Colby B. Springer

Education

  • J.D., Santa Clara University School of Law, 2001,  
  • B.A., Government and International Relations, and History, University of Notre Dame, 1998, cum laude

Bar Admissions

  • California, 2001

Colby B. Springer

Partner
4300 Bohannon Drive
Suite 230
Menlo Park, California 94025
Phone 650.391.1394
Fax 650.391.1495
Mr. Springer is a partner in the firm's Intellectual Property practice group. He has experience in all fields of intellectual property law and advises clientele at every level of business development — from start ups to public companies. Mr. Springer counsels clients on the strategic development, acquisition, and enforcement of intellectual property portfolios, specifically with regard to patents. His representation includes a number of companies in patent, trade secret, copyright and antitrust suits. Mr. Springer also provides counsel to various clients on interference and re-examination proceedings before the United States Patent Office as a part of an overall intellectual property strategy.

Mr. Springer has worked with a diverse group of clientele including Sony Computer Entertainment; network security provider SonicWALL, Inc.; Ruckus Wireless, Inc., the leading supplier of smart Wi-Fi solutions; ZONARE Medical Systems, Inc. (makers of the world's first convertible ultrasound system); and supersonic cooling pioneer Caitin, Inc. among many others.

Mr. Springer has published numerous articles on intellectual property law including the Section 271 Safeharbor and the Experimental Use Exception; trademark dilution; the intersection of copyright and trademark law as it pertains to false designations of origin; the interplay of the antitrust and intellectual property laws; collective publishing rights; the public domain; domain name litigation; and UDRP cybersquatting proceedings. Mr. Springer is also a contributing author to the “Matthew Bender Practice Guide” for California Unfair Competition and Business Torts. In addition, Mr. Springer has given presentations on the ethics of open source licensing, software and business method patents, the Digital Millennium Copyright Act, and maximizing the benefits offered by the Patent Cooperation Treaty.

Mr. Springer has been a lecturer at Santa Clara University School of Law where he taught courses in international intellectual property, appellate advocacy, and appellate brief writing in the field of high tech law. Mr. Springer has also served as an advisor to Santa Clara’s nationally recognized trademark and patent moot court teams.

Representative Cases/Matters

  • Pax Scientific, Inc. et al. v. re:thought LLC (obtained complete injunctive relief for Pax Scientific for patented wind turbine technology)
  • Ruckus Wireless, Inc. v. NETGEAR Inc. et al. (representing Ruckus Wireless in an ongoing patent dispute involving smart antenna technology coupled with ongoing re-examination proceedings before the United States Patent and Trademark Office)
  • In re Certain Power Suppliers (337-TA-646) (obtained early and successful settlement terms for respondent in International Trade Commission investigation)
  • In re Masakyuki Chatani and Glen van Datta (Fed.Cir. 2007-1150) (appeal of Patent Office rejection to the United States Court of Appeals for the Federal Circuit that has resulted in a family of granted patents for multi-player gaming technology)
  • Papaya Studios v. Sony Computer Entertainment America Inc. (successful resolution of a game developer dispute on behalf of Sony Computer Entertainment)
  • Smartrac Technology, Ltd. v. Silone Magcard, Inc. (successful resolution of patent infringement claims involving RFID technology on behalf of Silone Magcard)
  • Stephen Key Design, LLC v. Lego Systems, Inc. (261 F. Supp. 2d 1196 N.D. Cal. 2003) (successful settlement for Stephen Key Design in patent dispute involving rotating labels)
  • Burst.com, Inc. v. Microsoft Corporation (represented Burst.com, Inc. in obtaining a $60M settlement for patent, trade secret, and antitrust violations in an action spanning nearly five years and involving Windows Media Player technology)
  • Apple Computer, Inc. v. Burst.com, Inc. (represented Burst.com, Inc. in obtaining a successful settlement for patent violations involving iTunes)
  • Sartek LLC v. Lamartek et al. (obtained successful settlement for defendants of a joint defense group and involving a concurrent re-examination proceeding)
  • Scientific Specialties, Inc. v. Continental Lab Products, Inc. (obtained complete injunctive relief for Scientific Specialties for patented reagent tube technology)
  • Lemelson Medical Ed. v. ESCO Electronics, et al. (represented one of the final defendants in the infamous Lemelson litigations and successfully obtained a settlement for VIA Technologies, Inc.)
  • Spalding Laboratories, Inc. v. Arizona Biological Control, Inc. (obtained a successful settlement for Spalding Labs in an action involving false advertising claims)
  • Real Networks, Inc. v. Burst.com, Inc. (obtained successful settlement for Burst.com, Inc. for patent violations involving Real Player)
  • Scientific Specialties Inc. v. ThermoFisher Scientific Inc. 684 F. Supp. 2d 1187 (N.D. Cal. 2010) (successfully obtained summary judgment and eventual settlement using expedited claim construction proceedings)
  • Apple Inc. v. Psystar Corporation (586 F.Supp.2d 1190 (2008) (represented Psystar in antitrust litigation challenging allegedly overly-restrictive licensing scheme implemented in the context of the Mac OS); (2009 WL 303046, at * 2-3 (N.D. 2009) (obtained successful holding that copyright misuse is an independent and valid claim for declaratory judgment and not merely an affirmative defense)
  • Tafas et al. v. Dudas (represented five amici in successfully overturning the United States Patent Office’s maligned “continuation rules package” that would have significantly limited the rights of patent applicants)

Memberships and Affiliations

  • Antitrust and Intellectual Property Sections of the American Bar Association, Member
  • Advisory Board of the Santa Clara University High Tech Law Institute, Member
  • High Technology Law Section of the Santa Clara County Bar Association, Member 
  •  Federal Circuit Bar Association, Member

Publications

  • Co-Author, "3 Things You Need to Know About the SHIELD Act, Which Aims to Make High-Tech Patent Litigation More Risky for NPEs," Lewis and Roca LLP Client Alert/Blog Post and also appeared on Law360.com, August 2012
  • Author, "The Supreme Court and the Law of Nature Exclusion," Lewis and Roca LLP Client Alert, March 2012
  • Author, "Merck KGgA v. Integra Lifesciences I, Ltd.", The Section 271 Safeharbor and Experimental Use, 2005
  • Author, "California Unfair Competition and Business Torts ISBN 0-8205-5870-2", Matthew Bender Practice Guide, 2004
  • Author, "Enterprise Rent-A-Car Company v. Advantage Rent-A-Car, Inc.: The Federal Circuit Bars Dilution Based Opposition to a Mark Used Before an Opposing Mark Became Famous", 20 Santa Clara Comp. & High Tech. L.J. 489, 2004
  • Author, "Redefining the Balance Between Trademark and Copyright Law A Recently Argued Case Asks the Supreme Court to Decide", Findlaw.com, April 8, 2003
  • Author, "An Analysis of Monsanto Co. v. McFarling", ABA Antitrust Division: Intellectual Property Committee Report,  September 9, 2002 
  • Author, "Copyrights and 'The Law': Veeck v. SBCCI", Intellectual Property Today, August 2002
  • Author, "New York Times v. Tasini: Ownership of Publishing Rights in Collective Works", 18 Santa Clara Comp. & High Tech. L.J. 341, 2002
  • Author, "Celebrity Domain Names and the Uniform Dispute Resolution Policy", 17 Santa Clara Comp. & High Tech. L.J. 385, 2001
  • Author, "Master of the Domain (Name): A History of Domain Name Litigation and the Emergence of the Anticybersquatting Consumer Protection Act and Uniform Dispute Resolution Policy", 17 Santa Clara Comp. & High Tech. L.J. 315, 2001
  • Author, "A Post-Order Analysis of Alternative Remedies in United States of America v. Microsoft Corporation: Was Divestiture the Proper Remedy In Light of Existing Legal Guideposts and Marketplace Concerns?", 2000

Speaking Engagements

  • Presenter, "Ethical Issues Involving Open Source Software", Practicing Law Institute, December 10, 2008
  • Presenter, "Claiming Your Stake After Bilski: Why Software and Business Process Patents are Not Dead", December 9, 2008
  • Presenter, "Maximizing Benefits of the Patent Cooperation Treaty & Recent Changes in Patent Cooperation Treaty Practice", August 1, 2003
  • Presenter, "Technology and the Regulation of Competition", February 14, 2003 
  • Presenter, "Foreign Patent Practice", January 24, 2003 
  • Presenter, "Hamburgers, Cigarette Lighters and DVD Burners or How I Learned to Stop Worrying and Love Internet Jurisdiction", September 27, 2002 
  • Presenter, "The Digital Millennium Copyright Act", June 7, 2002

Court Admissions

  • U.S. District Court, Middle District of Florida, 2010
  • U.S. District Court, Colorado, 2009
  • U.S. District Court, Southern District of California, 2009
  • U.S. Supreme Court, 2008
  • U.S. District Court, Eastern District of Texas, 2008
  • U.S. District Court, Central District of California, 2005
  • U.S. Court of Appeals, Federal Circuit, 2004
  • U.S. District Court, Eastern District of California, 2004
  • U.S. Court of Appeals, Ninth Circuit, 2001
  • U.S. District Court, Northern District of California, 2001
  • California Supreme Court, 2001

Other Distinctions

Mr. Springer is included in the 2013-2011 Super Lawyers edition of Northern California Rising Stars, and he was named a 40 Under 40 honoree in 2007 by the San Jose Business Journal.