William J. O’Brien

Bill O’Brien is a trial and appellate lawyer with 20 years of experience in intellectual property and technology cases. Bill has extensive experience with patent, trademark, trade dress, copyright, trade secret, and idea submission cases and with a wide range of technologies, including medical devices, consumer electronics, software, optics, aerospace, manufacturing equipment, diagnostics, and chemicals, as well as business-method patents. He has successfully represented clients in major jury trials and in multiple appellate proceedings before the United States Court of Appeals for the Federal Circuit and other federal and state appellate courts.

Bill began his intellectual property career at a widely respected intellectual property boutique, Christie Parker & Hale. He left his partnership there to join O’Melveny & Myers, one of the country’s top law firms. Bill was a partner at O’Melveny and Co-Chair of the Patent and Technology Litigation Practice Group. While there, he worked closely with Peter Afrasiabi and Nate Dilger, who are now Bill’s partners at One LLP.

Bill was also a partner at Alschuler Grossman Stein & Kahan, one of Southern California’s most highly regarded litigation firms. His practice, along with many of the others in that firm, was absorbed by Bingham McCutchen, a major international firm.

At One LLP, Bill is able to offer personal, high quality legal services far more efficiently and at much lower cost than is possible in large firms. One LLP’s leaner and more flexible structure allows Bill to tailor his services to each client’s objectives and resources, while focusing on the objectives that are most likely to bring each case to a successful conclusion. Bill works with clients to strategically plan and budget for each case at the outset of his work and on an ongoing basis thereafter.

Bill closely follows developments in intellectual property law and procedure. He frequently speaks and writes on intellectual property issues.

Illustrative Cases

• Video rental company – One of the lead trial counsel for a major video rental company in litigation over business method patents on subscription rental methods. The case was successfully settled after expert depositions and filing of a summary judgment motion.
• Medical device company – Lead trial and appellate counsel for a medical device company suing for patent infringement. Secured a multimillion-dollar verdict after a two-month jury trial. The judgment was affirmed on appeal and collected in full.
• Telescope manufacturer – Lead trial and appellate counsel for a major telescope manufacturer in five patent cases involving computer-controlled telescopes. This included bringing and settling three patent cases against a key competitor and obtaining an agreement to pay favorable royalties, correct inventorship of one of the competitor’s patents, and transfer the patent to the client.
• Chemical company – Lead litigation counsel for a university licensee that develops and manufacturers advanced organometallic catalysts in state- and federal-court litigation with a competitor over patents and license rights. Obtained a favorable settlement.
• Computer component manufacturer – Lead litigation counsel for a computer component manufacturer accused of patent infringement to an early victory. Persuaded the judge to schedule an early “Markman” hearing to construe key claim limitations and followed up by obtaining summary judgment of non-infringement.
• Optical disc manufacturer – Lead courtroom counsel for an optical disc manufacturer accused of infringing a patent on injection-molding technology. Protected the client’s business by persuading the court to stay proceedings against the client’s customers. Then obtained a favorable claim construction order and summary judgment of non-infringement.
• Major university – Lead courtroom counsel for a major university sued in California state court for alleged misappropriation of trade secrets related to satellite navigation. Successfully moved the litigation to federal court and pursued aggressive discovery and summary judgment motion setting the stage for a highly favorable settlement.
• Pharmaceutical company – Lead trial and appellate counsel for a company accused of infringing a patent on computerized pharmaceutical dispensing pumps. Obtained a favorable claim construction, followed by summary judgment on non-infringement. The judgment was affirmed on appeal.
• Prominent medical products company – Trial and appellate counsel for a prominent medical products company accused of infringing three patents. After a two-month long trial, every asserted claim was found to be not infringed or invalid for obviousness. This result was affirmed on appeal.

Education

• University of California, Berkeley, School of Law: J.D.; Moot Court Board
• University of California, Davis: A.B. Economics; Phi Beta Kappa

Publications

• “Trials on Patent Obviousness: A Theatrical Approach,” ABA Intellectual Property Litigation, Vol. 21, No. 1 (Fall 2009)
• “LAIPLA Co-Sponsors Reception for High-Ranking Chinese IP Delegation,” Los Angeles Intellectual Property Law Association Bulletin, Issue 56 (April 2009)
• “Turbulent Times: Recent Changes in Patent Law and Practice — and Changes Yet to Come,” Los Angeles Intellectual Property Law Association Bulletin, Issue 55 (March 2009)
• “Settlement Agreement Checklist,” ABA Commercial and Business Litigation, Vol. 9, No. 2 (Winter 2007)
• “Structuring, Documenting and Enforcing IP Settlements,” ABA Intellectual Property Litigation, Vol. 17, No. 3 (Spring 2006)
• “Big Changes Forecast at ‘Washington in the West,’” Los Angeles Intellectual Property Law Association Bulletin, Issue 30 (February 2006)
• “Questions and Answers About Inducing Copyright Infringement Under Grokster,” ABA Intellectual Property Litigation, Vol. 17, No. 1 (Fall 2005)
• “Claim Construction in a New Era: Phillips v. AWH and Its Likely Aftermath,” Los Angeles Intellectual Property Law Association Bulletin, Issue 28 (September 2005)
• “Phillips Sends Patent Claim Construction Back to Future,” Los Angeles Daily Journal (August 26, 2005)

Speeches and Presentations

• “Intellectual Property and Internet Media.” California Lawyers for the Arts, Santa Monica, August 6, 2011
• “How to Make Money with Your Intellectual Property,” Loyola Law School of Los Angeles and the Los Angeles Intellectual Property Law Association, July 21, 2011
• “Bilski – The Unmarked Road,” Teleconference Presentation for the California State Bar’s Intellectual Property Law Section, September 22, 2010
• “Intellectual Property on the Internet: An Advanced Seminar for Artists, Writers, and Others Who Create and Use Digital Content,” California Lawyers for the Arts, Santa Monica, August 11, 2010
• Co-Host, Dinner Banquet for Chinese Intellectual Property Delegation, Sponsored by the Chinese CEO Organization, Los Angeles Intellectual Property Law Association, Asia Society of Southern California, and U.S. Intellectual Property Organization (March 2009)
• Chairperson and Presenter, “Turbulent Times: Recent Changes in Patent Law and Practice—and Changes Yet To Come,” Los Angeles Intellectual Property Law Association Roundtable Meeting (February 2009)
• “Big Firm, Small Firm and In-House—Today’s Careers in Patent, Trademark and Copyright Law,” Pepperdine University School of Law (October 2008)
• “Inequitable Conduct: A Hairy Encounter,” Los Angeles Intellectual Property Chapter, American Inns of Court (September 2008)
• “Spring Training for In-House Counsel: Fulfilling Your Role as General Manager,” Loyola Law School Special IP Focus Series (April 2006)
• Conference Chairperson and Panelist on “Emerging Copyright and Internet Issues,” Ninth Annual Washington in the West Conference, Los Angeles Intellectual Property Law Association (January 2006)
• “What to Do Today – in Case of Intellectual Property Litigation Tomorrow,” Business Technology Center of Los Angeles County Brown Bag Lunch Program (November 2005)
• “Grokster and Its Aftermath: Litigating Claims for Inducing Copyright Infringement – or Trying to Avoid Them – in the Post-Betamax Era,” Pasadena Bar Association Technology Section Meeting (September 2005)
• “How to Act in the Post Knorr-Bremse World: Is Ignorance Now Bliss?,” Los Angeles Intellectual Property Law Association and San Francisco Intellectual Property Law Association Joint Spring Seminar (May 2005)
• “Litigation Implications of Knorr-Bremse v. Dana,” Los Angeles Intellectual Property Law Association Monthly Meeting (October 2004)
• “Best Practices in Managing the Attorney-Client Relationship and Controlling Legal Fees,” Business Technology Center of Los Angeles County Brown Bag Lunch Program (January 2004)
• “Inequitable Conduct: How to Prove It, and How to Avoid It,” Los Angeles Intellectual Property Law Association Annual Washington in the West Conference (January 1999)
• “LAIPLA’s Proposed Local Rules for Patent Cases,” Los Angeles Intellectual Property Law Association Spring Seminar (June 1998)
• “Life After Markman,” Los Angeles Intellectual Property Law Association Monthly Meeting (1997)

Awards and Honors

• “Super Lawyer,” Southern California (2006-2011)
• Leader of Winning Team, Los Angeles Intellectual Property American Inn of Court (2008-2009)

Professional Organizations

• American Bar Association (Intellectual Property and Litigation Sections)
• American Intellectual Property Law Association
• Los Angeles Intellectual Property American Inn of Court (Master of the Bar)
• Los Angeles Intellectual Property Law Association (former director)
• State Bar of California (Intellectual Property and Litigation Sections)

Community Service

• Los Angeles Superior Court Temporary Judge, Voluntary Settlement Officer, and Arbitrator
• Judge, National Entertainment Law Moot Court Competition, Pepperdine University School of Law (2008-09)
• Supervised pro bono representation of indigent defendants in unlawful detainer cases (2008-09)