Phil Marsh's practice focuses on complex litigation involving technology and intellectual property, with a particular emphasis on patent, trade secret, copyright, and complex commercial litigation. He has successfully represented clients in disputes in federal district and appellate courts, the U.S. International Trade Commission (ITC), mediations, and arbitrations. He also provides strategic counseling on a broad range of intellectual property, competitive, and business issues.
Phil has represented clients across a wide range of technologies, including computer hardware and software, medical devices, semiconductor devices and fabrication, consumer electronics, electronic commerce, telecommunications, cryptography, storage devices and systems, databases, lasers and optical systems, games, toys, and solar panel systems.
His litigation experience includes:
- direct and cross examinations of key expert and technical fact witnesses in recent jury trials and before the ITC;
- dispositive motion briefing and arguments in federal district court and the ITC;
- Markman briefing and arguments in federal district court and the ITC;
- successful briefing on behalf of appellants and appellees before the Federal Circuit and U.S. Supreme Court;
- successfully arguing pre- and post-trial motions, and jury selection; and
- successfully managing and taking primary day-to-day responsibility for complex, multi-party cases in federal district court, the ITC, and in multidistrict litigation (MDL) proceedings.
In addition to his litigation experience, Phil also has significant experience representing clients before the U.S. Patent and Trademark Office in all phases, including drafting and prosecuting patent applications, appeals, and post-grant proceedings. Before attending law school, he worked as a patent examiner.
Experience
- Materials technology company in asserting and defending claims of trade secret misappropriation relating to orthopedic bone cement in the ITC, resulting in a complete defensive trial win and establishing findings misappropriation of technical trade secrets by the opposing party.
- Medical device manufacturer in asserting and defending patent infringement claims related to replacement heart valves, resulting in a favorable jury verdict of US$35.4 million and a US$180 million settlement.
- Medical device manufacturer in asserting claims of patent infringement relating to x-ray imaging equipment in the ITC, resulting in a trial win.
- Consumer electronics company in defending claims of patent infringement based on multiple patents related to semiconductor processing, circuits, and operation.
- Software developer in case involving the copyrightability and patentability of elements of computer programs, in defending against claims of copyright and patent infringement of computer software program, and in related appellate proceedings based on inter partes review (IPR) proceedings.
- Consumer electronics company in defending against claims of patent infringement based on touchscreen technology.
- Integrated circuit designer in patent infringement action to enforce IC design patents against major consumer electronics manufacturer, including litigation in federal district court, the ITC, appeals court, and mediation, which included successfully obtaining a jury verdict of infringement.
- Integrated circuit manufacturer in litigation and appeal related to enforcing patents on IC device for secure wireless transactions against multiple infringers across the country.
- Medical device manufacturer in asserting patent infringement claims related to endometrial ablation using RF energy.
- Solar panel hardware company in defending against and successfully mediating claims of patent infringement by competitor over solar panel mounting system.
- Memory manufacturer in defending against claims of patent infringement based on multiple solid-state memory patents.
- Toy company in complex litigation and appeal involving defending against claims of copyright, trademark, and design patent infringement.
- Game manufacturer in defending against patent litigation claims.
- CD and DVD manufacturer in defending against claims of breach of contract and patent infringement based on multiple CD- and DVD-related patents covered by standards.
- Integrated circuit manufacturer in defending against claims of patent infringement based on practicing the IEEE 802.11 WiFi standards.
- Electronic commerce company in patent infringement action and appeals based on patents relating to online sales and auctions.
Perspectives
November 9, 2023
President Biden’s Executive Order on Artificial Intelligence: Shaping the Future of AI
Advisory
November 9, 2023
USPTO and Copyright Office to Chart the Path Forward for AI and Intellectual Property
Advisory
More
Credentials
Education
- J.D., The George Washington University, 2003
- Honors B.S., Electrical Engineering, University of Utah, 1998
Admissions
- California
- District of Columbia
- Supreme Court of the United States
- Supreme Court of Virginia
- U.S. Court of Appeals for the Federal Circuit
- U.S. Court of Appeals for the Fourth Circuit
- U.S. Court of Appeals for the Ninth Circuit
- U.S. District Court, Northern District of California
- U.S. District Court, Eastern District of Texas
- U.S. District Court, Eastern District of Virginia
- U.S. District Court, Eastern District of Michigan
- U.S. District Court, District of Columbia
- U.S. District Court, District of Colorado
- U.S. District Court, Western District of Pennsylvania
- U.S. Patent and Trademark Office
- Judicial Panel on Multidistrict Litigation
Government & Military Service
- Patent Examiner, United States Patent and Trademark Office (June 1998 - June 1999)
Activities
- Member, American Intellectual Property Law Association
- Member, ITC Trial Lawyers Association
- Member, American Bar Association, Intellectual Property Section
- Member, Association of Business Trial Lawyers
- Member, Institute of Electrical and Electronics Engineers (IEEE)—Intellectual Property Committee Member