Los Angeles:
400 South Hope Street
Los Angeles, CA 90071
Phone+1-213-430-7424
Fax+1-213-430-6407

 

Brian Berliner

Partner


Brian Berliner is a partner in O’Melveny's Los Angeles office and a member of the Intellectual Property and Technology Practice within the Litigation Department.  Brian is also the Chair of the Patent and Trademark Prosecution Subpractice.  Chambers USA has repeatedly ranked Brian among the top Intellectual Property lawyers in the country, noting his ability "to explain the byzantine patents process in layman’s terms, which helps [clients] make informed and tactical decisions," and describing him as "exceptionally responsive," with "great business sense, which is the perfect recipe in combination with fine legal knowledge."  The Los Angeles and San Francisco Daily Journals recognized Brian as among the leading portfolio managers, patent prosecutors and litigators.  Brian has also been recognized as a Southern California “Super Lawyer” in a survey conducted by Law & Politics Media Inc. and published in Los Angeles Magazine and the Southern California edition of Super Lawyers.

Brian is one of O'Melveny's chief technical lawyers.  He focuses his practice on representing high technology companies, particularly with respect to patent and technology litigation and the acquisition, management, enforcement and protection of intellectual property rights.  Brian is often called on in high stakes matters to analyze complex and highly technical infringement and validity issues.  Brian additionally develops patent portfolios for technology companies, including the preparation and prosecution of patent applications in a wide array of electrical, electromechanical, and computer-related technologies, such as computer hardware and software, analog/digital circuitry, wireless communications, digital rights management, public key encryption, client-server environments, and data processing.

In addition to his technical patent work, Brian also regularly represents and counsels clients in trademark matters, including trademark litigation, clearance and registration, and on transactional intellectual property matters, including licensing and technology transfer agreements and due diligence analysis of intellectual property rights. 

Prior to the practice of law, Brian served as a Captain in the US Air Force, responsible for the acquisition and testing of defense satellite systems and subsystems.  In that capacity, he had hands-on payload integration responsibilities involving a number of Atlas expendable launch vehicle missions.

Illustrative Professional Experience

  • Representing an international consumer electronics company in two parallel ITC proceedings involving LCD panels used in digital televisions, monitors, laptops, cellular phones, and computer displays, with related actions in the Northern District of California and the District of Delaware; all matters resolved in a favorable settlement 
  • Representing a leading computer and electronics company in defending a patent infringement matter pending in the Western District of Washington involving computer display systems; the case is currently stayed pending reexamination of the patents
  • Representing an international consumer electronics company in a Section 337 investigation before the U.S. International Trade Commission involving importation of multilayer ceramic capacitors
  • Defending a major electronics company in a Section 337 investigation before the U.S. International Trade Commission involving digital television technology; after a full trial on the merits at the ITC, one of the patents in suit was found invalid, a decision since confirmed by the Commission, and the Federal Circuit reversed a finding of patent infringement with respect to the second patent 
  • Representing an international consumer electronics company in a patent infringement suit involving LCD panels; case favorably settled while preparing for trial 
  • Representing a leading global entertainment content company in a commercial arbitration relating to an intellectual property licensing dispute over the development of a popular music videogame; case settled favorably for the client
  • Representing a major grocery chain in seeking a preliminary injunction in a trademark infringement matter in the Eastern District of Pennsylvania; matter resolved with a consent decree that halted all of defendant’s infringing activities
  • Successfully defended a major aerospace company in a patent infringement dispute involving attitude control systems for space satellites, utilizing an invalidity strategy that involved the reexamination of the patent-in-suit and resulted in the invalidation of all patent claims and subsequent dismissal of the case
  • Defended and favorably settled trade secret and patent infringement claims involving development of field programmable gate array (FPGA) semiconductor devices on behalf of a premier technology company
  • Established and structured an extensive patent portfolio for a large multinational corporation following a major technology acquisition
  • Developed patent invalidity and non-infringement defenses for a multinational corporation accused of infringing patents covering complex computer technology
  • Conducted due diligence for a financial institution underwriting an initial public offering with respect to potential patent validity and infringement issues
  • Counseled a medium-sized corporation in the establishment of an internal intellectual property policy, including procedures for identifying patentable inventions

Professional Activities

Admitted to Practice,  US Court of Appeals, Ninth and Federal Circuits
Registered to Practice,  US Patent & Trademark Office
President,  Los Angeles Intellectual Property Law Association (2005)
Member,  American Bar Association; American Intellectual Property Law Association; Los Angeles Intellectual Property Law Association (Board member 2002-2006); Research Committee for Childrens Hospital Los Angeles (2005 to present)
Author, “Fee Shifting in Patent Litigation,” (co-author Mark Liang), Virginia Journal of Law & Technology, Vol.18, No.01 (Fall 2013); "Supreme Court Holds Business Methods May Be Patentable," ipFrontline (June 29, 2010); "Courting Patent Reform," Law 360 (April 27, 2009); "Patently Unfair?," The Recorder (December 2006); "Preparing Patent Infringement And Freedom-To-Operate Opinions," Practising Law Institute (2005); "Preparing Patent Infringement and Freedom-to-Operate Opinions," The Computer & Internet Lawyer (November 2004); "Preparing Patentability Opinions," Preparing Patent Legal Opinions (Intellectual Property Course Handbook Series), Practising Law Institute (2001); "Making Intellectual Property Pirates Walk the Plank: Using 'Special 301' to Protect United States' Rights," Loyola of Los Angeles International and Comparative Law Journal, Volume 12; "Security Interests in Intellectual Property," Structuring Secured Commercial Loan Documents (1992)
Speaker,  "Conflicts of Interest When Representing Multiple Clients," Loyola Law School Special IP Focus Series (December 2007); "Patents and the Real World:  How  Recent Supreme Court Cases and Proposed Legislation Will Impact You and Your Business," CLE Presentation, Newport Beach and San Francisco (September 2007); "Patent Opinion Letters and Willful Infringement," Silicon Valley Intellectual Property Law Association (May 2006); "Drafting Non-infringement Opinions," Orange County Patent Law Association (April 2006); "Avoiding Conflict and Reducing the Risk of Claims in Patent and Intellectual Property Practice," Los Angeles Intellectual Property Law Association "Washington and the West" Conference (January 2006); "Preparing Patent Legal Opinions 2005," Practising Law Institute (October 2005); "Patent Infringement and Freedom to Operate Opinions," Practising Law Institute (October 2004); "Preserving U.S. Patent Rights," Eighth Annual Intellectual Property Law Conference for Paralegals (June 2004); "Preparing Patent Legal Opinions 2003," Practising Law Institute (September 2003); "Preparing Patentability Opinions," Practising Law Institute (October 2002); "Preparing Patentability Opinions," Practising Law Institute (September 2001); "Washington & The West Patent Symposium," Los Angeles Intellectual Property Law Association (January 2001); Chair, "A Comprehensive Review of Trademark Registration Practice," Los Angeles Intellectual Property Law Association (January 2000); "Patent Protection for Software Companies," Software Council of Southern California (November 1999)
Editorial Board, American Intellectual Property Law Association (AIPLA) Quarterly Journal 
Honors,  Recognized in Chambers USA, Intellectual Property, Patent (California); Listed by Los Angeles and San Francisco Daily Journals as among "Leading Portfolio Managers, Patent Prosecutors and Litigators," Recognized as a Southern California “Super Lawyer” in a survey conducted by Law & Politics Media Inc. and published in Los Angeles Magazine and the Southern California edition of Super Lawyers

Loyola Law School, J.D., 1991:  Chief Articles Editor, Loyola of Los Angeles International and Comparative Law Journal

University of Southern California, M.S., Systems Management, 1984

Northeastern University, B.S. Electrical Engineering, 1981


California

Fee Shifting in Patent Litigation (Virginia Journal of Law & Technology, Fall 2013)

Courting Patent Reform (Law 360, April 27, 2009)

Supreme Court Holds Business Methods May Be Patentable (O'Melveny Intellectual Property and Technology Alert, June 2010)

Supreme Court Holds Oral Argument in Bilski v. Kappos (O'Melveny Intellectual Property and Technology Alert, November 2009)

Federal District Court Judge Blocks Adoption of New Patent Rules; Appeal Likely
(O'Melveny Intellectual Property and Technology / Appellate Alert, April 2008)