Brian C. Claassen

Masimo Corp. et al. v. Apple, Inc., Case No. 8:20-00048 (C.D. Cal.)

Brian Claassen co-leads the Knobbe Martens team representing two related companies (Masimo and Cercacor Laboratories) against Apple in several forums. Mr. Claassen manages the technical trade secrets and patent liability in a case pending in the Central District of California. Masimo and Cercacor allege that Apple acquired trade secrets concerning its Apple Watch from Cercacor’s former Chief Technical Officer. Following an April 2023 trial that resulted in a hung jury, the case will be retried along with added patent claims.

Masimo Corp. et al. v. True Wearables, Inc., Case No. 8:18-cv-02001 (C.D. Cal.), aff’d, 2022 WL 205485 (Fed. Cir. 2022)

Mr. Claassen examined witnesses and made closing arguments on behalf of Masimo in a trade secret misappropriation case against a former executive. The case centered around the former Chief Technical Officer of Cercacor, charged with leading research and development using Masimo’s core technologies. That executive left the Masimo affiliate and later launched his own company True Wearables.
The team obtained a preliminary injunction, ordering Lamego and True Wearables to take all steps necessary to prevent the publication of confidential information in numerous patent applications. The Federal Circuit affirmed in January 2022. The trial court conducted a bench trial in March 2022, where Mr. Claassen and the team secured a ruling that Lamego misappropriated trade secrets, breached his fiduciary duty, and violated his employment agreements. The Court ordered Lamego to abandon patent applications containing Masimo trade secrets and return Masimo’s information. The Court enjoined the sale of True Wearables’ products that contained Masimo’s trade secret technology.

Apple, Inc. v. Masimo Corp, IPR2022-01271, IPR2022-01272. IPR2022-01273. IPR2022-01274, IPR2022-01275 (USPTO)

Mr. Claassen led the defense against six Apple petitions for inter partes review of Masimo pulse oximetry patents that formed the basis for an exclusion order from the International Trade Commission banning the import of certain Apple watches. The Patent Office denied all six petitions, agreeing with Masimo about the deficiencies in Apple’s hindsight analysis.

In re Certain Light-Based Physiological Measurement Devices and Components Thereof, 337-TA-1276 (U.S. International Trade Commission)

Mr. Claassen represented Masimo in a patent infringement investigation against Apple at the ITC that resulted in an import ban of certain Apple Watches. Mr. Claassen examined both parties’ expert witnesses and proved infringement of the asserted patents that led to the import ban.
Those Apple Watches, introduced after the pandemic started, included a “Blood Oxygen” feature to give a reading purporting to correspond to a user’s oxygen saturation. The parties tried the case in June 2022. In January 2023, an ITC Administrative Law Judge (ALJ) found that the Apple Watch infringes Masimo patents on technology for measuring oxygen in the blood and recommended exclusion of these watches. In October 2023, the ITC released its final determination and issued a limited exclusion order and cease and desist order against the Apple Watches at issue. In January 2024, the ban went into effect and Mr. Claassen represents Masimo in Apple’s appeal of the ban to the Federal Circuit.

Apple v. Masimo, C.A. Nos. 22-cv-1377-JLH and 22-cv-1378-JLH (D. Del)

Mr. Claassen is an essential member of the team defending Masimo and Sound United and counterclaimants Masimo and Cercacor Laboratories against Apple. As a result of Masimo’s pending trade secrets case against Apple (above) as well as Masimo’s success in securing an import ban on certain Apple Watch models, Masimo faces retaliatory litigation alleging that the company copied the Apple Watch. Mr. Claassen plays a major role in bringing counterclaims alleging antitrust violations, patent infringement, and false advertising claims against Apple. The case is significant in the matrix of ongoing litigation between Masimo and Apple.

Dominion Assets LLC v. Masimo Corp. and Cercacor Laboratories, Inc. (NDCA).

Represented defendants against three patents regarding non-invasive blood analyte monitoring. Obtained dismissal of a first suit for lack of standing at the time the complaint was filed. In a second case, Plaintiff dropped one patent after production of our expert report regarding the lack of infringement. Obtained summary judgment of invalidity, an order excluding plaintiff’s damages expert, and a covenant not to sue on all of plaintiff’s patents.

NueroGrafix et al. v. Toshiba Am. Medical Sys. (and related cases) (MDL).

Successfully defended Toshiba Medical against patent infringement claims regarding MRI.

American Vehicular Sciences LLC v. Toyota Motor Corporation (and related cases) (CACD and MIED).

Represented airbag manufacturer in significant non-practicing entity case asserting side-curtain airbag patent against defendants in automotive industry. Successfully transferred case, filed petitions for IPR, obtained a stay, and established unpatentability of asserted patents.

Digital Stream IP, LLC v. iHeartMedia, Inc. and Digital Stream IP, LLC v. CBS Radio, Inc. (TXED).

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.

Better Mouse Co., LLC LLC v. Toshiba America Info. Sys., Inc., et al.  (TXED).

Successfully defended Toshiba against patent infringement claims

Kreative Power, LLC v. Monoprice (NDCA).

Defended online retailer against claims of infringing utility patents, design patents, and copyrights relating to a power outlet/surge protector. Won summary judgment of invalidity and noninfringement within six months after the complaint was filed, with no need for depositions or a claim construction hearing.

Vaultet LLC v. Starbucks Corporation (TXED).

Successfully defended Starbucks against patent infringement claims

Jimmy Styks LLC v. Hobie Cat Co., LLC (CACD).

Negotiated favorable settlement in patent infringement suit related to handles for stand up paddleboards resulting in dismissal of case with prejudice.

Salmon Licensing LLC v. Cellphone-Mate Inc. (DED).

Negotiated favorable settlement in patent infringement suit related to cell phone repeaters resulting in dismissal of case with prejudice.

Traffic Information v. Fandango, Inc. (TXED).

Negotiated favorable settlement in patent infringement suit related to traffic information in mobile apps resulting in dismissal of case with prejudice.

Sapphire Dolphin v. Monoprice (DED).

Negotiated favorable settlement in patent infringement suit related to communications over Bluetooth network via near field communications resulting in dismissal of case with prejudice.

Ideative Product Ventures, Inc. v. Monoprice (TXED).

Negotiated favorable settlement in patent infringement suit related to HDMI swivel adapters resulting in dismissal of case with prejudice.

LaserDynamics, LLC v. Boombang Inc. (NYSD).

Negotiated favorable settlement in patent infringement suit related to DVD playback resulting in dismissal of case with prejudice.

Canatelo, LLC  v. Toshiba America (DPR).

Represented Toshiba America Information Systems, Inc. in a patent infringement action related to automated security camera technology.  Obtained favorable dismissal.

U.S. Ethernet Innovations Inc. v. Acer et al. (TXED and NDCA and CAFC).

Defended Toshiba Corporation to successfully obtain summary judgment in a significant non-practicing entity case. The plaintiff had sued over 30 defendants for infringing patents directed to Ethernet technology. Judge Claudia Wilken of the Northern District of California granted judgment of invalidity on two patents and non-infringement of two others. Successfully transferred the case from the Eastern District of Texas to the Northern District of California. Affirmed on appeal.

In the Matter of Certain Electronic Imaging Devices, Inv. No. 337-TA-850 (U.S.I.T.C. 2013). Submitted public interest Statement on behalf of T-Mobile USA, Inc. encouraging Commission to decline to issue an exclusion order that would compensate the patentee for non-infringing features of the accused products.

Charles C. Freeny, et al. v. Western Digital Corp. (TXED).

Negotiated favorable settlement resulting in dismissal of case with prejudice.

Kroy IP Holdings, LLC v. Capita Techs. Inc. (TXED).

Negotiated stipulated dismissal of case following service of invalidity contentions on behalf of defendant.

Hawaii AirBoards, LLC v. Hobie Designs, Inc. (HID).

Negotiated favorable settlement resulting in dismissal of case.

In the Matter of Certain Computer Notebook Products and Components Thereof, Inv. No. 337-TA-705 (USITC).

Obtained summary determination for complainant Toshiba regarding respondents’ affirmative defenses in patent infringement lawsuit involving hardware and software components of notebook computers.

Commonwealth Scientific and Indus. Research Org. v. Toshiba America Info. Sys., Inc., et al. (TXED).

Represented Toshiba in a patent infringement lawsuit involving wireless LAN standards.

Discovision Assoc. v. Toshiba Corp. (NYSD).

Represented Toshiba in lawsuit involving breach of patent license agreement for optical disc playback and recording products.

Light Valve Solutions, LLC v. 3M Company, et al. (GAND).

Represented Toshiba in patent infringement lawsuit involving projectors.

Toshiba America Info. Sys., Inc., et al. v. Walletex Microelectronics Ltd (IPR2018-01538)

Currently representing petitioner Toshiba in instituted IPR regarding USB connector patent.

Takata Corporation v. American Vehicular Sciences, LLC (IPR2016-1794).

Chief strategist for IPR petitioner that resulted in a final written decision finding all 44 claims of the challenged side-curtain airbag patent unpatentable on 13 grounds. Successfully established the lack of written description support for the challenged in the priority patent applications.

Toyoda Gosei Co. Ltd. v. American Vehicular Sciences, LLC (IPR2016-1790).

Obtained a final written decision finding all claims of the challenged airbag patent unpatentable. Demonstrated obviousness, including establishing reasons to combine and modification of prior art. Overcame evidence and arguments relating to objective considerations of non-obviousness.

Wilson Electronics, LLC v. CellPhone-Mate, Inc. d/b/a SureCall (IPR2018-1771, -1772, 1774, -1776, -1778, 01779).

Successfully represented SureCall’s 5-band cellphone booster patent against competitor challenge. Obtained non-institution of six petitions confirming patentability of all claims.

GameChanger Charity v. PlayNext, Inc. (CACD).

Successfully enforced trademark on behalf of owner.

Agri-Cover Inc. v. Ben Sabio (CACD).

Successfully enforced trademark on behalf of owner.

Kreative Power, LLC v. Monoprice (NDCA).

Defended online retailer against copyright claims relating to a power outlet/surge protector. Obtained summary judgment of invalidity and noninfringement within six months after the complaint was filed, with no need for depositions or a claim construction hearing.