Jonah D. Mitchell

Jonah is an intellectual property and commercial trial lawyer. Appreciated for his problem-solving skills and practical legal advice, Jonah consistently helps clients resolve disputes and litigation effectively and efficiently. He advocates for his clients in complex, high-stakes litigation involving patent infringement, trade secret misappropriation, and commercial disputes.

Experience

Representative matters

Centripetal Networks v. Keysight Technologies. Defending Keysight in global, multi-forum patent infringement dispute with litigation proceedings in the ITC (three patents), Eastern District of Virginia (11 patents), PTAB (eight patents), Federal Circuit Court of Appeals, Germany Federal Patent Court (three patents), Unified Patent Court (one patent), and European Patent Office (three patents). Prevailed after trial at the ITC with a finding of no violation. All three asserted patents found invalid, and two patents found not infringed. 100% institution rate at PTAB on eight IPRs. 95+% invalidation success rate on claims challenged at PTAB; 185 claims across eight patents invalidated. Prevailed on motion to stay EDVA action. All claims of two patents asserted in Germany invalidated at EPO and affirmed on appeal; all original claims of third patent invalidated in Germany Federal Patent Court (appeal pending). UPC and EPO proceedings ongoing on one additional patent. Handling multiple appeals stemming from ITC and PTAB victories before the Federal Circuit.

Open Text S.A. v. Box, Inc. Represented defendant Box in $270 million patent infringement action involving 12 patents relating to collaborative software and file synchronization. Prevailed on motion to transfer case from the Eastern District of Virginia to the Northern District of California. Defeated motion for preliminary injunction. Invalidated five asserted patents on motion for judgment on the pleadings. Prevailed on motion to exclude plaintiff’s damages expert. After a two-week jury trial, the jury awarded plaintiff less than 2% of its original damages claim.

UNM Rainforest Innovations v. Dell. Defended Dell in patent infringement action in the Western District of Texas involving accusations under three patents against the 802.11 WiFi standard. Prevailed on motion to stay the entire action. Prevailed in inter partes reviews before the PTAB on nearly all asserted claims.

ZyXEL Communications v. UNM Rainforest Innovations. Prevailed in inter partes reviews before the PTAB on nearly all asserted claims of three patents, including all challenged claims of two patents. Prevailed on appeals before the Federal Circuit, including preserving victories invalidating challenged claims of all three asserted patents and obtaining reversal of non-obviousness finding on lone challenged claim that survived IPR, thereby securing invalidity on all challenged claims of all three patents.

MEMS Innovations, LLC v. TDK Corporation et al. Defended TDK Corporation and the TDK Corporation of America (TDK) in a lawsuit brought by MEMS Innovations in the Eastern District of Texas, alleging infringement of two patents directed to micromechanical systems. MEMS stipulated to dismiss the case after TDK moved to dismiss the action, challenging venue and personal jurisdiction. Defending TDK Corporation and affiliates in subsequent patent infringement lawsuits initiated by MEMS in the Eastern District of Texas and the Central District of California.

U.S. Ethernet Technology v. Qualcomm Atheros, Inc., et al. Represented defendant Qualcomm Atheros in patent infringement action involving Ethernet technology. Prevailed on motion to transfer action from the Eastern District of Texas to the Northern District of California. Obtained summary judgment of non-infringement.

Juxtacomm-Texas Software v. Axway et. al. Represented defendant TIBCO Software in patent infringement action in the Eastern District of Texas relating to data integration. Obtained summary judgment of invalidity which was affirmed by the Federal Circuit.

Protegrity Corporation v. Informatica Corporation. Represented Informatica in patent litigation filed by Protegrity in the District of Connecticut. Case transferred to the Northern District of California and stayed pending CBM proceeding. Patents invalidated by the PTAB in CBM proceeding.

Ericsson v. D-Link, et al. Represented defendants Acer, D-Link and NETGEAR through trial in defense of infringement action in the Eastern District of Texas on multiple patents concerning wireless technology that were asserted against 802.11 WiFi standard. Obtained reversal of patent infringement and RAND damages award due to lack of substantial evidence and erroneous jury instruction. Ericsson v. D-Link, 773 F.3d 1201 (Fed. Cir. 2014). Asserted patents subsequently invalidated in inter partes re-examination.

Data Retrieval Technology v. Sybase and Informatica. Represented defendants in patent infringement actions involving database technology. Prevailed on motion to transfer from the Western District of Washington to the Northern Distirct of California. Obtained multiple summary judgments of non-infringement. Case resolved.

Atheros Communications v. CSIRO. Represented declaratory judgment plaintiff in patent infringement action involving accusations against 802.11 WiFi standard.

Wi-LAN v. Westell Technologies, et al. and Wi-LAN v. Acer, et al. Represented defendants in patent infringement action in Eastern District of Texas involving wireless and DSL technology, and assertions against 802.11 WiFi standard.

DR Systems v. Siemens, et al. Represented defendant in patent infringement action involving medical imaging database technology.

Serious Materials v. Supress Products. Represented defendant in patent infringement action in the Northern District of California involving acoustical building materials. Obtained a judgment of dismissal with prejudice and a broad covenant not to sue for defendant.

The PACid Group v. Apple, et al. Represented defendant in patent infringement action in the Eastern District of Texas involving claims against 802.11 WiFi products.

Advanced Interactive v. Matsushita, et al. Represented defendant in patent infringement action involving data broadcasting over a television signal. Obtained judgment of non-infringement which was affirmed by the Federal Circuit.

Meritage Medical Network v. St. Joseph Health. Represented plaintiff Meritage Medical in misappropriation of confidential information and unfair competition action. Obtained preliminary injunction restricting development of defendant’s competitive venture, including barring over 60 defendant-employees from working on competitive venture.

Force10 Networks v. Almaden Technology, et al. Represented plaintiff in trade secret misappropriation action involving networking technology. Obtained preliminary injunction, followed by a permanent injunction and judgment for monetary damages.

Acorn Bay v. CamelBak. Represented defendant in trade secret misappropriation and patent infringement action in Northern District of California. Prevailed on motion to dismiss multiple claims. Case resolved.

Quiet Solution v. Supress Products. Represented defendant in trade secret misappropriation action involving acoustical building materials. Defeated majority of plaintiff’s preliminary injunction application. Case settled.

Sunrise Telecom v. VeEX, et al. Represented defendants in trade secret misappropriation action involving telecom test equipment. Defeated plaintiff’s preliminary injunction application. Case settled.

TIBCO Software v. RapidMiner, et al. Represented plaintiff in trade secret misappropriation and unfair competition action against former employee’s new venture and several former employees. Obtained stipulated preliminary injunction. Case settled.

Foundry Networks v. Force10 Networks, et al. Represented defendant in trade secret misappropriation action involving Ethernet networking. Defeated request for expedited relief.

GlobalStreams v. Serious Magic. Represented plaintiff in trade secret misappropriation action involving video technology.

Secure Energy v. Siemens Energy. Represented defendant Siemens Energy in commercial dispute in the Middle District of Florida. Defeated plaintiff’s claims for breach of contract and fraud on summary judgment. Prevailed in jury trial on breach of contract counterclaim, resulting in judgment in favor of Siemens Energy for over $17 million. Obtained affirmance from Eleventh Circuit Court of Appeals.

Commercial Arbitration. Represented respondent in arbitration involving license dispute and claims of breach of contract and fraud seeking over $30 million in damages. Defeated breach of contract claim following evidentiary hearing, with arbitrator adopting respondent’s proposed findings of fact and conclusions of law in their entirety. Prevailed on additional breach of contract and fraud claims on motion for summary judgment.

International Arbitration. Represented licensor in arbitration against licensee regarding intellectual property license dispute. Following evidentiary hearing before three-arbitrator panel, prevailed on all claims and obtained accounting and past and prospective multi-million royalty damages award. Awarded full attorneys’ fees and costs.

AAA Commercial Arbitration. Represented corporate and individual respondents accused of fraud and breach of contract in arbitration concerning patent license agreement. Following evidentiary hearing before three-arbitrator panel, prevailed on all claims and awarded attorney fee recovery.

Informatica v. PeopleSoft. Represented plaintiff in copyright infringement and breach of license agreement action.

Creative Science Systems v. Forex Capital Markets. Represented defendant in copyright infringement and breach of license agreement action.

Culinary Institute of America v. American Culinary Institute. Represented defendant in trademark infringement action.

Recognitions

Named by the Daily Journal as one of the Top Intellectual Property Lawyers in California, 2024
Selected to the IAM Patent 1000, which identifies the top patent practitioners throughout the world, 2023-2025

Credentials

Education

University of California, Berkeley, School of Law, 1999, J.D., Member of the Moot Court Board
California Polytechnic State University, San Luis Obispo, 1995, B.S., Agricultural Business