Breton A. Bocchieri

310.552.0130

Experience

Breton ("Bret") Bocchieri is an intellectual property trial lawyer with a very extensive practice in patent, trade secret, trademark, unfair competition, copyright, IP-related antitrust disputes, entertainment, and commercial litigation.

Throughout his career, Bret has demonstrated creativity and leadership in establishing important precedents in patent and other areas of IP law, as reported in the national and legal press, television, over a dozen legal treatises, and two law school text books.

He has represented clients across a broad array of industries and technologies in IP cases both as plaintiff and defendant.

Bret is a well-regarded author on litigation strategy and tactics and his publications have been cited and discussed in many legal and business journals and articles. His legal victories and their impact have been featured by the national press and television news programs, including The New York Times and The Wall Street Journal, Los Angeles Times, The Daily Journal, The Recorder, IP 360, CNN Headline News, ABC, and many legal organizations.

Obtained a $117 million judgment for trademark infringement and cybersquatting (Qwest Communications Int'l v. One Qwest, 2002 U.S. Dist. LEXIS 25469) (Prior to joining Robins Kaplan LLP)

Represented Kawasaki Motors and led the defense in the precedent-setting Refac Int'l, Ltd. v. Hitachi, et al., 921 F.2d 1247 (Fed. Cir. 1990) one of the largest patent infringement cases ever filed, establishing that a plaintiff must provide detailed infringement claim charts early in discovery or suffer dismissal with prejudice and payment of attorney's fees as a sanction. This case has been reported in the national press including the New York Times, Wall Street Journal, Los Angeles Times, and various trade journals and legal treatises, and is one of the few patent cases to be featured in textbooks for general law courses throughout the country, including Patent Litigation and Strategy (2nd and 3rd editions), with accompanying teacher's manual. (Prior to joining Robins Kaplan LLP)

Established new method of calculating damages for infringement occurring via the Internet by projecting a defendant's revenue's based on the number of Internet sign-ups. (Prior to joining Robins Kaplan LLP)

Obtained the first "web posted" injunction in which the defendant was ordered to post an injunction on its website to notify and enjoin users of the defendant's website from engaging in all future infringing activities. (Prior to joining Robins Kaplan LLP)

Led the defense on a case involving three pioneer patents covering liquid crystal display technology and obtained defense judgment of over two million dollars. (Prior to joining Robins Kaplan LLP)

Obtained sanctions of dismissal and default with prejudice in three different reported intellectual property cases; these precedents have been used to curb abusive litigation practices in the intellectual property arena. (Prior to joining Robins Kaplan LLP)

Obtained the first sanction of dismissal with prejudice in a Ninth Circuit intellectual property case for violation of a protective order. (Prior to joining Robins Kaplan LLP)

Established, for the first time, the level of prefiling investigation necessary in a patent infringement case. (Prior to joining Robins Kaplan LLP)

Represented world's largest manufacturer of specialty gas purifiers used in semiconductor fabrication in a patent infringement case. (Prior to joining Robins Kaplan LLP)

Established, for the first time, Ninth Circuit precedent holding that the Federal Circuit has exclusive writ of mandamus jurisdiction in patent infringement cases even as to supervisory matters involving non-patent issues. (Prior to joining Robins Kaplan LLP)                 

Represented debit card manufacturer in breach of endorsement case against internationally famous celebrity. (Prior to joining Robins Kaplan LLP)      

Obtained the first ruling of non-infringement in a patent infringement case as a discovery sanction pursuant to Rule 37 of the Federal Rules of Civil Procedure. (Prior to joining Robins Kaplan LLP)

Represented leading power systems chip manufacturer in a departing executive, breach of contract, and breach of fiduciary duty case. (Prior to joining Robins Kaplan LLP)

Represented plaintiff in a patent, trade secret, and breach of confidence case involving the first use of image transfer via the Internet. (Prior to joining Robins Kaplan LLP)

Represented a Fortune 500 toy manufacturer in various patent infringement actions involving several billion dollars in product sales. (Prior to joining Robins Kaplan LLP)

Represented leading computer disk drive manufacturer in a patent infringement case filed with the International Trade Commission involving $10 billion in product sales. (Prior to joining Robins Kaplan LLP)  

Represented the world's largest application-specific C-MOS chip manufacturer in a patent infringement action filed in Japan involving a break-through transistor invention and more than $50 million in liability. (Prior to joining Robins Kaplan LLP)

Represented leading wireless telephone manufacturer in a breach of contract and trade secret case. (Prior to joining Robins Kaplan LLP)

Represented Fortune 500 company in a complex copyright infringement case spanning 15 years of product sales. (Prior to joining Robins Kaplan LLP)

Represented leading lighting manufacturer in the first Public Use Proceeding (involving patentability of a patent application) litigated to decision before the U.S. Patent and Trademark Office.  (Prior to joining Robins Kaplan LLP)

Represented various manufacturers in patent interference actions before the U.S. Patent and Trademark Office. (Prior to joining Robins Kaplan LLP)

Represented a major Japanese automobile manufacturer in a design patent case involving a leading automobile wheel design. (Prior to joining Robins Kaplan LLP)

Represented a software company in a trade secret case involving protocol converters. (Prior to joining Robins Kaplan LLP)

Super Lawyers 2019
IP Star 2018
  • Recognized in the inaugural edition of "IP Stars" by Managing Intellectual Property (2013), and thereafter (2014-2018)
  • Named a "California Super Lawyer" by Super Lawyers (2004-2012, 2014-2019)
Bar Admissions
  • California
  • U.S. Court of Appeals, Federal Circuit
  • U.S .Court of Appeals, Ninth Circuit
  • U.S. District Court, Central District of California
  • U.S. District Court, Eastern District of California
  • U.S. District Court, Northern District of California
  • U.S. District Court, Southern District of California
  • U.S. Patent and Trademark Office
Education
  • Franklin Pierce Law Center, J.D.
  • Middlesex County College, A.S. in Electrical Engineering Technology
  • Rutgers University, Rutgers College, B.A.
Professional Associations
  • American Intellectual Property Law Association (AIPLA)
  • State Bar of California; Executive Committee Member (1996-1999); Advisory Editor, New Matter, Official Publication of the State Bar of California Intellectual Property Law Section (1997-Present),  Editor (1993-97)
  • Los Angeles County Bar Association
  • ITechLaw Association

  • "Dear Oracle: The Java APIs Are Not a Work of Art," WIRED (June 4, 2012)        
  • "Google's 'copied Java code' disowned by Apache, Dis-Harmony from Oracle's Android Suit," The Register (November 1, 2010)                           
  • "JPML Won't Combine Plastic Molding Patent Cases," IP Law360 (April 20, 2010)
  • "Holding Parent Corporations Liable for Attorneys' Fees Under 35 U.S.C. § 285 of the Patent Statute," Daniel Kennedy (2010)
  • "Magic Cards v. Magic Johnson, June Bug Enterprises," ABC Eyewitness News (February 28, 2009)
  • "Patent Litigation and Strategy," Kimberly A. Moore, et al. (2nd ed. 2003, 3rd ed. 2008),
  • "Alliant Energy Sued Over Biofuel Byproduct-Use Patent," Bloomberg (October 9, 2007)
  • "Energy Products Of Idaho Says Biofuel Patent Invalid," IP Law360 (October 9, 2007)
  • "Inside the Minds: Conducting Markman Hearings In Patent Infringement Lawsuits-Leading Lawyers on Interpreting Claims, Developing Court Presentations, and Making a Strong Argument," Aspatore Books (2007)
  • "Are You Experienced?: Examining the Need for Specialized Ethics Rules in Patent Litigation," The Berkeley Electronic Press, Paper 196, (2004)         
  • "Qwest v. OneQwest" The Millennium Show (March 13, 2003)
  • "Qwest v. OneQwest" CNN Headline News (May 16, 2003)           
  • "OneQwest Hit With $117M Sanction in Qwest Dispute," The Recorder (December 2002)
  • "Cyberpiracy Ruling Levels Heavy Damages," Los Angeles Daily Journal (December 2002)
  • "Pulling Back on High-Tech Reins," CNBC & The Wall Street Business Journal (September 1999)
  • "Law Firms, Like Their Clients, Need to Adapt," Corporate Legal Times (July 1999)
  • "When Strategic Alliance Leads to Courthouse," The Recorder (September 9, 1998)          
  • "Patent Medicine," California Law Business (April 12, 1999)
  • "Federal Circuit Has Sole Jurisdiction over Writs of Mandamus in Patent Cases," Mealey's Litigation Report: Intellectual Property (January 5, 1998)
  • "Bender's Federal Practice Forms," Matthew Bender Elite Products, Rule 11, Vol. 2 (1998)
  • "Patents, A Treatise On The Law of Patentability, Validity and Infringement," Donald S. Chisum, §20.03 [4][b], Vol. 7, No. 83 (1998)
  • "Moore's Federal Practice," § 11.28, Vol. 2, No. 12 (3rd ed. 1998) Refac Int'l, Ltd. v. Hitachi, et al., supra  
  • "Intellectual Property: Only Federal Circuit Can Consider Mandamus Petition-Relating to Prejudgment Orders in Patent Infringement Action," Los Angeles Daily Journal (December 1997)
  • "Civil Procedure," Stephen C. Yeazell, et al, 4th Ed., 4th Ed., p. 624 (1996)
  • "Comment: Litigation For Sale," University of Pennsylvania Law Review, Vol. 144, p. 1529 (1996)
  • "Discovery Proceedings in Federal Court," West Editorial Staff, § 22.21 (3rd ed. 1995)     
  • "Critics Take Aim at 'Submarine Patent' Amendments," Los Angeles Times (June 1, 1994)
  • "The Misunderstood Consequences of Modern Civil Process," Wisconsin Law Review (1994)
  • "Federalizing Legal Ethics," Texas Law Review, Vol. 73 (1994)
  • "Patents-Six Companies Win Trade Commission Judge's Decision in an Infringement
  • Complaint," New York Times (May 31, 1993)
  • "Patenting In the Shadow of Competitors," The Journal of Law & Economics (University of Chicago), Vol. 38, No. 2, 463, 470 n.20  (1993)
  • "Note: An Antitrust Solution to the New Wave of Predatory Patent Infringement Litigation," William and Mary Law Review, Vol. 33 (1992)                      
  • "Editorial-Drawing the Line," Electronic Engineering Times (July 1, 1991)  
  • "Wait! Don't Sign That Contract," EDN News (November 14, 1991)
  • "Area Summary: Patent Law Developments in the United States Court of Appeals for the Federal Circuit During 1990," American University Law Review, Vol. 40 p. 1157 (1991)

  • Patton on Patents – How General Patton Would Fight the Troll Wars: Offenses, Defenses, Pre- and Post-Litigation Techniques and Risk-Minimization Planning
    State Bar of California, Intellectual Property Section (July 23, 2014)
  • Current Developments at the Intersection of Antitrust and Patent Law
    Panelist, Los Angeles County Bar Association, Antitrust and Unfair Business Practices Section (April 25, 2013)
  • Litigating Licensing Agreements: Potential Drafting Pitfalls
    Panelist, Intellectual Property Section of the State Bar of California (February 1, 2012)
  • Patent Office Meets the West
    Panelist, Intellectual Property Section of the State Bar of California (March 1, 2011)
  • Counterfeits and IP Implications: An Overview
    Panelist, ITECH Law Association (December 1, 2010)
  • Drawing the Line: Successfully Avoiding Ethical Challenges Facing In-House Counsel in IP Litigation
    AIPLA 2010 Mid-Winter Institute, La Quinta, California (January 1, 2010)
  • Present and Future Perspectives on Patent Litigation
    Intellectual Property Section of the State Bar of California (June 1, 2008)
  • Markman Hearings—The Last ‘Trial’ Your Client May Ever See, with Michael Lachuk, Esq.
    Intellectual Property Section of the State Bar of California and Loyola Law School (November 1, 2007)
  • How to Win Patent Infringement Jury Trials, with Dr. Gilbert Calvillo
    Washington State Patent Law Association (May 1, 2005)
  • Avoiding Pitfalls in Patent Infringement Litigation
    Washington State Patent Law Association (October 1, 2004)
  • How To Stop Internet Piracy In Four Days and Win 117 Million Dollars
    Silicon Valley Intellectual Property Law Association (June 1, 2004)
  • Maximizing the Value of Your Intellectual Property
    Practising Law Institute (March 1, 2004)
  • Trademark Law
    Guest Lecturer, University of California Law School, Las Angeles, California (February 1, 2004)
  • Stop In The Name of Love Before I Sue: Hidden Dangers and Pitfalls In File Sharing
    Beverly Hills Bar Association (October 1, 2003)
  • What To Do After the Win; Recovering Costs and Attorney's Fees After A Successful Intellectual Property Litigation
    Colorado Bar Association, Intellectual Property Law Section (February 1, 2003)
  • Recent Developments in the Right of Publicity
    The State Bar of California Intellectual Property Law Section (January 16, 1997)

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