Jon Gurka
Overview
Jon Gurka has nearly three decades of intellectual property law experience, with a focus on patent litigation and cases that involve complex technologies. He has served as a first chair or second chair trial lawyer in numerous jury and bench trials.
Career & Education
- University of Connecticut, B.S.E.E., Electrical Engineering; Eta Kappa Nu – Electrical Engineering Honorary Society, 1989
- University of Illinois College of Law, J.D.,
magna cum laude, 1996
- Best Overall Frederick Green Moot Court Competition
- Recipient of Rickert Award for excellence in Oral Advocacy
- Member of the National Moot Court Team and Moot Court Bench
- California
- U.S. Court of Appeals for the Federal Circuit
- U.S. Court of Appeals for the Ninth Circuit
- U.S. District Court for the Central District of California
- U.S. District Court for the Eastern District of California
- U.S. District Court for the Northern District of California
- U.S. District Court for the Southern District of California
- U.S. Patent and Trademark Office (USPTO)
- American Bar Association - Intellectual Property Law Section
- Co-Chair, Federal Trial Practice and Procedure Committee 601 (2004-06)
- Ad Hoc Subcommittee on Jurisdiction of Federal Circuit for Immigration Appeals (2006)
- ABA/IPL Task Force: Study of National Academies of Sciences Patent Reform Recommendations (2005)
- ABA/IPL Patent Reform Task Force (2005)
- Intellectual Property Owners Association (IPO)
- American Intellectual Property Law Association (AIPLA)
- Federal Circuit Bar Association
- Federal Bar Association, Orange County Chapter, Board of Directors, 1999-2004
[Jon is] terrific under pressure and handle[s] high-stakes, complex disputes with finesse.
— IAM Patent 1000, 2023
Jon's Insights
Client Alert | 3 min read | 04.02.24
On March 25, 2024, the Federal Circuit issued a precedential opinion in Edwards Lifesciences Corporation v. Meril Life Sciences Pvt. Ltd., a case with significant implications for the application of the safe harbor provision of 35 U.S.C. § 271(e)(1). This case involved the importation of two transcatheter heart valve systems by Meril Life Sciences Pvt. Ltd., an India-based medical device company, to San Francisco for a medical conference. According to Meril, these heart valve systems, part of Meril’s Myval System designed to treat heart disease, were never displayed or offered for sale at the conference but were instead stored in a bag in a hotel closet and later in a storage room. The Court’s decision to affirm the district court’s grant of summary judgment of noninfringement in favor of Meril brings to light the nuances of applying the safe harbor provision in patent infringement cases.
Press Coverage | 01.05.24
Publication | 01.02.24
Press Coverage | 12.18.23
Representative Matters
- In the Matter of CERTAIN AUTOMATED RETRACTABLE VEHICLE STEPS and COMPONENTS THEREOF, 337-TA-1345 (ALJ Johnson-Hines) (U.S. International Trade Commission). Lead counsel for Lund Motion Product Inc./Real Truck involving 4 patents directed to retractable vehicle side steps. The case also involved parallel district court proceedings. After the Markman hearing, all respondents settled through a consent judgment.
- Murolet LLC v. Schindler Group AG. Lead counsel for Schindler Elevator Corporation in patent litigation in Western District of Texas involving 5 patents brought by patent troll.
- Schindler Elevator Corporation v. Murolet IP LLC. Lead counsel for Schindler Elevator Corporation in declaratory judgment action brought in Middle District of Pennsylvania seeking a declaration of non-infringement as to 5 patents brought by patent troll.
- Advanced Cluster Systems, Inc. v. NVIDIA Corporation. Lead counsel for Advanced Cluster Systems in patent litigation in District of Delaware involving patents related to NVIDIA's graphical processing unit(gpu) products used for AI and high-performance computing.
- Wilson Electronics, LLC (WeBoost) v. CellPhone-Mate, Inc. Lead counsel for SureCall in patent litigation in Utah District Court in which SureCall asserted three patents covering its 5-band cellphone booster product against a competitor. The case also involved defending SureCall against 9 patents asserted by Wilson related to cellphone boosters. In late 2018, Wilson filed six IPRs challenging SureCall’s three asserted patents covering SureCall’s five-band cell phone boosters. Between March 19, 2019 and April 23, 2019, the Patent Trial and Appeal Board denied institution of all six IPRs filed by Wilson.
- In the Matter of CERTAIN CELLULAR SIGNAL BOOSTERS, REPEATERS, BIDIRECTIONAL AMPLIFIERS, AND COMPONENTS THEREOF (I) 337-TA-1249 (ALJ Bullock) (U.S. International Trade Commission). Lead counsel for SureCall in patent litigation in USITC involving 4 patents asserted by Wilson Electronics related to cellphone booster products.
- In the Matter of CERTAIN CELLULAR SIGNAL BOOSTERS, REPEATERS, BIDIRECTIONAL AMPLIFIERS, AND COMPONENTS THEREOF (II) 337-TA-1250 (ALJ Cheney) (U.S. International Trade Commission). Lead counsel for SureCall in patent litigation in USITC involving 4 patents asserted by Wilson Electronics related to cellphone booster products.
- In the Matter of CERTAIN CELLULAR SIGNAL BOOSTERS, REPEATERS, BIDIRECTIONAL AMPLIFIERS, AND COMPONENTS THEREOF (III) 337-TA-1251 (ALJ Elliot) (U.S. International Trade Commission). Lead counsel for SureCall in patent litigation in USITC involving 4 patents asserted by Wilson Electronics related to cellphone booster products. All district court and USITC litigation successfully resolved on behalf of SureCall through settlement.
- In the Matter of Certain Obstructive Sleep Apnea Treatment Mask Systems and Components Thereof 337-TA-1136 (U.S. International Trade Commission). Lead counsel for Fisher & Paykel Healthcare Ltd. (FPH), a leading manufacturer of patient interface devices for the treatment of sleep apnea, enforcing five patents against a competitor, ResMed, in a proceeding before the U.S. International Trade Commission (ITC). FPH asserted its patents against ResMed’s P10 nasal pillow products seeking an importation ban against ResMed’s infringing products. After months of contentious litigation, including a Markman hearing in early February, 2019, the parties reached a global settlement later that month.
- Masimo Corp. v. Philips Electronics North America Corp et al. Represented Masimo in a three-week jury trial involving multiple patents on pulse oximeter medical devices. Obtained a $466 million verdict based on infringement of Masimo’s patents covering Masimo’s pioneering read-through-motion pulse oximetry technology. The verdict is the largest IP verdict of 2014 through October. Mr. Gurka had a primary role at trial of handling the defense against Philips’ counterclaim patent for which Philips sought $169 million in damages. The jury rejected Philips’ infringement case on all theories and awarded zero damages.
- Masimo Corp. v. Shenzhen Mindray Bio-Medical Tech. Co. Ltd. and Mindray DS USA. Successfully represented Masimo in complex patent litigation in California involving numerous patents on pulse oximetry technology.
- Schindler Elevator Corp. and Inventio AG v. Otis Elevator Co. Lead trial counsel for Schindler and Inventio involving Schindler’s patented Schindler ID® elevator system. After a two-week jury trial, the jury answered all 33 questions in Schindler’s favor. Previously represented Schindler in a successful appeal overturning an erroneous claim construction and obtained reversal of noninfringement ruling. See 593 F.3d 1275 (Fed. Cir. 2010). After remand, successfully defeated Otis’ renewed motion for summary judgment of noninfringement, along with all other related motions. See 2010 U.S. Dist. LEXIS 110313 (S.D.N.Y. Oct. 6, 2010). On second appeal, Federal Circuit invalidated the patent for obviousness. No. 2011-1615 (Fed. Cir. 2012).
- Advanced Thermal Sciences v. Applied Materials, Inc. Trial counsel for plaintiff in two-week bench trial involving thermal heating and cooling of semiconductor equipment. Court ruled in favor of Advanced Thermal on all substantive issues. See 2010 WL 2015236 (C.D.Cal.).
- Toshiba Corp. and Toshiba America Information Systems. Represented Toshiba in patent litigation in various jurisdictions, including an action before the U.S.I.T.C. against Wistron Corp. Recently obtained a consent summary judgment after favorable claim construction against a patent troll. See 2009 WL 2243126 (E.D. Tex. 2009).
- Fisher & Paykel Appliances v. LG Electronics. Represented Fisher & Paykel in patent infringement suit in N.D. Illinois involving direct drive washing machines.
- Kruse Technology Partnership v. General Motors, Isuzu, and Caterpillar. Represented plaintiff in patent litigation in C.D. California over diesel engine combustion technology.
- Broadcom Corp. v. BroadVoice, Inc. Represented Broadcom in trademark infringement suit and obtained settlement through litigation.
- Mallinckrodt, Inc. v. Masimo Corp. Represented Masimo in a five-and-a-half-week jury trial involving multiple patents on pulse oximeter medical devices and obtained a $164 million damage award. Claim construction ruling at 254 F. Supp. 2d 1140; summary judgment rulings at 292 F. Supp. 2d 1201 (C.D. Cal. 2003); 300 F. Supp. 2d 923 (C.D.Cal. 2004).
- Strikeforce Technologies, Inc. v. SecureAuth Corporation. Lead counsel for SecureAuth in a patent litigation suit involving three patents asserted against SecureAuth. Successfully brought a motion to dismiss under 35 U.S.C. § 101 that invalidated all 43 asserted claims as directed to an unpatentable abstract idea. The Court ordered a dismissal with prejudice as to StrikeForce’s three asserted patents. (C.D. Cal. 2017) In February 2019, the Federal Circuit affirmed SecureAuth's judgment of invalidity on all of the asserted claims.
- Rexel USA v. Main Electric Supply Co. Plaintiff Rexel USA sued our client Main Electric, along with 7 individual defendants that were recently hired by Main Electric, for misappropriation of trade secrets and eight other related claims in federal court. Rexel, a much larger company, sought an immediate TRO that would have prevented Main and its employees from opening their new Phoenix branch. Mr. Gurka argued for Main Electric at the TRO hearing and the Court denied Rexel's TRO, thereby providing a decisive victory over Rexel's vindictive lawsuit. Then, in less than 24 hours, Rexel dismissed their lawsuit in its entirety. Rexel had also threatened to bring a similar suit against another individual hired by Main Electric in Las Vegas.
- SkyHawke Technologies, LLC v. Deca International Corp. and Deca System Inc. Lead counsel for Deca Int'l and Deca Systems in a patent litigation suit involving two patents on GPS-enabled golf range finders. Based on the Supreme Court's recent decision in TC Heartland affecting patent venue, Deca Int'l successfully filed a motion to dismiss for improper venue. The district court initially denied the motion, but after filing a Petition for Writ of Mandamus with the Court of Appeals for the Federal Circuit, Deca successfully sought reconsideration. On January 30, 2018, the Court transferred this long-standing case to the Central District of California.
- C-Suite Media, Inc. v. C-Suite Network; C-Suite Holdings, Inc.; C-Suite Holdings, LLC; C-Suite Investor Counsel, LLC; Jeffrey Hayzlett; Thomas White; and Karl Post. As lead counsel, represented the defendants in a trademark infringement suit involving defendants' marks and slogans as used in their C-Level executive services. After successfully moving to dismiss some of the causes of action and defendants, the matter was resolved through settlement and dismissed.
- Flexera Software LLC. Currently representing Flexera in various intellectual property matters regarding their product lines, including advising Flexera on matters involving non-practicing entities asserting patents against Flexera customers. Recently, Mr. Gurka successfully resolved a breach of contract, breach of loyalty and conversion case involving a former employee's theft of highly-valuable computer files containing Flexera's confidential and proprietary information. Flexera obtained an evidence preservation order, temporary restraining order and preliminary injunction. The matter was resolved through settlement and dismissed.
- Digital Stream IP, LLC v. iHeartMedia, Inc. | Digital Stream IP, LLC v. CBS Radio, Inc. As lead counsel, represented iHeartMedia and CBS Radio in two infringement suits involving a patent allegedly related to HD radio technology bought by non-practicing entity, Digital Stream. The matter was resolved and dismissed.
- SoftVault Systems, Inc. v. Dassault Systemes Solidworks, Corp. Lead counsel for Dassault in patent litigation in the Northern District of California involving patents directed to computer systems. Case resolved.
- Bascom Research LLC v. BroadVision, Inc. Lead counsel for BroadVision in patent litigation suit involving multiple patents asserted against BroadVision’s ClearVale enterprise social networking suite. Case resolved
Jon's Insights
Client Alert | 3 min read | 04.02.24
On March 25, 2024, the Federal Circuit issued a precedential opinion in Edwards Lifesciences Corporation v. Meril Life Sciences Pvt. Ltd., a case with significant implications for the application of the safe harbor provision of 35 U.S.C. § 271(e)(1). This case involved the importation of two transcatheter heart valve systems by Meril Life Sciences Pvt. Ltd., an India-based medical device company, to San Francisco for a medical conference. According to Meril, these heart valve systems, part of Meril’s Myval System designed to treat heart disease, were never displayed or offered for sale at the conference but were instead stored in a bag in a hotel closet and later in a storage room. The Court’s decision to affirm the district court’s grant of summary judgment of noninfringement in favor of Meril brings to light the nuances of applying the safe harbor provision in patent infringement cases.
Press Coverage | 01.05.24
Publication | 01.02.24
Press Coverage | 12.18.23
Recognition
- The Best Lawyers in America, Intellectual Property Litigation, 2023-2024
- Managing IP, IP Stars Guide, Patent Star for Intellectual Property Litigation, 2012-2023
- IAM Patent 1000, “World’s Leading Patent Professionals” for litigation, 2013-2023
- Legal 500 United States, Patent Litigation, 2014-2015, 2018-2021
- Super Lawyers Magazine, Southern California Super Lawyer for Intellectual Property Litigation, 2017-2018
- Daily Journal, Top 75 Intellectual Property Litigators in California, 2015
- Los Angeles Magazine / Super Lawyers Magazine, Southern California’s “Rising Stars” in Intellectual Property Litigation, 2006-2007
- OC Metro, one of “O.C.’s Top Lawyers” for Intellectual Property, 2014, 2015
- OC Metro, one of “O.C.’s Top Lawyers” for Copyright Infringement, 2010, 2011
- OC Metro, one of “O.C.’s Top Lawyers” for Intellectual Property Law and Copyright Infringement, 2009
Jon's Insights
Client Alert | 3 min read | 04.02.24
On March 25, 2024, the Federal Circuit issued a precedential opinion in Edwards Lifesciences Corporation v. Meril Life Sciences Pvt. Ltd., a case with significant implications for the application of the safe harbor provision of 35 U.S.C. § 271(e)(1). This case involved the importation of two transcatheter heart valve systems by Meril Life Sciences Pvt. Ltd., an India-based medical device company, to San Francisco for a medical conference. According to Meril, these heart valve systems, part of Meril’s Myval System designed to treat heart disease, were never displayed or offered for sale at the conference but were instead stored in a bag in a hotel closet and later in a storage room. The Court’s decision to affirm the district court’s grant of summary judgment of noninfringement in favor of Meril brings to light the nuances of applying the safe harbor provision in patent infringement cases.
Press Coverage | 01.05.24
Publication | 01.02.24
Press Coverage | 12.18.23
Insights
Practices
Jon's Insights
Client Alert | 3 min read | 04.02.24
On March 25, 2024, the Federal Circuit issued a precedential opinion in Edwards Lifesciences Corporation v. Meril Life Sciences Pvt. Ltd., a case with significant implications for the application of the safe harbor provision of 35 U.S.C. § 271(e)(1). This case involved the importation of two transcatheter heart valve systems by Meril Life Sciences Pvt. Ltd., an India-based medical device company, to San Francisco for a medical conference. According to Meril, these heart valve systems, part of Meril’s Myval System designed to treat heart disease, were never displayed or offered for sale at the conference but were instead stored in a bag in a hotel closet and later in a storage room. The Court’s decision to affirm the district court’s grant of summary judgment of noninfringement in favor of Meril brings to light the nuances of applying the safe harbor provision in patent infringement cases.
Press Coverage | 01.05.24
Publication | 01.02.24
Press Coverage | 12.18.23
