Edward J. Naidich

Partner

Ed Naidich focuses on patent litigation and appeals. He has handled numerous litigation and appellate matters in a variety of technologies, including the wireless CDMA, computer architecture, automotive, power electronic, security system, GPS-based navigation system, and digital video system fields.

Mr. Naidich has broad experience in all aspects of patent litigation, including examining and cross-examining fact and expert witnesses at trial, taking and defending depositions, drafting and arguing claim construction and summary judgment motions, and managing day-to-day litigation activities. He has tried cases before juries and before an administrative law judge at the U.S. International Trade Commission (ITC). He has also drafted numerous appeal briefs and argued before the U.S. Court of Appeals for the Federal Circuit.

In addition to his litigation practice, Mr. Naidich advises clients on a wide variety of patent matters, including licensing and strategic patent prosecution. He also assists clients in settling disputes without litigation.

Highlights

• Paradox Security Systems v. ADT Security Systems (E.D. Tex.). Defended ADT Security Systems, Inc. and Digital Security Controls, Ltd. in a jury trial in a patent suit relating to telephone coupler circuits in security systems. Obtained a judgment as a matter of law of noninfringement at the close of plaintiffs’ case.
• Leviton Mfg. Co. v. Universal Sec. Instruments (Fed.Cir.). Represented Leviton in an appeal from a finding of inequitable conduct; the Federal Circuit vacated the inequitable conduct finding on both materiality and intent, as well as the award of attorney fees against Leviton.
• Koninklijke Philips Elec. NV v. Cardiac Sci. Operating Co. (W.D. Wa.; Fed. Cir.). In an interference action filed in the district court under 35 U.S.C. § 146, obtained an award of priority in favor of client Philips Electronics following a bench trial, reversing a decision of the Board of Patent Appeals and Interferences of the U.S. Patent and Trademark Office.
• MHL Tek v. Hyundai (E.D. Tex.; Fed. Cir.). Defended Hyundai Motor Co. and Kia Motors Corp. in a patent suit relating to tire pressure monitoring systems. Obtained summary judgment of noninfringement as to one asserted patent after two other asserted patents were dismissed for lack of ownership. The Federal Circuit affirmed, finding that MHL Tek lacked standing with respect to all three asserted patents. 
• In the Matter of Certain Automotive Multimedia Display and Navigation Systems, 337-TA-694 (ITC). Represented Pioneer Corporation in an ITC investigation involving GPS-based navigation systems, including cross-examining witnesses at trial, and obtained a ruling that the four asserted patents were noninfringed and invalid.
• SPH America, LLC v. Acer Corp. (S.D. Cal.). Representing plaintiff SPH America in a patent infringement lawsuit involving 3G technologies.
• BIAX Corp. v. Motorola Mobility (D. Colo.). Representing plaintiff BIAX Corp. in a patent infringement lawsuit involving computer architecture patents.
• Intex Recreation Corp. v. Team Worldwide Corp. (D.D.C.). Representing Intex in a patent infringement lawsuit involving airbed technologies.
• Served as a law clerk to the Honorable Alvin A. Schall of the U.S. Court of Appeals for the Federal Circuit, 2001-2002.
• Served as an officer in the U.S. Navy’s nuclear propulsion headquarters, Naval Reactors, where he gained extensive experience in electrical and nuclear engineering, 1992-1997.

Professional Activities

• American Bar Association
• American Intellectual Property Law Association
• Federal Circuit Bar Association