related to coding schemes for optical communication systems.
Fairchild Semiconductors v. Power Integrations (Del.) - Served as lead trial counsel in two week jury trial in the District of Delaware on behalf of Fairchild. Jury returned verdict in favor of Fairchild on claims of induced infringement and awarded damages to Fairchild.
Core Optical v. Ciena Corporation (C.D. Cal.) - Served as lead trial counsel for Ciena in a case involving patented architecture for switching of signals in optical domains. Obtained a favorable settlement on behalf of Ciena based on a strong ownership defense developed through targeted discovery.
Labyrinth Optical v. Ciena Corporation (C.D. Cal.) - Served as lead trial counsel for Ciena in its defense against patent infringement claims initiated by Labyrinth Optical, an Acacia entity, involving patented architecture for switching equipment in transmitters and receiver telecommunications equipment.
Telecommunications Research Laboratories v. AT&T Corp. (N.J.) - Served as lead counsel for AT&T in its defense against infringement allegations involving optical networking technology patents, including ring-mesh networks and methods for creating telecommunications paths in a network after a span failure.
Power Integrations v. Fairchild International, et al. (N.D. Cal.) - Served as lead trial counsel for Fairchild and System General in several multi-week jury trials involving patents related to semiconductors used in power chargers for improving the efficiency of power conversion. Convinced court, in post-trial motions, to throw out jury's damages award, thus resulting in new trial.
Gordium Innovations v. Ciena Corporation (Del.) - Served as lead trial counsel for Ciena in a case involving patented architecture for configurable packet re-timing in network repeater hubs. The case settled favorably.
Represented a Japanese consumer electronics company in an ITC investigation that resulted in an initial determination of no infringement, invalidity, and no domestic industry. The case settled favorably.
Represented Nintendo and a Japanese consumer electronics company as respondents in an ITC investigation. The Administrative Law Judge issued an order granting summary determination to our clients.
Power Integrations v. Fairchild II (Del.) - Served as trial counsel for Fairchild and System General in a patent infringement case involving power conversion semiconductor technology. After trying the case before a jury for three weeks, obtained a verdict of non-infringement on behalf of Fairchild and infringement by Power Integrations on System General's patents.
In the Matter of Certain Electronic Devices, Including Mobile Phones and Tablet Computers, and Components Thereof (USITC 337-TA-847) and Nokia Inc., et al. v. HTC America, et al. (Del.) - Trial counsel for HTC in an ITC investigation involving nine patents and three district court actions involving an additional nine patents. The patents related to various aspects of handset technology. After knocking out five of the nine patents in the ITC prior to the hearing and two more as a result of trial, the parties reached a successful global settlement after the Commission granted review on multiple grounds concerning the two remaining patents.
Innovative Communications v. ooVoo, LLC (E.D. VA) - Lead counsel for ooVoo in a patent infringement case involving point-to-point Internet communication and Internet telephony software technologies.
Vextec Corporation v. Sentient Corporation (Tenn.) - Lead counsel for Vextec in a patent infringement and trade secret case brought in parallel with the Economic Espionage Act. The technology involved predictive models and computer-aided engineering services relating to product reliability, risk assessment and life of product prediction. The case settled favorably.
Sybase v. Telecommunications System (E.D. VA) - Represented Sybase and obtained an extremely favorable settlement in the competitor's litigation after filing counterclaim lawsuits and obtaining a positive claim construction ruling. The technology at issue involved enterprise software that manages, analyzes and mobilizes information on handheld devices, using relational databases, analytics, and data warehousing solutions.
Telecommunications Systems v. Sybase, et al. (E.D. VA and Del) - Represented Sybase and obtained an extremely favorable settlement after securing positive claim construction rulings in a case involving software patents related to location-based services for tracking mobile devices.
Tec Sec, Inc. v. IBM et al. (E.D. VA) - Represented Sybase in a patent infringement case involving encryption software methods and products.
Ciena Corporation v. Koninklijke KPN, N.V. et al. (E.D. VA) - Lead trial counsel for Ciena in a multi-patent enforcement action involving fiber optic telecommunications patents related to multi-signal switching to relieve congestion in optical networks.
In re Certain Products Containing Interactive Program Guide and Parental Controls Technology (USITC 337-TA-747 and Del.) - Counsel for Rovi Corporation in a matter against Toshiba Corporation involving program guides and parental controls. After a successful Markman argument, obtained a favorable settlement on behalf of Rovi that resolved multiple lawsuits filed against Toshiba. As part of the settlement, Toshiba agreed to take a license to Rovi's interactive program guide (IPG) patent portfolio. Toshiba and Rovi also agreed to work together to implement Rovi's technology in Toshiba's products.
Vellata LLC v. Ciena Corporation (C.D. Cal.) - Lead defense counsel for Ciena in a case involving allegations of infringement against Ciena's fiber optic switching products. The case was dismissed with prejudice after prior art was presented to plaintiff prior to an Answer being filed.
Lambda Optical LLC v. Ciena Corporation, et al. (Del.) - Lead counsel for Ciena and ADVA Optical in a patent infringement action brought by Lambda Optical, an Acacia entity, involving optical switches in telecommunication systems, including node architecture for modularized and reconfigurable optical networks.
NTP, Inc. v. HTC, et al. (E.D. VA) - Counsel for HTC in its defense against patent infringement allegations involving wireless cell phone and RF technology patents.
Mars, Inc. v. Naturex, S.A. (E.D. VA) - Represented Mars in an enforcement action related to nine patents involving cocoa flavanol and polyphenol. The case ended in an early agreement by the defendant to stop making the infringing products and to exit the U.S. market.
McKesson Corp. v. Swisslog (Del. and Federal Circuit) - Lead trial counsel representing McKesson in a case involving automated robotic storage systems for the packaging and dispensing of prescriptions within hospital wards. The case settled favorably after multi-week jury trial and appeal.
In the Matter of Certain Tunable Laser Chips, Assemblies, and Products Containing Same (USITC 337-TA-662) - Lead ITC counsel for Tellabs, Ciena, Nortel and ADVA Optical Networking in an ITC investigation involving fiber optic tunable lasers.
In the Matter of Certain Alendronate Products and Salts Containing Same (USITC 337-TA-584) - Lead ITC counsel for Cipla in its defense against patent infringement claims relating to a generic version of Fosamax®.
Ciena Corporation v. Corvis Corporation (Del.) - Trial counsel for Corvis in a competitor suit filed by Ciena asserting infringement of five patents relating to wavelength division multiplexing technology in fiber optic networks, including multiplexers, switches, amplifiers, transmitters, and receivers. The cases were tried before Delaware juries on multiple occasions and resulted in a favorable settlement after the appellate briefs were filed.
Recent Federal Court Circuit of Appeals Experience
SSL Services v. Citrix Systems, Inc. (Federal Circuit) - Served as appellate counsel for Citrix in an appeal involving GoToMyPC® and GoToMeeting® software products.
AstraZeneca v. Hanmi Pharmaceutical Co., Lt. (Federal Circuit) - Served as lead appellate counsel for Hanmi, the first Korean pharmaceutical company involved in ANDA litigation in the United States. On behalf of Hanmi, obtained an affirmance of complete summary judgment victory based on a claim construction ruling and an entry of judgment of non-infringement.
Pixion v. Citrix (Federal Circuit) - Served as lead appellate counsel for Citrix. Obtained a complete affirmance of summary judgment victory for Citrix based on the invalidity and non-infringement of Pixion's patents.
Power Integrations v. Fairchild (Federal Circuit) - Served as lead appellate counsel for Fairchild. Obtained a reversal of a large jury damages award against defendant Fairchild and an order by the appellate court that the plaintiff was entitled to virtually no damages, based on faulty claims of extraterritorial damages and other legal errors.
Convolve v. Seagate (S.D. NY and Federal Circuit) - Defended Seagate in district court and on appeal against claims of alleged patent infringement and trade secret misappropriation of disk drive technology, where the plaintiff sought damages in excess of $800 million. The case prompted the landmark Federal Circuit decision - In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc ) - in which the court overturned 24 years of precedent in Seagate's favor, thereby abolishing the duty of care standard for willful infringement. Obtained a complete dismissal of all claims on behalf of Seagate. On second appeal, the Federal Circuit affirmed the trade secret victories for Seagate, eliminating virtually all of the plaintiff's potential damages.
University of Richmond School of Law, J.D., 1990 (University of Richmond Law Review, Notes and Comments Editor, National Moot Court Team)
Wake Forest University, B.A., 1987
Admitted to practice in the District of Columbia and the Commonwealth of Virginia, the U.S. Court of Appeals for the Fourth, Fifth, Eighth, Eleventh and Federal Circuits, the U.S. Court of Appeals for the Armed Forces, the U.S. District Courts for the Eastern District of Virginia, and the U.S. Supreme Court.
Mr. Jacobs frequently lectures and writes on various topics, including trial tactics and trial advocacy, patent litigation strategies, practice before the ITC and Customs, strategies concerning allegations of trade secret misappropriation, appellate advocacy, and issues associated with complex trial strategy.
Teaches trial advocacy at the National Institute for Trial Advocacy and served on the faculty of the Attorney General's Advocacy Institute while at the DOJ, teaching trial advocacy, scientific evidence and expert witnesses, and appellate advocacy.
Previously served as a trial attorney with the United States Department of Justice (DOJ), where he served as first chair trial counsel in civil cases brought against the United States.
Selected to serve at the White House where he worked as counsel for the President's Foreign Intelligence Advisory Board on investigations involving human rights issues and the intelligence community.
Clerked for the Honorable Chief Judge Walter E. Hoffman of the U.S. District Court for the Eastern District of Virginia.