Stephen Underwood

Stephen Underwood is an intellectual property litigator, counselor and registered patent attorney. His practice focuses on patent and trade secret litigation, including in the software, electronics, biotech and medical device industries. Stephen has extensive experience handling all aspects of patent and trade secret litigation, including multiple jury trials, arbitrations, appeals, inter partes reviews and ex parte reexaminations. He also counsels clients on a range of patent and IP matters, including freedom to operate and due diligence. 

In all matters, Stephen leverages his unique technical background (Caltech, physics) to develop a deep understanding of the technology at issue; then he uses that understanding to drive results. In the courtroom, clients praise Stephen’s total command of the facts and the law, which helps him deliver effective witness examinations and win tough oral arguments. Through his 15 years of practice, Stephen has delivered multiple major client wins at trial, on appeal and at the U.S. Patent and Trademark Office (USPTO), including a multimillion-dollar patent jury verdict and several patent-saving victories at the Federal Circuit and the Patent Trial and Appeal Board (PTAB). In counseling matters, Stephen leverages his extensive litigation and prosecution experience to deliver valuable advice on infringement, validity, freedom-to-operate, clearance, inventorship/ownership and portfolio strategy issues.

Stephen is particularly sought-after for:

• Patent and trade secret litigation, including in the software, electronics, biotech, consumer products and medical device industries
• Inter partes review, ex parte reexamination and other post-grant proceedings
• Federal Circuit appeals
• Freedom-to-operate, due diligence and other patent/IP counseling

Stephen’s notable experience includes his representation of:

• Core Optical Technologies in achieving a major patent victory in a matter involving advanced fiber optic technology. The Federal Circuit Court of Appeals issued a precedential decision overturning a district court’s summary judgment decision that our client did not own the patent it accused manufacturers of fiber optic receivers of infringing.
• A remote-desktop software startup in winning a multimillion-dollar patent infringement jury verdict against a leading industry player.
• A minority-owned e-commerce company in winning all eight inter partes reviews filed against it by a top smartphone manufacturer.
• A biotech startup in successfully resolving complex trade secret litigation against a former strategic partner.
• A scientific equipment maker in managing patent/IP aspects of its billion-dollar acquisition by a major industry firm.
• An electronics manufacturer in successfully defending, at the PTAB and the Federal Circuit, a pioneering touchscreen patent against inter partes reviews filed by two of the world’s largest smartphone makers.
• One of the world’s largest elevator companies in successfully overturning, at the Federal Circuit, a judgment of patent invalidity for indefiniteness, leading to a key precedential decision on means-plus-function claiming.
• A computer peripheral maker in successfully canceling a key competitor patent on 3D cursor control technology.

Results

News

Speaking Engagements

Thought Leadership

Co-author, “Ethics and Risks in Transnational Trademark Practice,” INTA Bulletin, November 2018

Awards and Recognition

Southern California Super Lawyers, Rising Stars, 2015-2019

Member, Executive Committee, Entertainment Law and Intellectual Property Section (ELIPS), Los Angeles County Bar Association, 2023-present