WILLIAM J. KOLEGRAFF

BillKolegraff08PARTNER

Bill Kolegraff  is a seasoned patent attorney registered with the U.S. Patent and Trademark Office, and a former business executive who managed a sizable intellectual property portfolio for many years. Mr. Kolegraff’s litigation skills are informed by his extensive patent licensing, negotiation, and business experience. He has successfully litigated complex patent cases in several District Court venues, as well as at the ITC.

Prior to joining Thomas Whitelaw, Mr. Kolegraff was Chief IP Counsel for Kyocera Wireless, a $1.4B wireless handset company. In that capacity, he directed all of Kyocera’s patent litigation, which included litigation against Fortune 100 companies, non-practicing “trolls,” and individual inventors. As a member of Kyocera’s executive committee, Mr. Kolegraff advised senior executives on all aspects of intellectual property matters.

Mr. Kolegraff’s practice spans a broad range of technologies, including wireless communication hardware and protocols for CDMA, GSM, Bluetooth, Zigbee, 802.1x, and RFID. He also has considerable experience in video, audio, and speech compression and encryption, as well as antenna and optical disc constructions.

Before joining Thomas Whitelaw, Mr. Kolegraff practiced as a patent litigator and patent prosecutor at Lyon & Lyon LLP and Baker & McKenzie.

REPRESENTATIVE CASES

Patent & Trademark Litigation

  • RSI Video Technologies, Inc. v. Vacant Property Security LLC, et al. (N.D. Illinois): Represented defendants against a charge of patent infringement regarding video imaging technology. Case is pending.
  • Surpass Tech Innovation LLC v. Sharp Corporation (Dist. Delaware): Counsel for VIZIO, Inc. Defended against a charge of patent infringement regarding LCD driver technology. Case is currently stayed pending outcome of review of the patents by the Patent and Trademark Office.
  • Surpass Tech Innovation LLC v. LG Display Co. Ltd. (Dist. Delaware): Counsel for VIZIO, Inc. Defended against a charge of patent infringement regarding LCD driver technology. Case is currently stayed pending outcome of review of the patents by the Patent and Trademark Office.
  • In the Matter of Certain Consumer Electronics with Display and Processing Capabilities (Int. Trade Commission): Counsel for VIZIO, Inc. Represented VIZIO against a charge of patent infringement regarding LCD panels, TV circuits, and video processing. Obtained an early settlement.
  • Graphics Properties Holdings, Inc. v. VIZIO, Inc. (Dist. of Del.): Represented the defendant against a charge of patent infringement regarding LCD panels, TV circuits, and video processing. Obtained an early settlement.
  • Innovus Prime LLC v. VIZIO, Inc. (N.D. Cal.): Represented the defendant against a charge of patent infringement regarding TV frame rate control. Obtained an early settlement.
  • Norman IP Holdings, LLC v. Lexmark International, Inc. (E.D. Tex.): Defended VIZIO, Inc. against a charge of patent infringement regarding the use of an ARM processor. Obtained an early settlement.
  • Advanced Display Technologies Of Texas, LLC, v. AU Optronics Corporation, et al. (E.D. Tex): Counsel for VIZIO, Inc. in patent infringement litigation involving LCD display technology.
  • Azure Networks, LLC, and Tri-County Excelsior Foundation v. Mediatek Inc. (E.D.Tex.): Counsel for VIZIO, Inc. Defended VIZIO against a charge of patent infringement regarding WiFi communication protocols. Case was dismissed.
  • Sansay Inc. v. Rates Technology LLC (S.D. Cal.): Member of trial team prosecuting declaratory judgment claims of patent invalidity and unenforceability involving Voice over Internet Protocol (VoIP) systems.
  • Atwater Partners of Texas, LLC v. AT&T, Inc. et al. (E.D. Tex.): Member of trial team that defended claims of infringement of five patents-in-suit for inverse multiplexing over ATM (IMA) devices. Obtained dismissal with prejudice after filing motion to dismiss challenging the Complaint and threatening a motion for violation of Rule 11.
  • U.S. Ethernet Innovations, LLC, v. Acer, Inc. et al. (E.D. Tex.): Represent Broadcom in patent infringement action related to Ethernet technology.
  • Illinois Tool Works, Inc. v. MOC Products Company (S.D. Cal.): Represent Illinois Tool Works in a patent infringement action involving machines for servicing automotive transmission systems and intake systems.
  • On The Go v. AT&T (N.D. Ill.): Represented Cricket Communications against claims of patent infringement and prosecuting claims of patent invalidity and unenforceability involving handset-enabled electronic commerce.
  • WiAV v. Motorola (E.D. Va.): Represent the patent-owner, Mindspeed Technologies,Inc., against claims of invalidity and unenforceability for eight of its patents related to Speech coder technology.
  • WiAV v. Research in Motion, et al. (E.D. Va.): Represented the patent owner, Mindspeed Technologies, Inc., in a patent infringement lawsuit involving patents related to speech coder technology for use in wireless handsets.
  • MEC v. Mindspeed, Inc. (C.D. Cal.): Defended Mindspeed Technologies, Inc. in a patent infringement action involving ARM’s pipelined processor technology.
  • EBS Automotive Services, et al. v. Illinois Tool Works, Inc. et al. (S.D. Cal.): Defended Illinois Tool Works in a patent infringement action involving an automated system and methods for flushing and refilling automotive breaking systems.
  • WiAV Solutions LLC v. Kyocera Corp., et al. (E.D. Va.): Represent the patent owner, Mindspeed, Inc., in a patent infringement lawsuit involving speech coder technology.
  • Nortel Networks Ltd., et al. v. Kyocera Wireless (N.D. Tex.): Directed multi-patent case in CDMA communication technology and power control.
  • Kyocera Wireless v. MLR LLC, et al. (S.D. Cal.): Directed strategic response to a patent assertion by a non-practicing entity related to handheld wireless devices.
  • Compression Labs Incorporated v. Adobe Systems Incorporated, et al. (E.D. Tex.): Managed negotiations and defensive strategy regarding a patent assertion in compression technologies.
  • Duhn Oil Tool v. Cooper Cameron (C.D. Cal.): Represent plaintiff in a patent case regarding oil tool technology.
  • Avaak v. Smartvue (S.D. Cal): Represent the plaintiff in a trademark infringement case regarding for marks used on a new product. Obtained early settlement.

Complex Business Litigation

  • Pabban Development, Inc. v. Kyphon Sarl (C.D. Cal.): Represented plaintiff in a breach of contract case against Medtronic, under which Medtronic acquired Pabban’s patented spinal cement delivery technology, the Natrix System. Thomas Whitelaw & Kolegraff successfully defensed all of Kyphon’s counter-claims against Pabban and its CEO, Nick Herbert, for alleged fraud and breach of contract damages of $17 million, including potential punitive damages.

Admissions

State Bar of California

United States District Courts

  • All California District Courts
  • Eastern District of Virginia

Court of Appeals for the Ninth and Federal Circuits

Education

Mr. Kolegraff received his JD from the University of San Diego Law School (Order of the Coif, member 1996, and Law Review). He received a BS in electrical engineering from the South Dakota School of Mines and Technology, graduating magna cum laude, with an emphasis in digital design and software development.