Sheppard MullinPartner

Stephen Sandor Korniczky

About Stephen Sandor Korniczky

Stephen Sandor Korniczky is a lawyer practicing entertainment, technology and advertising, intellectual property, copyrights and 23 other areas of law. Stephen received a B.S. degree from Polytechnic University in 1984, and has been licensed for 38 years. Stephen practices at Sheppard Mullin in San Diego, CA.

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September 01, 2010
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Areas of Law

  • Intellectual Property 2
    • Copyrights
    • Trade Secrets
  • Litigation
  • Transportation
  • Internet Law
  • Other 20
    • Entertainment, Technology and Advertising
    • False Advertising, Lanham Act and Unfair Competition
    • International Trade Commission (ITC)
    • Patent Litigation
    • Patent Prosecution and Counseling
    • Post-Grant Proceedings
    • Trademarks and Trade Dress
    • International Reach
    • Korea
    • Aerospace & Defense
    • Emerging Company & Venture Capital
    • Government Business
    • Hospitality
    • Life Sciences
    • Semiconductors
    • Sports
    • Telecom
    • Space & Satellite
    • Health Law
    • Automotive

Practice Details

  • Firm Information
    Position
    Partner
    Firm Name
    Sheppard Mullin
  • Representative Cases & Transactions
    Cases
    Experience: Representative Cases: u-blox AG et al v. Interdigital, Inc. et al (S.D. Cal.)
    Represent u-blox AG, u-blox San Diego, Inc.,
    u-blox America, Inc. in breach of contract
    declaratory judgment action seeking a FRAND rate setting pursuant to the ETSI
    3GPP IPR policies relating to alleged st
    ard-essential patents for 2G, 3G
    4G mobile cellular technologies.
    TCL Communication Technology Holdings v. Telefonaktienbolaget LM Ericsson
    Ericsson Inc. (C.D. Cal.)
    Represented TCL in a breach of contract
    declaratory judgment action relating to ETSI
    3GPP IPR policies
    Ericsson's obligation to license its St
    ard Essential Patents (SEPs) relating to 2G GSM/GPRS/EDGE, 3G UMTS
    4G LTE under Fair, Reasonable
    Non-Discriminatory (FRAND) terms.
    Ericsson Inc.
    Telefonaktienbolaget LM Ericsson v. TCL Communication Technology Holdings, et al. (E.D. Tex./C.D. Cal.)
    Represented TCL in a two-patent infringement action relating to Ericsson's alleged SEPs. Successfully moved to transfer action from Eastern District of Texas to the Central District of California.
    Ericsson Inc.
    Telefonaktienbolaget LM Ericsson v. TCL Communication Technology Holdings, et al. (E.D. Tex.)
    Represented TCL in a five-patent infringement action relating to telecommunication st
    ards, operation of chipsets
    Android OS. Four of five patents were invalidated after Patent Office instituted 17 of 17 IPR petitions.
    u-blox AG et al v. Interdigital, Inc. et al (S.D. Cal.)
    Represented u-blox AG, u-blox San Diego, Inc.,
    u-blox America, Inc. in breach of contract
    declaratory judgment action relating to FRAND
    the IPR policies of ETSI
    3GPP relating to alleged st
    ard-essential patents for 2G, 3G
    4G mobile cellular technologies.
    u-blox AG et al v. Sisvel International S.A. et al (S.D. Cal.)
    Represented u-blox AG, u-blox San Diego, Inc.,
    u-blox America, Inc. in breach of contract
    declaratory judgment action relating to FRAND
    the IPR policies of ETSI
    3GPP
    Lattice Semiconductors v. Technicolor (D. Del.)
    Represented founding member of HDMI st
    ard in SEP infringement action
    defense of allegations of breach of FRAND license obligations.
    MLR, LLC v. TCL Communication Technology Holdings Limited (N.D. Ill.)
    Represented TCL in a six-patent infringement lawsuit involving Wi-Fi enabled
    broadb
    -capable portable h
    sets. Case dismissed.
    Intellect Wireless v. HTC Corporation, et al. (N.D. Ill.)
    Represented Defendants HTC Corporation
    HTC America, Inc., in a two-patent infringement action brought by Intellect Wireless in the Northern District of Illinois. At trial, the Honorable William T. Hart ruled that Intellect Wireless had engaged in inequitable conduct before the Patent Office rendering the patents unenforceable
    dismissed the lawsuit. The decision was upheld on appeal to the Federal Circuit. Subsequently, the case was found to be exceptional,
    Intellect Wireless
    its litigation counsel were held jointly
    severally liable for $4,000,000 to reimburse HTC's attorney fees
    costs. The patents covered wireless portable communication devices that receive
    display caller ID information, non-facsimile pictures, video messages
    /or Multimedia Messaging Service (MMS).
    Intellect Wireless v. HP/Palm, et al. (N.D. Ill.)
    Represented Defendants Hewlett-Packard Co.
    Palm, Inc., in a two-patent infringement matter regarding wireless portable communication devices that receive
    display caller ID information, non-facsimile pictures, video messages
    /or MMS. The Honorable Rebecca Pallmeyer granted HP/Palm's motion for summary judgment that the patents are not directly infringed. Subsequently, the case was found to be exceptional,
    Intellect Wireless
    its litigation counsel were held jointly
    severally liable for HP/Palm's attorney fees
    costs.
    Internet Patents Corporation v. Tree.com, et al. (Fed. Cir.)
    On appeal to the Federal Circuit, obtained precedential opinion on behalf of Tree.com finding asserted patent ineligible on a Rule 12(b)(6) motion.
    Honeywell v. Samsung SDI
    Samsung Mobile Display (D. Del.)
    Represented Defendants Samsung SDI
    Samsung Mobile Display in a patent infringement action related to LCD backlighting technology. On summary judgment, we invalidated the asserted patent based on the on-sale bar after 23 other defendants licensed the patent-in-suit. The decision was upheld on appeal to the Federal Circuit.
    Conexant Systems, Inc. v. Novellus Corporation (Orange County Sup. Ct.)
    Arbitrated an indemnity action on behalf of Conexant against supplier of semiconductor manufacturing equipment. Client was awarded a confidential sum of money.
    Qualcomm v. Conexant Systems
    Skyworks Solutions, (S.D. Cal.)
    Represented defendants in an action initiated by Qualcomm asserting nine patents
    a trade secret misappropriation claim. Defendants counter-claimed with four patents
    a trade secret misappropriation claim of their own
    , subsequently, filed an early motion to compel Qualcomm's confidential license arrangement with customers, a motion for sanctions for withholding discovery
    a motion for summary judgment of non-infringement. After all three motions were granted
    Qualcomm's liability claim was eliminated, Qualcomm agreed to settle the dispute paying defendants tens of millions of dollars.
    Wi-LAN v. Alcatel (E.D. Tex.)
    Represented HTC Corporation
    HTC America, Inc., in a multi-patent lawsuit relating to 3G cellular technology, including HSDPA, HSUPA
    HSPA. After a six-day jury trial, obtained a complete defense verdict that HTC did not infringe the asserted patents
    all of the asserted claims were invalid as anticipated
    /or obvious. The trial victory led to a global settlement of several other lawsuits that Wi-LAN had filed against HTC.
    Wi-LAN v. Apple (E.D. Tex.)
    Represented HTC America, Inc., in a multi-patent lawsuit relating to Wi-Fi, HSPA, LTE
    CDMA2000 (EVDO Rev. A) technologies. Obtained favorable settlement after trial victory in related case.
    Wi-LAN v. PCD (E.D. Tex.)
    Represented Personal Communication Devices, LLC, (PCD) in a two-patent lawsuit relating to Wi-Fi
    CDMA2000 technologies. Obtained an extremely favorable settlement for PCD after filing three motions for summary judgment on PCD's behalf.
    Wi-LAN v. HTC (E.D. Tex.)
    Represented HTC Corporation
    HTC America, Inc., in a multi-patent lawsuit relating to Wi-Fi, LTE, Wi-MAX
    CDMA2000 (EVDO Rev. A) technologies. Obtained favorable settlement after trial victory in related case.
    Freeny, et al. v. HTC America, Inc. (E.D. Tex.)
    Represented HTC America, Inc., in a four-patent infringement lawsuit involving a multiple integrated machine system performing multiple digital functions from a single operating system. Favorable settlement reached.
    Novatel Wireless v. Franklin Wireless (S.D. Cal.)
    Represented Franklin Wireless, Inc., in a four-patent lawsuit relating to wireless modems, USB modems
    Wi-Fi.
    Golden Bridge v. HTC (D. Del.)
    Represented HTC Corporation
    HTC America, Inc., in a two-patent lawsuit relating to WCDMA 3G technology. Case was dismissed after Federal Circuit affirmed summary judgment decision of non-infringement.
    UO! IP of Delaware v. HTC (D. Del.)
    Represented HTC Corporation in a two-patent lawsuit relating to language translation devices. Successfully negotiated an early license on extremely favorable terms.
    MediaTek, Inc. v. Sanyo Electric Co. (E.D. Tex.)
    Represented plaintiff in a three-patent infringement action covering integrated chipset solutions for compressing video
    audio data in cameras, DVDs
    televisions. Case favorably settled on eve of trial.
    Taiwan Semiconductor Mfg. Co. v. Semiconductor Mfg. Int'l Corp. (N.D. Cal.)
    Represented defendant in an action of over $1 billion in damages claimed based on the alleged misappropriation of trade secrets
    infringement of fourteen patents regarding a variety of semiconductor fabrication processes, SRAM designs
    related technologies. Case favorably settled for a cross-license in exchange for $175 million.
    Turn-Key-Tech LLC v. Hitachi-Maxwell Ltd., et al. (S.D. Cal.)
    Represented plaintiff in a patent infringement action in the field of injection molding. Case favorably settled
    defendant agreed to license patent under confidential terms.
    Allied Steel & Tractor Products, Inc. v. Pierce Arrow Int'l, Inc., et al. (E.D. Wis.)
    Represented the plaintiff/patentee in a three-week infringement trial involving a patent in the pneumatic tool industry. The patent was held valid
    infringed,
    $14 million in damages were awarded.
    Apcon v. MRV Communications (C.D. Cal.)
    Represented MRV Communications, a leading provider of telecommunications equipment. After Apcon threatened MRV's customers
    sued MRV for patent infringement, we countersued with claims of patent misuse, inequitable conduct
    unfair competition. Within 10 months, Apcon surrendered its patent suit by agreeing to a no payment walk-away settlement
    agreed to issue a press release stating that MRV's products do not infringe any Apcon patent
    that MRV's customers can conduct business without fear of reprisal from Apcon.
    Datascape, Inc. v. Sony Ericsson (N.D. Ga.)
    Represented Sony Ericsson in a six-patent infringement action. The accused technology relates to data communications
    internet access in wireless devices.
    Datascape, Inc. v. Kyocera Wireless (N.D. Ga.)
    Represented Kyocera Wireless in a six-patent infringement action. The accused technology relates to data communications
    internet access in wireless devices.
    NovelPoint Tracking LLC vs. Hyundai Motor America (E.D. Tex.)
    Represented Hyundai Motor America in patent lawsuit relating to GPS-based multimedia navigation systems. Negotiated favorable settlement for client in early stages of litigation.
    NovelPoint Tracking v. TCT Mobile (E.D. Tex.)
    Represented TCT Mobile in a patent lawsuit relating to GPS technology. Obtained favorable settlement.
    Litex, Inc. v. Delphi Automotive Systems Corp. et al. (D. Mass.)
    Represented plaintiff in a two-patent infringement action covering non-thermal plasma enhanced catalytic converters for reducing pollutant emissions from motor vehicles. Case settled in arbitration under confidential terms.
    Directed Electronics, Inc. v. Allen Hayes
    LTH Electronics (S.D. Cal.)
    Represented plaintiff in a multiple patent infringement action in the field of electromagnetic sensors in the vehicle security industry. Case settled after preliminary injunction obtained.
    Directed Electronics, Inc. Patent Enforcement Campaign (California, Texas
    New York District Courts)
    Represented plaintiff in a multiple patent infringement action against over 40 infringers in the field of electromagnetic sensors in the vehicle security industry. Consent judgment, permanent injunctions
    /or damages obtained in all cases.
    Amersham Pharmacia Biotech, Inc. v. The Perkin-Elmer Corporation (
    Celera Genomics) (N.D. Cal.)
    Represented the plaintiff/patentee in an infringement action in the DNA sequencing industry seeking over $1 billion in damages. Won motion for summary judgment that patent is infringed. Case favorably settled on confidential terms.
    IDEXX Laboratories, Inc., et al. v. Neogen Corporation (D. Conn.)
    Represented the plaintiffs in a patent infringement action in the field of diagnostics for E.coli
    total coliforms. Case favorably settled after preliminary injunction obtained.
    Environetics, Inc. et al. v. Millipore Corporation (D. Conn.)
    Represented Plaintiffs Environetics, Inc., Access Medical Systems, Inc.,
    two Yale Professors in a patent infringement action against Millipore Corporation to enforce a patent covering a system for testing water samples for the presence of certain bacteria
    microbes, specifically E. coli
    coliforms. On the eve of trial, Millipore agreed to exit the business, discontinue selling its infringing product
    pay Plaintiffs a confidential sum of money.
    Edberg v. CPI-The Alternative Supplier, Inc. (D. Conn.)
    Represented plaintiff in patent infringement suit to enforce patents covering diagnostic for E. Coli
    total coliforms. Case favorably settled.
    GenSci Regeneration Lab., Inc. v. Osteotech, In (C.D. Cal.)
    Represented Plaintiff in declaratory judgment, unfair competition
    business tort action involving bone regeneration patents
    technology. Case favorably settled.
    Nanogen, Inc. v. Motorola, Inc., et al. (S.D. Cal.)
    Represented the plaintiff in a declaratory judgment action of non-infringement
    patent invalidity in the area of DNA biochip arrays. Case favorably settled.
    DigiVision, Inc. v. DigiVision Satellite Services, Inc., et al. (S.D. Cal.)
    Successfully represented plaintiff, a national video enhancement technology producer, against trademark infringer. Case settled in mediation after defendant agreed to discontinue use of mark.
    Laminating Co. of America v. Tri-Star Laminates (C.D. Cal.)
    Represented the defendants in a trade secret theft action in the printed circuit board industry. Case favorably settled.
    Martin v. Walt Disney Internet Group
    ESPN (S.D. Cal.)
    Successfully defended Disney
    ESPN against motion for preliminary injunction. Decision was subsequently upheld by the Ninth Circuit Court of Appeals.
    Microsoft Corporation v. Lindows.com, Inc. (W.D. Wa.)
    Represented defendant, a computer operating system developer, in trademark
    unfair business practice action. Defeated Microsoft's motion for preliminary injunction
    obtained ruling from the Court questioning the validity of the 'Windows' trademark.

Experience

  • Bar Admission & Memberships
    Admissions
    1988, California
    United States Patent and Trademark Office
    Memberships

    Memberships

    American Bar Association (ABA), Member

    American Intellectual Property Law Association (AIPLA), Member

    Barrister, Order of Veritas

    Barrister, Order of Certus

    Diversity Law Institute, Member

    Diabetes Research Connection (DRC) - Vice-Chair, Board of Directors (2021 to present)

    Juvenile Diabetes Research Foundation (JDRF), San Diego Chapter - Board Member (2008-2014)
    Nominating Committee (2015-2022)

    National Asian Pacific American Bar Association (NAPABA), Platinum Member

    Polytechnic University Alumni Association - Executive Council (1997-2001)

    San Diego Intellectual Property Law Association - President, (2000-2001), Board Member (1997-2002)

    San Diego SWAT Officers Association, San Diego Police Department - Board Member (2012-present)

    State Bar of California

    San Diego County Bar Association

    Trial Law Institute, Member

    University at Buffalo School of Law (SUNY) - Dean's Advisory Council (2014 to present)

    USC Intellectual Property Institute - Committee Member (2010-present)

    Bar Fellowship
    in the Litigation Counsel of America. In addition, he is listed in Chambers USA and Legal 500, and is recognized by his peers as among The Best Lawyers in America. He has also been honored as one of the Top 30 IP Attorneys in California by the Daily Journal, a San Diego Super Lawyer, and one of the Top 10 IP Litigators in San Diego by the San Diego Daily Transcript. In 2015, AmLaw Daily named him “Litigator of the Week” for his victory in the Intellect Wireless v. HTC Corp. litigation.
    •Litigation Star, Benchmark Litigation, 2016

    Articles

    •Top Intellectual Property Attorneys of 2015 - Stephen Korniczky, Daily Journal, April 22, 2015
    •Litigator of the Week: Stephen Korniczky of Sheppard Mullin, The American Lawyer, January 15, 2015
    •Top Intellectual Property Attorneys of 2014 - Stephen Korniczky, Daily Journal, April 9, 2014
    • Federal Circuit Affirms Inequitable Conduct Determination Under Therasense But For Exception and Reaffirms Significance of Rohm & Haas, Sheppard Mullin Intellectual Property Law Blog, October 9, 2013
    • Lawyer Explains How To Bag A Patent Troll At Trial, Forbes, July 23, 2013
    • Lawyers Weigh In On Obama 'Patent troll' Initiatives, Law360, June 5, 2013
    • Q&A With Sheppard Mullin's Steve Korniczky, Law360, May 3, 2013
    • Vying for the Best in Intellectual Property, Daily Journal, February 9, 2011
    •“Building A Great Wall For Your Intellectual Property in China - Challenges and Opportunities for U.S. Companies” (2004)
    • Verdict Forms: A Peek Into The 'Black Box', Jury Trials In Patent And Other High Tech Litigation V (1995)
    • An Alternative View: The Hilton Davis Decision, New Matter, State Bar of California Intellectual Property Section, Vol. 21, No. 4 (Winter/Spring 1997)
    • Supreme Court Clarifies Doctrine of Equivalents, San Diego Business Journal (March 31, 1997)
    • Proving Infringement In View Of Markman v. Westview Instruments, Inc., and Hilton Davis Chemical Co. v. Warner-Jenkinson Co.: Who Does What and When?, Advanced Intellectual Property Litigation Techniques 101-119 (December 1995) (also on file with the American Bar Association)
    • So Your Company is Growing and Prospering: Are Your Patents Still Enforceable?, San Diego Business Journal, Vol. 19, No. 21 (May 25, 1998)
    • How to Expand the Value of Your Patent Portfolio, San Diego Business Journal, Special Law Report Section (February 24, 1997)
    • China Issues White Paper Setting Forth Efforts, Progress In Protecting IP, San Diego Transcript, Law Week 2005 (May 3, 2005)
    • China's Intellectual Property Law Changes Will Help U.S., Los Angeles Daily Journal, August 9, 2004
    •Editor, San Diego Intellectual Property Law Association Newsletter, 1998

    Media Mentions

    •Top Litigators Share Winning Strategies

    The National Law Journal, November 2, 2015
    •Niro Haller, Client Ordered To Pay HTC $4.1M In Patent Suit

    Law360, July 21, 2015
    •Recent Victories by Sheppard Mullin's Intellectual Property Group

    Legal Times (Korea), March 5, 2015

    Speaking Engagements

    •“Inequitable Conduct - Unwinding The Tangled Web Of Deceit, ” San Diego Intellectual Property Law Association, San Diego (May 29, 2014); Los Angeles Intellectual Property Law Association, Spring Seminar, Ojai Valley, California (June 6-8, 2014)
    •“Inequitable Conduct - Still A Viable Defense?, ” New Jersey Intellectual Property Law Association, Patent Litigation Seminar, Iselin, New Jersey (March 12, 2014)
    • Thinking Outside The Box - A Case Study For Defeating The Patent Troll, The State Bar of California 31st Annual Intellectual Property Institute, Santa Barbara (November 2-4, 2006)
    • A View From the Bench - Exploring Regional Patent Litigation Practices in the California District Courts, The State Bar of California 30th Annual Intellectual Property Institute, Napa Valley (November 4-5, 2005)
    • Patent Litigation - Local Rules and Practices in the California Courts - Using Early Discovery Rules, Markman Hearings, and Court Directed Settlement Conferences to Manage and Budget Your Case, The State Bar of California 29th Annual Intellectual Property Institute Conference, Anaheim (November 6, 2004)
    • Inequitable Conduct - Knaves, Jackals and Defiling the Temple of Justice, ABA - Section of Intellectual Property Law, Summer IPL Conference, San Diego (June 19, 2003)
    •Co-chair, Patent Procurement, Licensing and Litigation In China, the Center for American and International Law, ILT Forum, San Francisco (January 19-20, 2006)
    •“Building A Great Wall For Your Intellectual Property in China - Challenges and Opportunities for U.S. Companies” (2004)
    • Understanding Intellectual Property Strategies Under The New Accounting Model, San Diego (March 28, 2002)
    • Owning Markets: Proven Strategies For Intellectual Property Success, San Diego (April 26, 2002)

    Events

    •Transatlantic Patent Strategies: Practical Considerations for a Post 2015 World

    October 14, 2015
    •Inequitable Conduct - Unwinding A Patent Troll's Tangled Web of Deceit

    Hosted by Korea In-House Counsel Forum

    Seoul International Arbitration Center, May 20, 2015

    Clerkships

    •Judicial Law Clerk to the Honorable Giles Sutherland Rich, U.S. Court of Appeals for the Federal Circuit from 1991 to 1993 Member:

    Memberships

    •American Bar Association (ABA) - Amicus Brief Committee
    •American Bar Foundation - fellow
    •American Intellectual Property Law Association (AIPLA) - Federal Litigation Committee, Model Patent Jury Instructions Subcommittee
    •Juvenile Diabetes Research Foundation (JDRF), San Diego Chapter - Board Member; Chair, Promise Ball Sponsorship Committee (2008-2014)
    •National Asian Pacific American Bar Association (NAPABA) - Programing Committee (2015)
    •Polytechnic University Alumni Association - Executive Council (1997-2001)
    •San Diego Intellectual Property Law Association - President, (2000-2001), Board Member (1997-2002), Amicus Brief Committee (1997-2002)
    •San Diego SWAT Officers Association, San Diego Police Department - Board Member (2012-present)
    •State Bar of California
    •San Diego County Bar Association
    •USC Intellectual Property Institute - Committee Member (2010-present) Fellow: in the Litigation Counsel of America. In addition, he is listed in Chambers USA and Legal 500, and is recognized by his peers as among The Best Lawyers in America. He has also been honored as one of the Top 30 IP Attorneys in California by the Daily Journal, a San Diego Super Lawyer, and one of the Top 10 IP Litigators in San Diego by the San Diego Daily Transcript.

    Clerkships

    Judicial Law Clerk to the Honorable Giles Sutherland Rich, U.S. Court of Appeals for the Federal Circuit from 1991 to 1993 Member:

    Memberships

    •Committee Member, 2014 USC Intellectual Property Institute

    •American Bar Association - Amicus Brief Committee

    •American Intellectual Property Law Association - Federal Litigation Committee, Model Patent Jury Instructions Subcommittee

    •Juvenile Diabetes Research Foundation, San Diego Chapter - Board Member; Chair, Promise Ball Sponsorship Committee

    •Polytechnic University Alumni Association - Executive Council (1997-2001)

    •San Diego Intellectual Property Law Association - president, 2000-2001, Board member (1997-2002)

    •State Bar of California

    •San Diego County Bar Association

  • Education & Certifications
    Law School
    State University of New York - Buffalo School of Law
    Class of 1987
    J.D.
    Other Education
    Polytechnic University
    Class of 1984
    B.S.
    Mechanical Engineering

Stephen Sandor Korniczky

Partner at Sheppard Mullin
5.0
1 review

12275 El Camino Real, Suite 100 (Del Mar)San Diego, CA 92130U.S.A.

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