Overview
Chris Kennerly is a partner in the Intellectual Property practice at Paul Hastings, and is Chair of the Litigation Department in its Palo Alto office. He focuses on patent infringement and trade secret litigation in federal courts. His experience spans a broad range of technologies including cellular and wireless devices and networks, computing and data networks, Internet and Web technology, software and business methods, semiconductors and electronics; and medical devices and instrumentation.
Mr. Kennerly has significant experience leading teams in highly complex cases nationwide, particularly in prominent venues such as California, Delaware, and Texas, and has successfully defended dozens of cases throughout the Eastern District of Texas. He typically "quarterbacks" cases from filing through resolution, and is familiar in the "first chair" role in both the courtroom and other settings.
He has frequently handled parallel inter partes review (IPR) and similar proceedings, including oral argument before the PTAB.
Mr. Kennerly has also counseled public and private companies on many aspects of IP protection, licensing, and dispute resolution. He has helped clients develop and enforce robust patent portfolios that protect substantial revenue streams and reduce exposure to IP claims.
Recognitions
- Named a Litigation Trailblazer of 2016 by The National Law Journal
- Repeatedly named a Northern California Super Lawyer by Thomson Reuters
- Repeatedly named one of the "Top 75 Litigators" and "Top IP Litigators" in California by Daily Journal
- Repeatedly named an "IP Star" by Managing Intellectual Property
- Previously named a "Rising Star" in Texas and Northern California in IP Litigation by Law & Politics
- Previously named one of the "Best Lawyers Under 40" by D Magazine
- Named Top IP Practice by both Intellectual Asset Management (IAM) Patent 1000 and Managing IP
Education
- University of California at Berkeley, B.S. in Bioengineering
- The University of Texas at Dallas, M.S. in Electrical Engineering
- Southern Methodist University School of Law, J.D. (cum laude, Order of the Coif, Articles Editor of the SMU Law Review), 1995
Representations
Recent IP Litigation matters include:
- Successfully defended AT&T in a patent case in the Eastern District of Texas involving a declared standards essential patent (SEP) relating to LTE uplink technology; won a motion to sever and stay shortly before trial, avoiding any exposure with respect to the asserted claims.
- Achieved complete victory for AT&T in a patent case in the Northern District of Texas directed to videoconferencing technology; argued and won a motion to dismiss with prejudice, and a seven-figure award of attorneys’ fees; presented oral argument to the Federal Circuit, securing affirmance of the district court victory.
- Achieved victory for Novatel Wireless in a patent case in Delaware directed to machine-to-machine (M2M) wireless technology; won a Daubert motion eliminating plaintiff’s damages case shortly before trial, leading to dismissal with prejudice for no payment.
- Successfully defended AT&T in a patent case in Delaware directed to MMS messaging; achieved dismissal with prejudice for no payment in connection with a motion for summary judgment of invalidity under Section 101.
Other selected IP Litigation matters include:
- Advanced Neuromodulation Systems (E.D. Tex.): Pursued patent and trade secret claims involving implantable spinal cord stimulation products; resolved shortly before trial.
- Alcatel (Dallas County, Tex.): Pursued trade secret litigation involving Intelligent Network switching, service creation and management and data communications; resolved during trial.
- AT&T (D. Del.): Defended patent infringement case involving database replication technology.
- AT&T (S.D. Cal.): Defended patent infringement claims directed to digital speech encoding technology.
- AT&T (D. Del.): Defended patent case involving Internet access technology.
- AT&T (C.D. Cal.): Defended patent infringement claims directed to digital video encoding technology.
- AT&T (N.D. Cal.): Defended patent case directed to IP-based video conferencing solutions; resolved after Markman ruling.
- AT&T (D. Del.): Defended patent infringement claims involving xDSL technology.
- AT&T (E.D. Tex.): Defended patent case involving packet switching, routing and fiber optic technologies; resolved after Markman ruling.
- AT&T (E.D. Tex.): Defended multi-patent litigation involving digital video recorder (DVR) software; resolved shortly before trial.
- AT&T (C.D. Cal.): Defended patent claims directed to privacy controls for navigation and other location-based services (LBS).
- AT&T (D. Del.): Defended multi-patent case directed to SMS and MMS messaging, 802.11 and Wi-Fi, and various other wireless communications technologies.
- AT&T (D. Md.): Defended patent litigation involving SMS text messaging; obtained summary judgment of non-infringement, which was affirmed on appeal to the Federal Circuit.
- AT&T (N.D. Tex.): Pursued patent infringement case involving vehicular telematics technology.
- AT&T (E.D. Tex.): Defended multiple patent cases directed to E-911, navigation and other location-based services (LBS).
- AT&T Mobility (E.D. Va.): Defended patent infringement claims directed to wireless email services.
- AT&T (W.D. Wa.): Defended patent infringement case involving vehicular telematics technology.
- eSpeed (N.D. Tex.): Patent infringement claims against commodities and options exchanges involving automated futures trading technology; resolved shortly before trial.
- Ericsson, AT&T Mobility, T-Mobile, etc. (E.D. Tex.): Defended patent infringement claims involving Intelligent Network prepaid wireless systems; resolved shortly before trial.
- Idearc (E.D. Tex.): Defended patent case involving relational database and search engine technology; resolved after Markman ruling.
- Defended allegations of trade secret misappropriation against foreign manufacturers in multiple jurisdictions.
- Leading Smartphone and Tablet Computer Manufacturer: Defended multiple patent cases in the E.D. Tex., C.D. Cal., S.D. Cal., and other venues directed to LTE uplink, mobile payments, power management, semiconductor design, WLAN, and other technologies.
- OpinionLab (N.D. Ill.): Multiple offensive and defensive patent infringement actions involving web page feedback solutions, including oral argument at the PTAB and the Federal Circuit.
- Verizon (E.D. Tex.): Defended patent infringement case involving Internet access technologies; resolved after Markman ruling.
- Verizon (N.D. Tex.): Defended patent infringement claims involving VoIP services.
- Verizon (E.D. Tex.): Defended patent case involving prepaid calling cards and point-of-sale activation technology; resolved during trial.
- Verizon Wireless (E.D. Tex.): Defended patent claims directed to enhanced mobile telecommunications services.
- Defended numerous other patent infringement cases in California, Delaware, Texas, Virginia, and other venues.
Selected Counseling and Transactional Matters
- Advanced Neuromodulation Systems: Patent prosecution, legal opinions and counseling related to neurostimulation systems; worked to protect IP developed through university and institutional research; facilitated IP due diligence for $1.3 billion acquisition.
- i2 Technologies: Developed and managed worldwide patent portfolio directed to supply-chain planning and business-to-business (B2B) collaboration software and business methods; successfully resolved patent, trademark and other IP disputes; provided comprehensive IP counseling.
- Liberty Media: Managed IP-related due diligence for $7.9 billion acquisition.
- OpinionLab: Worked with a successful start-up company to develop, license and enforce a broad patent portfolio directed to web page feedback software; handled patent, trademark and other IP disputes; provided comprehensive IP counseling.
- Dr. W. Keith Thornton: Worked with individual inventor to develop, license and enforce a worldwide patent portfolio directed to oral appliances to treat sleep disorders; provided comprehensive IP counseling.
- Tyco Healthcare: Conducted IP investigations and IP due diligence reviews for potential acquisitions.
Engagement & Publications
Selected Publications
- "The New Patent Joinder Rules," California Lawyer, September 2012
- "A Trip Through the Patent Funhouse: Identifying and Resolving Complex Legal and Business Issues," Inside the Minds: Developing a Patent Strategy, Aspatore Books, 2005
Selected Speeches and Presentations
- Panelist Eastern District of Texas Bench Bar Conference, Dallas, 2021 "Simplifying a Complex Case to Appeal to Jurors That Don’t Have an EE Degree"
- Panelist and Moderator, Eastern District of Texas Bench Bar Conference, Dallas, 2014-2018
- "NPE Litigation – Defense Strategies," (AIPLA), Webinar, Palo Alto, 2013
- "Extraterritorial Patent Enforcement Under Section 271(f)," Advanced Patent Law Institute, Stanford Program in Law, Science & Technology, Berkeley Center for Law & Technology and The University of Texas School of Law, San Jose, 2007
- "Avoiding Potholes on the Road to Exclusivity," (AIPLA), PPPT_Workshop, Washington, D.C., 2004–2006
- "Pre-Filing Patentability Searches: Why, How, and What Then?" (AIPLA), Spring Meeting, Dallas, 2004
- Panel Moderator, "Commercialization of IP Developed Through University Research," Southwest Bio, Venture Capital Conference, Houston, 2003
- "Intellectual Property Fundamentals: What Every Innovator Should Know," DeVry University, Dallas, 2002
- Various CLE presentations to in-house legal departments and large public audiences on claim construction, divided infringement, indirect infringement, PTAB proceedings, cloud computing, and other topics
Involvement
- Admitted to the State Bars of California and Texas
- United States Patent and Trademark Office
- United States Court of Appeals for the Federal Circuit
- United States District Courts for the Northern, Central, Southern, and Eastern Districts of California
- United States District Courts for the Northern and Eastern Districts of Texas
- Past Chair of Palo Alto Office Pro Bono Committee
- Past Chairman, Dallas Bar Association, Computer Law Section
- Fellow, Dallas Bar Foundation
- AIPLA, Patent Litigation Committee, Trade Secrets Committee, past Co-Chair of Subcommittee on Expert Issues, past Subcommittee on Damages Issues
- Past President, Dallas-Fort Worth Intellectual Property Law Association
- IEEE member
- Past member, Greater Dallas Chamber of Commerce, Technology Business Council, Life Sciences Leadership Committee, Communications Campaign Committee, Economic Development Council