Stephen E. Kabakoff
Stephen Kabakoff has more than 17 years of experience practicing all areas of patent law, including litigation, licensing and portfolio management, patent preparation and prosecution, opinions, and client counseling. His work is primarily focused on technology relating to electrical and computer engineering and materials science, including wireless communications, electronic bill payment and presentment systems, computer and network architecture, software design, power management, magnetic and optical storage systems, semiconductor processing, and optical devices.
Mr. Kabakoff litigates in federal district courts and before the International Trade Commission (ITC) and the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). He has experience as lead counsel, as well as significant experience with prefiling investigations, fact and expert discovery, motion practice, taking and defending depositions, examining trial witnesses, and arguing claim constructions at Markman hearings.
Mr. Kabakoff also maintains a robust transactional practice, including licensing and settlement negotiations and due diligence analyses for mergers and acquisitions. He is a member of the Licensing Executives Society and is a frequent presenter on licensing topics.
- CheckFree Corp. and CashEdge, Inc. v. Metavante Corp. and Fidelity National Information Systems, Inc. (M.D. Fla.). Represented defendants in a patent infringement action involving certain electronic bill payment and presentment systems.
- Fidelity National Information Systems, Inc. v. CheckFree Corp., CBM2013-00028, -00030, -00031, and -00032 (PTAB, Fed. Cir.). Represented petitioners in covered business method post-grant review proceedings involving patents related to certain electronic bill payment and presentment systems.
- Cellport Systems, Inc. v. HTC Corp. (D. Colo.). Represented HTC Corp. in a patent infringement action involving certain features for switching between cellular and WiFi connections in smartphones.
- Certain Portable Electronic Communications Devices, Including Mobile Phones and Components Thereof, 337-TA-885 (ITC). Represented respondent HTC Corp. in an investigation involving certain circuitry used in radio-frequency modulators and front ends.
- OpenTV, Inc. and Nagravision, SA v. Apple Inc. (N.D. Cal.). Represented plaintiffs in patent infringement action involving certain user interface and networking features in Apple’s iPhone, iPad, iPod Touch, Apple TV, and MacBook products.
- Taiwan Semiconductor Manufacturing Company, Ltd. v. Godo Kaisha IP Bridge 1, IPR2016-01249, 01264, 01331, and 01367 (PTAB). Representing petitioners in inter partes review proceedings involving patents related to certain semiconductor processes and devices.
- Rembrandt Patent Innovations, LLC and Rembrandt Secure Computing, LP v. Apple Inc. (E.D. Tex., N.D. Cal., Fed. Cir.). Representing plaintiffs in patent infringement action involving certain secure boot and recovery features in Apple’s iPhones, iPads, and iPod Touches.
- Research in Motion v. Motorola, USPTO Interference No. 105,700 (BPAI). Represented Research in Motion in an interference proceeding against Motorola involving certain message “pushing” technology for electronic mail systems.
- Worked as a patent examiner for the U.S. Patent and Trademark Office, where he examined patent applications in the areas of cryptography, information security, and e commerce business methods, 1999-2002.
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- Recognized by The Legal 500 U.S. as one of the leading lawyers in patent licensing and transactional work, 2014.
- IP Law Section of the State Bar of Georgia
- Atlanta Bar Association, Intellectual Property Section
- American Bar Association, IP Law Section
- Licensing Executives Society
- Institute of Electrical and Electronics Engineers (IEEE)
- Coauthor. "Design Patent Damages May Be Limited to the Profits Attributable to the Infringing Component of a Product, Rather than the Whole Product," LES Insights, Dec. 13, 2016.
- Coauthor. "License Defense Fails Due to Interpretation of License Agreement's Provisions on Commercialization and Importation," LES Insights, Nov. 8, 2016.
- Coauthor. "Assignor May Challenge Validity of a Patent It Assigned by Using Patent Office IPR Proceedings Despite Being Precluded from Challenging Validity in Court," LES Insights, Oct. 11, 2016.
- Coauthor. "Exploring the Timeframe for Activities Establishing a Domestic Industry in ITC Investigation," The Young Lawyer, Aug. 5, 2014.
- Coauthor. "Leveraging Standing and Domestic Industry Activities of Third Parties in Patent-Based ITC Investigations," Intellectual Property & Technology Law Journal, June 2014.
- Coauthor. "Reconciling Joinder and Consolidation Under the Federal Rules of Civil Procedure and Under the America Invents Act," BNA's Patent, Trademark & Copyright Journal, Dec. 7, 2012.
- Coauthor. "Reading Dynamics in Magnetic Super Resolution Media," Journal of the Magnetics Society of Japan, 1998.
- Coauthor. "Blue Light Magnetic Super Resolution," Proceedings of the International Society for Optical Engineering, 1997.
- Coauthor. "Exchange and Magnetostatic Coupling in Multilayer Rare Earth Transition Metal Thin Films," IEEE Transactions on Magnetics, 1996.
- Coauthor. "Persistent Photoconductivity and DX centers in Cd0.8Zn0.2Te:CI," Journal of Applied Physics, 1995.