Paul D. Tripodi II

Partner

Areas of Focus

Paul D. Tripodi II

Partner

ptripodi@akingump.com

Areas of Focus

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Biography
  • Lead trial lawyer who focuses on patent litigation, IP-related licensing and contract disputes, trade secret misappropriation and strategic counseling.
  • Represents clients in complex disputes involving a broad range of technologies, including medical devices and instrumentation, software and electronics, biotechnology, chemical manufacturing and genetic testing.

Paul is a partner in the Irvine and Los Angeles offices, where his practice focuses on intellectual property (IP) litigation, including patent litigation, trade secret misappropriation, and related licensing and contract disputes.

He has been involved in both bench and jury trials in federal district courts, as well as proceedings before various international tribunals, the International Trade Commission (ITC), the Patent Trial and Appeal Board (PTAB) and the U.S. Court of Appeals for the Federal Circuit. Paul has served as a pro bono prosecutor in nearly a dozen criminal matters, including as lead counsel in numerous related jury trials.     

Paul specializes in complex “competitor-to-competitor” litigation involving multiple patents, multiple jurisdictions, counterclaims of infringement, and foreign counterpart litigation, as well as disputes involving breach of confidentiality agreements and trade secret misappropriation.

He has been involved in disputes involving a broad range of technologies, including the following:

  • Medical devices and instrumentation relating to diagnostic ultrasound equipment.
  • Medical devices, instrumentation, methods and biologic materials relating to spinal surgery.
  • Cleantech and chemical processes for removing and reprocessing pollutants present in power plant emissions.
  • Digital assets, cryptocurrency and blockchain.
  • Quant funds and related financial products.
  • Software, electronics and encryption relating to televisions and displays, video game technology, smartphones, slot machines, graphical user interfaces, geolocation and mapping, wireless navigation, authentication and encryption, integrated circuits, power management/voltage regulation and circuit board manufacturing.
  • Genetic and biomarker testing, including foundational litigation relating to BRCA-1 and BRCA-2 .
  • Pharmaceutical compounds related to peptide hormones released into the bloodstream by the β-cells of the pancreas.
  • Monoclonal antibodies produced by recombinant DNA technology and used in the prevention of respiratory syncytial virus (RSV) infection.
  • Electroluminescent phosphors and materials incorporating the same.
  • Rubber compounding, polyurethane chemistry, and a variety of physical and chemical technologies relating to golf ball manufacturing.

Paul’s litigation experience is complemented by his prior experience with the preparation and prosecution of patent and trademark applications, as well as his continued involvement as an instructor and conference organizer in connection with matters related to intellectual property litigation and trial tactics.

Paul is certified as a Pro Bono Publico Prosecutor on behalf of the State of California and serves as a volunteer prosecutor in criminal matters on an ongoing basis. While in law school, he served as an extern in the Office of the Assistant General Counsel for Intelligence and International Affairs in the Department of Defense at the Pentagon.

Representative Work
  • Served as litigation counsel on behalf of a defendant in a case involving seven patents relating to ultrasound diagnostic equipment, software, hardware, and packaging, as well as related IPR proceedings.
  • Served as lead counsel on behalf of a U.S. based enterprise software developer in connection with allegations of theft of trade secrets and spying by foreign entities.
  • Served as lead counsel on behalf of a plaintiff in a case involving nine patents relating to spinal implants, access systems and methods, including a motion for Preliminary Injunction and allegations of copying, willful infringement, and assignor estoppel.*
  • Served as lead counsel in multiple matters in the Southern District of California relating to medical devices, instrumentation, methods, and biologic materials relating to spinal surgery; matters involved more than a dozen patents, along with related IPR proceedings and multiple reexamination proceedings.*
  • Served as lead counsel on behalf of a defendant in a case involving assertions of infringement of 13 patents relating to breast cancer genetic testing and methods. Asserted claims invalidated; case dismissed with prejudice after covenant not to sue.*
  • Served as trial counsel for a complainant in the ITC in a section 337 investigation involving multiple patents related to a smartphone design and graphical user interfaces. Exclusion order issued.*
  • Served as trial counsel for a defendant in a jury trial in the Eastern District of Texas in a matter involving multiple patents related to flat-screen television technology and damage claims of nearly $100 million.*
  • Served as trial counsel for respondents in the ITC in a section 337 investigation involving multiple patents related to digital televisions and displays. Exclusion order issued, but redesign non-infringing by customs.*
  • Served as trial counsel for a plaintiff in a jury trial in the District of Arizona. Successfully obtained a patent infringement jury verdict of $49 million and findings on non-infringement on each of the multiple patent infringement counterclaims brought by the defendant.*
  • Served as trial counsel for a plaintiff in a bench trial in the District of Delaware related to damages and willful infringement. Part of a trial team that obtained a patent infringement verdict of $30 million, including a finding of willful infringement and enhanced damages.*

*Matters handled prior to joining Akin.

Education
  • J.D., University of California, Los Angeles, School of Law, 1992

  • M.S., California Institute of Technology, 1989

  • B.S., Pennsylvania State University, 1987

Bar Admissions
  • California

Recognitions
  • Managing Intellectual Property, IP Stars – Patent Star, 2018 and 2021 to 2023.
  • Martindale-Hubbell, AV-Preeminent.
  • Southern California Super Lawyers – Intellectual Property Litigation, 2004, 2006 – 2018 and 2023.
Affiliations and Public Service
  • Member, Intellectual Property Section, American Bar Association
  • Member, California Bar Association
  • Fellow, Los Angeles County Bar Foundation
Speeches and Publications
  • Speaker, “Prosecution Tips from Patent Litigator’s Perspective,” AIPLA Patent Prosecution Basic Training, March 2022.
  • Speaker, “The Business Side of Patent Litigation in 60 Minutes or Less: Six Important Topics You Should Be Thinking About Now!” Southern California ACC, July 2021.
  • Speaker, “Prosecution Tips from Patent Litigator’s Perspective,” AIPLA Patent Prosecution Basic Training, February 2020.
  • Panelist, “Openings and Closings and the Role of Mock Jury Research in Assessing the Strengths and Weaknesses of your Case,” The Judge Paul R. Michel Intellectual Property American Inn of Court, June 2019.
  • Speaker, “Prosecution Tips from Patent Litigator’s Perspective,” AIPLA Patent Prosecution Basic Training, May 2019.
  • Moderator, “In House IP Topics,” Los Angeles Intellectual Property Law Association Spring Seminar, May 2018.
  • Moderator, “The New Frontier of IP Litigation: New technologies, New Claims, New Venues, and the New Role of Equity Perspectives from the Bench,” USC Intellectual Property Institute, March 2018.
  • Speaker, “Prosecution Tips from a Patent Litigator’s Perspective,” AIPLA Patent Prosecution Basic Training, U.S. Patent and Trademark Office – Rocky Mountain Region, February 2018.
  • Panelist, “Is Litigation Serving Innovation,” The Judge Paul R. Michel Intellectual Property American Inn of Court, October 2017.
  • Panelist, “Examining Expert Witnesses: An AIPLA Mock Jury Experience,” American Intellectual Property Law Association, Annual Meeting, Washington, D.C., October 2017.
  • Moderator, “Views from the Bench—The Continuing Evolution of Patent Litigation in the Post-AIA World, Los Angeles Intellectual Property Association, Spring Seminar, May 2017.
  • Moderator, Los Angeles Intellectual Property Law Association Law School Road Show, UCLA School of Law, November 2016.
  • Speaker, “Prosecution Tips from a Patent Litigator’s Perspective,” American Intellectual Property Patent Law Association Patent Prosecution Basic Training, Los Angeles, California, October 2016.
  • Moderator, Los Angeles Intellectual Property Law Association Law School Road Show, UCLA School of Law, October 2015.
  • Panelist, “Practical Strategies for Addressing the Evolving Patent Damages Landscape,” Federal Bar Association Annual Meeting, Salt Lake City, Utah, September 2015.
  • Moderator, “Hot Topics and Emerging Trends in Inter Partes Review,” Los Angeles IP Law Association, Spring Seminar, Laguna Beach, California, May 2015.
  • Dialogue Leader, “Impact of Teva v. Sandoz on the Claim Construction Process,” Sedona Conference, Miami, Florida, May 2015.
  • Speaker, “Prosecution Tips from a Patent Litigator’s Perspective,” American Intellectual Property Patent Law Association Patent Prosecution Basic Training, Los Angeles, California, April 2015.
  • Speaker, “Prosecution Tips from a Patent Litigator’s Perspective,” Orange County Patent Law Association, January 2015.
  • Moderator, LAIPLA Law School Road Show, UCLA School of Law, October 2014.
  • Speaker, “Navigating Patent Disputes,” BAIMA, October 2013.
  • Panelist, “Tried and True Strategies for Working with Expert Witnesses: Advice from the Trenches,” Los Angeles Intellectual Property Law Association, Los Angeles, California, October 2013.
  • Moderator, Los Angeles Intellectual Property Law Association Law School Road Show, September 2013.
  • Moderator, “Remedies,” a panel presentation addressing damages, standard essential patents, and injunctions, LAIPLA Spring Seminar 2013.
  • Faculty, “Dealing with Experts, Including Rule 26 Employee Experts,” Practising Law Institute’s Patent Litigation 2012, September 2012.
  • Moderator, “Patent Litigation 2012,” Practising Law Institute, September 2012.
  • Moderator, “Consideration of Local Patent Rules for the Central District of California,” Combined Meeting of the Los Angeles County Bar Association, Litigation Section, and Los Angeles Intellectual Property Law Association, December 2011.
  • Program Committee Member, “New Patent Litigation Pilot Program in the Central District of California: What Every Patent Litigator Needs to Know,” Combined Meeting of the Los Angeles County Bar Association, Litigation Section, and Los Angeles Intellectual Property Law Association, December 2011.
  • Speaker, “Breadth and Clarity in Claim Construction, ‘Patent Wars – Prosecutors v. Litigators,’” AIPLA Annual Meeting, October 2011.
  • Speaker, “Patent Prosecution from the Litigation Perspective,” AIPLA Practical Patent Prosecution Training for New Lawyers, August 2011.
  • Moderator, “The Patent Litigator: IP Trial Strategies and War Stories,” Los Angeles Intellectual Property Law Association Spring Seminar, June 2011.
  • Moderator, “Views from the Benches,” Combined Meeting of the Los Angeles Intellectual Property Law Association and Judge Paul R. Michel Intellectual Property American Inn of Court, September 2010.
  • Speaker, “Patent Prosecution Tips from the Litigation Perspective,” AIPLA Practical Patent Prosecution Training for New Lawyers, August 2010.
  • Speaker, “Best Practices: Dealing with In-House Counsel,” Los Angeles Intellectual Property Law Association Spring Seminar, May 2010.
  • Speaker, “Prosecution from the Litigation Perspective,” AIPLA Practical Patent Prosecution Training for New Lawyers, August 2009.
  • Moderator, “Are the Courts Meeting the Needs of the Technology Community?” Los Angeles Intellectual Property Law Association Judge’s Night, December 2008.
  • Speaker, “Patent Prosecution Tips from a Patent Litigator,” AIPLA Practical Patent Prosecution Training for New Lawyers, August 2007 and August 2008.
  • Faculty, “Section 337: Litigation at the ITC,” Practising Law Institute’s Patent Litigation 2006, September 2006.
  • Speaker, “Prosecution Tips and Argument & Amendment Estoppel,” AIPLA Practical Patent Prosecution Training for New Lawyers, 2005 and 2006.
  • Chair, AIPLA Patent Prosecution Basic Training, August 2002 and August 2003.
  • Moderator, “Prosecution Lessons from Patent Litigators,” AIPLA Patent Prosecution Basic Training, August 2002.
  • Speaker, “Mediation and Arbitration – How to Use It in a Cost-Effective and Productive Manner,” Creative Strategies Seminar, 2002.
  • Instructor, “Searching and Reporting on Patentability,” AIPLA Patent Prosecution Basic Training Course, August 2000 and August 2001.

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