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Jenny L. Colgate Member
Overview

Jenny L. Colgate is an experienced litigator, a creative strategist, a trusted advisor, a thought leader, and an extremely hard worker. She is also a mom, an accomplished equestrian, a former marathoner, and an animal lover.

Ms. Colgate has litigated cases involving a wide range of technologies and claims across numerous venues, such as:

  • District Courts, including the District of Delaware, Eastern and Western Districts of Texas, Northern and Central Districts of California, Southern District of New York, District of New Jersey, Northern District of Illinois, Northern and Southern Districts of Ohio, and Middle and Southern Districts of Florida;
  • Courts of Appeal, including the Federal Circuit Court of Appeals and the District of Columbia Court of Appeals;
  • Agencies, including the International Trade Commission (Section 337 matters), the Patent Trial and Appeal Board, and the Trademark Trial and Appeal Board; and
  • Arbitration Organizations, including the American Arbitration Association.

Ms. Colgate also has substantial experience outside of litigation, including:

  • Pre-litigation strategic advising and risk evaluation;
  • Contract and licensing matters – negotiation, drafting, IP and privacy considerations, strategic navigation, and dispute resolution;
  • Counseling on intellectual property protection and enforcement;
  • Counselling on privacy law compliance and best practices;
  • Libel reads;
  • Privacy and security related opinions;
  • Patent opinions (freedom to operate, invalidity, and non-infringement); and
  • Thought leadership (authoring expert analyses and speaking on panels and at webinars regarding, inter alia, developing IP issues, litigation strategies, damages and remedies, and privacy matters).

Representative companies and technologies that Ms. Colgate has represented over her career include:

  • High Technology: Nichia Corporation (LEDs), LG Electronics (mobile technology), and Texas Instruments (semiconductors);
  • Software and Hardware: Microsoft Corporation (software), Versata (software), FSMLabs (software), TimeSolv (software), VIM Technologies (software), Seagate Technology (data storage hardware), and Emine Technology (KVM switch hardware);
  • Financial/Business: Investment Technology Group (electronic trading), Sun Life Assurance Company of Canada (financial products), and Affinion Corporation (loyalty solutions);
  • Media: The New York Times Company (media), Dow Jones (media), and Martha Stewart Living (media);
  • Medical Device: Dentsply Sirona (dental products and technologies) and Spear Pharmaceuticals (dermatological products);
  • Generic Pharmaceuticals: Sandoz Inc. (pharmaceuticals), Cobalt Laboratories (pharmaceuticals), and Mylan Pharmaceuticals (pharmaceuticals);
  • Chemical Coatings and Compositions: AFG Industries (chemically-coated glass products);
  • Machinery: Unverferth Manufacturing (farm machinery); and
  • Consumer Products: Procter & Gamble Co. (consumer products), Trans World Entertainment (d/b/a/ FYE) (media products), The J. M. Smucker Company (consumer products), EquiFit (equestrian products/apparel), Haygain (equestrian products), Arm’s Reach (baby products), and Valentino USA (apparel).

Ms. Colgate was named a Washington DC Super Lawyer “Rising Star” for IP litigation eight years in a row from 2013 through 2020.

Ms. Colgate is a summa cum laude graduate of the University of Pennsylvania, where she graduated with honors, completing her thesis in the area of web advertising to children/children’s privacy. While in college, Ms. Colgate captained the University of Pennsylvania equestrian team and competed in equestrian at the national level. She also hosted a college radio station and was the first female beer vendor at Veterans Stadium (for the Philadelphia Phillies).

Ms. Colgate received her J.D. and LLM from the University of New Hampshire Franklin Pierce Law Center. She graduated magna cum laude. While in law school, Ms. Colgate was a judicial intern at the United States Court of Appeals for the Federal Circuit for the Honorable Arthur J. Gajarsa (now retired). She was also a teaching assistant of Constitutional Law, Legal Writing, and Torts; an editor of the law review; a marathon/ultramarathon runner; and a regular on the local ski slopes. Ms. Colgate wrote a book on her law school experience in 2005, which was published the following year.

Ms. Colgate resides in Virginia with her family, small herd of horses, and several rescue dogs and cats.

Experience

Representative Cases Before District Courts and Courts of Appeal

Finite State Machine Labs, Inc. v. Spectracom Corp., Orolia USA, Inc., and Orolia S.A., Civil Action No. 17-cv-1040-SS (W.D. Tex.)

  • Represented plaintiff and counterclaim defendant, FSMLabs, Inc.
  • Claims:
    • Trade secret infringement
    • Unfair competition by misappropriation and unfair competition by breach of confidence
    • Breach of contract under NY, TX, and DE law
    • False designation of origin under 15 USC 1125(A)
    • Fraudulent inducement
  • Counterclaim: Tortious interference with business relations
  • Won contested motion to amend complaint to add, inter alia, fraudulent inducement claim
  • Case settled during pendency of summary judgment and Daubert motions

Nichia Corporation v. Feit Electric Company, Inc., Civil Action No. 20-cv-359 (C.D. Cal.)

  • Represented plaintiff, Nichia Corporation
  • Patent Infringement (U.S. Patent No. 9,752,734)
  • Concerning filament-style LED lightbulbs
  • Defeated Feit’s motion to dismiss
  • Case is pending

Maritz Holdings Inc. v. Connexions Loyalty, Inc., Civil Action No. 18-cv-967 (D. Del.)

  • Represented defendant, Connexions Loyalty, Inc. (renamed cxLoyalty)
  • Patent Infringement (U.S. 7,134,087)
  • Concerning loyalty programs
  • Filed petition for CBM review; CBM review was instituted; FWD determined all challenged claims to be unpatentable under 35 U.S.C. § 101. Federal Circuit appeal is pending.
  • Won opposed motion to stay litigation pending CBM review proceeding
  • Case is pending

Unverferth Mfg. Co., Inc. v. Meridian Mfg., Inc., Civil Action No. 19-cv-4005 (N.D. Iowa)

  • Represented plaintiff and counterclaim defendant, Unverferth Mfg. Co., Inc.
  • Patent Infringement (U.S. Patent Nos. 8,221,047, 8,967,940, 9,745,123, 8,292,065, and 6,964,551)
  • Trademark Infringement
  • Concerning self-fill seed tenders, box seed tenders, and conveyor belts (farming equipment)
  • Won claim construction in favor of Unverferth for 11 of 16 disputed terms, and 4 of the 5 patents at issue
  • Case is pending

Unverferth Mfg. Co., Inc. v. Norwood Sales Inc., Civil Action No. 18-cv-00053 (District of North Dakota)

  • Represented plaintiff, Unverferth Mfg. Co., Inc.
  • Patent Infringement (U.S. Patent Nos. 8,221,047, 8,967,940, and 9,745,123)
  • Concerning self-fill seed tenders (farming equipment)
  • Obtained favorable settlement

Nichia Corp. v. Feit Electric Company, Inc., Civil Action No. 18-cv-01390 (C.D. Cal.)

  • Patent Infringement (U.S. Patent Nos. 8,530,250, 9,490,411, and 9,537,071)
  • Concerning LED packages and a simple and low-cost method of manufacturing multiple LED packages in a short time
  • Won numerous motions to compel discovery against Feit Electric Company and third party defendants
  • Defeated Feit’s motion for judgment on the pleadings
  • Case stayed pursuant to joint motion

Nichia Corp. v. VIZIO, Inc., Civil Action No. 18-cv-00362 (C.D. Cal.)

  • Patent Infringement (U.S. Patent Nos. 8,530,250, 9,490,411, and 9,537,071)
  • Concerning LED packages and a simple and low-cost method of manufacturing multiple LED packages in a short time
  • Case settled

Nichia Corp. v. Mary Elle Fashions, Inc. D/B/A Meridian Electric, Civil Action No. 16-cv-615 (E.D. Texas) (lead case, numerous cases consolidated)

  • Represented plaintiff, Nichia Corp., against defendants Meridian Electric, Feit Electric, Lowes, TCL, and VIZIO
  • Patent Infringement (U.S. Patent Nos. 8,530,250, 9,490,411, and 9,537,071)
  • Concerning LED packages and a simple and low-cost method of manufacturing multiple LED packages in a short time
  • Obtained settlements with respect to several of defendants; other cases were transferred to C.D. California following Supreme Court’s decision in TC Heartland.

Donald P. Borchers v. Amazon.com, Inc., et al., Civil Action No. 18-cv-61537 (S.D. Fla.)

  • Represented defendant, Trans World Entertainment
  • Copyright infringement concerning film rights related to the Children of the Corn franchise
  • Defendants won motion to dismiss for lack of personal jurisdiction because Lantern Entertainment (“Lantern”) was a necessary party, and the S.D. Fla. Lacked personal jurisdiction over Lantern.
  • Defendants also won motion to dismiss on grounds that plaintiff’s complaint was an impermissible “shotgun pleading.”

Unverferth Mfg. Co., Inc. v. J&M Mfg. Co., Inc., Civil Action No. 16-cv-2282 (N.D. Ohio)

  • Represented plaintiff, Unverferth Mfg. Co., Inc.
  • Patent Infringement (U.S. Patent Nos. 8,221,047 and 8,967,940)
  • Concerning self-fill seed tenders (farming equipment)
  • Obtained favorable settlement
  • Won claim construction on all disputed terms
  • Won motion to compel concerning waiver of privilege/advice of counsel issues

EquiFit, Inc. v. Devon-Aire, Inc., Civil Action No. 18-cv-00056 (M.D. Fla.)

  • Represented plaintiff, EquiFit, Inc.
  • Trademark Infringement (unauthorized sale and offer for sale of equestrian jackets bearing the word EQUIFIT)
  • Obtained favorable settlement

Unverferth Mfg. Co., Inc. v. J&M Mfg. Co., Inc., Civil Action No. 15-cv-1045 (N.D. Ohio)

  • Represented plaintiff, Unverferth Mfg. Co., Inc.
  • Patent Infringement (U.S. Patent No. 9,039,340)
  • Concerning extended reach grain carts (farming equipment)
  • Obtained favorable settlement
  • Won motion to enforce settlement agreement

Unverferth Mfg. Co., Inc. v. J&M Manufacturing Inc., Civil Action No. 14-cv-3062 (N.D. Iowa)

  • Represented plaintiff, Unverferth Mfg. Co., Inc.
  • Patent Infringement (U.S. Patent No. 6,176,504)
  • Concerning gravity wagons (farming equipment)
  • Obtained favorable settlement

Jersey Prods., Inc. et al. v. TGG Direct, LLC, et al., Civil Action No. 16-cv-6213 (S.D.N.Y.)

  • Represented defendant, Trans World Entertainment (“TWE”)
  • Copyright infringement, involving, inter alia, Three Stooges compilation works, Larry Fine interview work, Elvis compilation work, and McLintock! Version
  • Case settled

Driessen, James L. and Marguerite A. v. Sony Music Entertainment, et al., Civil Action No. 09-cv-140 (D. Utah)

  • Represented defendant, FYE (a.k.a. Trans World Entertainment)
  • Patent Infringement (U.S. Patent Nos. 7,003,500, 7,636,695, and 7,742,993)
  • Concerning digital music card
  • Won multiple rounds of motions to dismiss
  • Won two motions for summary judgment (indefiniteness and written description)
  • Won motion for reconsideration
  • Affirmed by the Federal Circuit Court of Appeals (Case No. 2015-2050)

In re: Amgen Inc. Securities Litigation, representation of Paul B. Goldberg (The Cancer Letter, Inc.), Civil Action No. 15-00825 (D.D.C.)

  • Represented Paul B. Goldberg, journalist for The Cancer Letter, Inc.
  • First Amendment
  • Won motion to quash subpoena filed by Amgen, Inc. on grounds the information was protected by reporter’s privilege

Surpass Tech. Innovation LLC v. LG Display Co. Ltd. et al., Civil Action No. 14-cv-00336 (D. Del.)

  • Represented defendant, LG Display Co. Ltd. et al.
  • Patent Infringement
  • Case dismissed

Cypress Semiconductor Corp. v. LG Electronics Inc. et al., Civil Action No. 13-cv-04034 (N.D. Cal.)

  • Represented defendant, LG Electronics Inc. et al.
  • Patent Infringement (U.S. Patent Nos. 6,012,103; 6,249,825; 6,493,770; 8,004,497; 8,059,015; 8,519,973)
  • Concerning USB technology and touchscreen technology
  • LG filed IPRs, which were instituted on each of the six patents-in-suit
  • Case settled with agreement that IPRs be terminated. Cypress’s claims were dismissed with prejudice, and LG’s counterclaims were dismissed without prejudice.

LG Electronics Inc. et al. v. Toshiba Samsung Storage Technology Korea Corp., Civil Action No. 12-cv-01063 (D. Del.)

  • Represented plaintiffs, LG Electronics Inc. et al.
  • Patent Infringement (U.S. Patent Nos. 6,101,162; 7,380,159; 7,380,178; 6,477,126)
  • Concerning optical disc drive technology (initializing, recording, playback)
  • Defeated TSST-K’s motion to dismiss and successfully argued that Defendants’ counterclaims were permissive and should be brought as separate suit
  • Case stayed in view of IPR proceedings and In re Toshiba Samsung Storage Technology Korea Corporation (Case No. 16-11602) in the United States Bankruptcy Court for the District of Delaware, and then dismissed without prejudice 

E-Contact Technologies LLC v. Acer America Corp. et al., Civil Action No. 12-cv-00352 (E.D. Tex.)

  • Represented defendant, LG Electronics Mobilecomm
  • Patent Infringement (U.S. Patent No. 5,347,579)
  • Concerning a computer system for archiving data blocks
  • Obtained favorable settlement after filing motion to dismiss

Bluebonnet Telecommunications, LLC v. LG Electronics, Civil Action No. 13-cv-502 (E.D. Tex.)

  • Represented defendant, LG Electronics Mobilecomm U.S.A., Inc.
  • Patent Infringement (U.S. Patent No. 5,485,511)
  • Concerning telephone networks
  • Dismissal with prejudice

SimpleAir v. Microsoft Corp. et al., Civil Action No. 11-cv-416 (E.D. Tex.)

  • Represented defendant, LG Electronics Mobilecomm U.S.A., Inc.
  • Patent Infringement (U.S. Patent No. 7,035,914)
  • Concerning Google’s Cloud Messenger (GCM) and Cloud to Device Messenger (C2DM)
  • Obtained favorable settlement for client after filing motion to dismiss and motion for summary judgment of non-infringement

The JM Smucker Co. v. Lodsys LLC, Civil Action No. 12-cv-00012 (E.D. Wis.)

  • Represented declaratory judgment plaintiff, The JM Smucker Co.
  • Patent Infringement (U.S. Patent Nos. 7,222,078; 5,999,908; 7,133,834; 7,620,565)
  • Concerning features of The JM Smucker Co.’s website
  • Obtained favorable settlement for client after filing motion for summary judgment of non-infringement

Martha Stewart Living Omnimedia Inc. v. Lodsys Group LLC, Civil Action No. 13-cv-1074 (E.D. Wis.)

  • Represented declaratory judgment plaintiff, Martha Stewart Living Omimedia
  • Patent Infringement (U.S. Patent Nos. 7,222,078; 5,999,908; 7,133,834; 7,620,565)
  • Concerning features of the Martha Stewart Living Omnimedia Inc. website
  • Obtained favorable settlement for client

Investment Technology Group, Inc. v. Liquidnet Holdings, Inc. v. Pulse Trading, Inc., Civil Action No. 07-cv-510 and 07-cv-6886 (S.D.N.Y.)

  • Represented declaratory judgment plaintiff, Investment Technology Group, Inc.
  • Patent Infringement (U.S. Patent No. 7,136,834)
  • Concerning ITG’s “Channel” and “POSIT Alert” financial trading products
  • Won motion for summary judgment of no literal infringement and no willful infringement

Sun Life Assurance Company of Canada v. Lincoln National Life Insurance Co., Civil Action No. 09-cv-10245 (D. Mass.)

  • Represented declaratory judgment plaintiff, Sun Life Assurance Company of Canada 
  • Patent Infringement (U.S. Patent Nos. 6,611,815; 7,089,201; 7,376,608)
  • Concerning annuity products
  • Obtained favorable settlement for client

Americans for Fair Patent Use, LLC v. Sprint Spectrum L.P., et al., Civil Action No. 10-cv-00237 (E.D. Tex.)

  • Represented defendant, LG Electronics Mobilecomm U.S.A., Inc.
  • Patent Infringement
  • Obtained favorable settlement for client

Consumers Protecting Consumers, LLC v. Samsung Electronics Co., Civil Action No. 11-ccv-01263 (E.D. Pa.)

  • Represented defendant, LG Electronics Mobilecomm U.S.A., Inc.
  • Patent Infringement
  • Case was voluntarily dismissed

VA Filtration USA LLC v. Mavrik North America, Civil Action No. 11-cv-00134 (N.D. Cal.)

  • Represented plaintiff, VA Filtration USA LLC
  • Patent Infringement (U.S. Patent Nos. 7,651,616 and 7,829,977)
  • Concerning wine taint removal
  • Case settled

Vinovation, Inc. and Oenovation International LLC v. VA Filtration, Civil Action No. 06-cv-02026 (N.D. Cal.)

  • Represented defendant, VA Filtration
  • Patent Infringement (U.S. Patent No. 5,480,665)
  • Concerning wine filtration technology
  • Case settled

The New York Times Company v. Lodsys, LLC, Civil Action No. 11-cv-04004 (E.D. Ill.)

  • Represented declaratory judgment plaintiff, The New York Times Company
  • Patent Infringement
  • Concerning features of The New York Times website
  • Obtained favorable settlement for client

Globespan Virata, Inc. v. Texas Instruments, et al., Civil Action No. 03-cv-02854 (D.N.J.)

  • Represented declaratory judgment defendant, Texas Instruments
  • Patent Infringement
  • Concerning DSL modems
  • Obtained verdict for $112,000,000

Representative Section 337 Cases

  • Certain Laser Imageable Lithographic Printing Plates (Inv. No. 337-TA-636)
  • Certain Hard Disk Drives, Components Thereof, and Products Containing the Same (337-TA-616)
  • Certain Switches and Products Containing the Same (Inv. No. 337-TA-589)

Representative PTAB Cases

CBM2018-00037 (U.S. Patent No. 7,134,087)

  • Represented cxLoyalty, petitioner
  • Original claims 1-15 determined to be unpatentable under 35 U.S.C. § 101
  • Substitute claims 16-23 determined to be patentable under 35 U.S.C. § 101
  • Concerning loyalty program and the abstract idea of brokering an exchange between participants using different forms of value
  • Appeal to United States Court of Appeals for the Federal Circuit is pending

IPR2017-01623 (U.S. Patent No. 8,530,250)

  • Represented Nichia Corp., patent owner
  • Claims 1, 7, 17, 19, and 21 upheld
  • Concerning a simple and low-cost method for manufacturing multiple light emitting devices (LEDs) in a short time
  • Managed “swear behind” team leading to successful result. Nichia successfully swore behind the prior art at issue (Koung) by showing conception of the invention claimed in the ‘’250 patent before the filing date of Koung, combined with diligence in reduction to prior art.

Representative TTAB Cases

Valentino USA, Inc. v. Florence Fashions (Jersey), Ltd., Opposition Nos. 91094961, 91095203; Cancellation Nos. 92029390, 92029476

  • Represented Valentino USA, Inc., opposer
  • Oppositions were sustained and both petitions to cancel were granted.

Valentino S.p.A. v. Matsuda & Co., Opposition Nos. 91174169, 91174171, 91174183, 91174195, 91174315, and 91179386

  • Represented Valentino S.p.A., opposer
  • Oppositions were sustained.

Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607

  • Represented Fiat Group Automobiles S.p.A., opposer

Representative Other Matters

  • Representation of clients against numerous NPEs, including Sound View, Sisvel, Driessen, Lodsys LLC, Webvention, Boadin Technologies, SimpleAir, Flatworld Interactives, Rosetta-Wireless Corp., Packet Tread LLC, Cypress Lake Software, LoneStar, and others
  • Representation of clients in arbitration proceedings, including AAA
  • Counselling of clients with respect to privacy issues
  • Counselling and contract work regarding technology-related contracts (e.g., licenses, assignments, joint development agreements, reseller agreements, non-disclosure agreements)
  • Legal reads of manuscripts
  • Pre-litigation representation, threatened litigations, settlement negotiations
  • Opinion work (e.g., non-infringement, validity, essentiality, freedom to operate)
  • Counselling in Proposition 65 matters
Publications & Presentations

Jenny Colgate, Caitlin Wilmot, Martin Zoltick, and Jennifer Maisel, U.S. Section of Mondaq's Data Privacy Comparative Guide (November 2020).

Presenter and Panelist, "Employee privacy and security considerations in the age of COVID-19," Lexology Webinar (September 2020). 

Presenter and Panelist, "Connected Healthcare - Navigating the Patchwork of US Privacy Laws and Devoping a Platform that Promotes Trust," American Bar Association (ABA) Webinar, Sponsored by the Section of Science & Technology Law (September 2020). 

Moderator, "Virtual Teams: Does Remote Working Have A Place In The Future of The Profession?" Corporate Counsel's Virtual General Counsel Conference (GCC) 2020 (September 2020).

Jenny Colgate and Sheena Wang, "Foreign Patent Damages Recovery 2 Years After WesternGeco," IP Law360 (August 18, 2020). 

Jenny L. Colgate and Martin M. Zoltick, Privacy, Data Protection, and Cybersecurity: A State-Law Analysis, International Comparative Legal Guide (ICLG) to: Data Protection 2020 (July 2020).

Presenter and Panelist, "Employee and Customer Health Data: Back to Work in the Age of COVID-19," Northern Virginia Technology Council (NVTC) "Back to Work" Virtual Roundtable Series (June 2020).

Jenny L. Colgate and Martin M. Zoltick, The Application of Data Protection Laws in (Outer) Space, International Comparative Legal Guide (ICLG) to: Data Protection 2019 (July 2019).

Panelist, "Patent disputes and litigation: strategies for optimizing success," Managing Intellectual Property’s US Patent Forum, New York, NY, April 4, 2019.

Jenny L. Colgate, "WesternGeco Could Lead to Cases Against Foreign Suppliers," IP Law360 (August 3, 2018).

Jenny L. Colgate and Nechama E. Potasnick, "If TC Heartland Is Reversed, When To Get Out Of East Texas," IP Law360 (March 31, 2017).

Jenny L. Colgate and Nechama E. Potasnick, "5 Things To Expect If High Court Reverses TC Heartland," IP Law360 (March 28, 2017).

Jenny L. Colgate, "New Ideas to Make Discovery Effective and Efficient," The Woman Advocate Section of Litigation, American Bar Association (March 2, 2017).

A Reflection on (Life In) Law School, Jenny L. Workman (Publish America 2006).

Franklin Pierce Law Center's Admissions Viewbook is based on an adaptation of Workman's book, A Reflection on (Life In) Law School: http://piercelaw.edu/viewbook/.

Jenny L. Workman, "Transferring Intent Into Smoker's Battery: Finally, Plaintiffs Can State a Claim," http://nosmokingcontest.org (2005).

Speaker, “Avoiding Liability under Commil v. Cisco,” ACI Paragraph IV Disputes Conference, New York, NY, April 29, 2014.

Speaker, "Copyright Law and Equine Photography," 26th Annual National Conference on Equine Law, Lexington, Kentucky, May 5, 2011.

Professional Affiliations, Honors & Recognition

Member of the International Association of Privacy Professionals (IAPP)

Member of the American Bar Association

Member of the Federal Circuit Bar Association

Member of the American Intellectual Property Law Association

Washington DC Super Lawyers "Rising Star" (2013–2020)