Desmarais
Gabrielle E. Higgins

Gabrielle E. Higgins

Partner, San Francisco
PHONE: 415-573-1902 FAX: 415-573-1901
ghiggins@desmaraisllp.com
Gabrielle Higgins is a patent trial litigator with more than 30 years of experience representing industry-leading companies in high-stakes intellectual property disputes. Gaby focuses her practice on intellectual property litigation in federal courts, as well as before the PTAB. She has served as lead counsel in district court and PTAB proceedings and represented clients across a broad range of technologies, including telecommunications, electronics, semiconductors, wireless technology, consumer electronics, internet services, network architecture and security, medical devices and pharmaceuticals.

As a trial lawyer, Gaby has devised and executed winning strategies from prelitigation through trial for both patent holders and accused infringers. She has directed and cross-examined company and expert witnesses at trial, argued claim construction, taken and defended key depositions, and drafted briefs that have led to numerous successes and favorable settlements on behalf of her clients.

As a PTAB practitioner, Gaby has, to date, been counsel of record in over 140 Patent Office Inter Partes Review proceedings. She has argued at final oral hearings before the Board and has achieved victories for her clients in final written decisions and on appeal to the Federal Circuit.

Gaby has been recognized by The Daily Journal as one of the “Top IP Litigators in California,” The Recorder’s 50 Women Leaders in Tech Law, an “IP Star” by Managing IP, and a “Top 50 Women in PTAB Trials,” by the PTAB Bar Association.

Prior Experience

  • Partner, Ropes & Gray, Silicon Valley, California, 2007-2020
  • Counsel/Associate, Fish & Neave, Palo Alto, California, 1992-2006
  • Associate, Fish & Neave, New York, New York, 1989-1992

Courts

  • United States District Court for the Northern District of California
  • United States District Court for the Central District of California
  • United States District Court for the Southern District of California
  • United States District Court for the Eastern District of Texas
  • United States District Court for the Southern District of New York
  • United States District Court for the Eastern District of New York
  • United States Court of Appeals for the Federal Circuit
  • United States Supreme Court

Memberships & Affiliations

  • PTAB Bar Association, Program Committee Vice-Chair
  • Inn of Court, Master
  • American Intellectual Property Law Association
  • ChIPs Network - Women in Technology, Law and Policy

Other Distinctions

  • IAM Patent 1000: Leading Intellectual Property Litigation Lawyer
  • Northern California Super Lawyer
  • PTAB Bar Association Top 50 Women in PTAB Trials
  • Managing IP – “IP Star”
  • Legal 500
  • The Daily Journal’s “Top IP Litigators in California”
  • The Recorder’s 50 Women Leaders in Tech Law
  • Silicon Valley Business Journal’s Women of Influence


 
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Representative Matters

  • LabCorp v. Ravgen, (PTAB) - Secured wins for Ravgen, with Board upholding all challenged claims of Ravgen's prenatal genetic testing patent.
  • Affinity Labs of Texas v. Samsung et al. (E.D. Tex., W.D. Tex., N.D. Cal., PTAB, CAFC) – Lead counsel for Samsung in district court actions relating to streaming of media content. Secured wins at the PTAB and on appeal, with all challenged claims of multiple patents affirmed unpatentable.
  • Samsung v. Advanced Touchscreen (PTAB, CAFC) – Successfully obtained PTAB decisions finding all challenged claims of four patents related to touchscreens unpatentable, and secured wins for Samsung on appeal.
  • Rembrandt v. Apple (E.D. Tex., PTAB) – Represented Apple in patent litigation and IPR proceedings related to wireless communications in smartphones, tablets, televisions, and other devices that use Bluetooth technology.
  • Google v. Fujinomaki (PTAB) – Lead counsel for Google and LG Electronics in PTAB proceeding challenging patent related to a wireless security system for a mobile phone. Successfully obtained a final written decision finding all challenged claims unpatentable.
  • GLI v. Via Transportation Inc. (D. Del.) – Secured early favorable resolution of patent infringement suit concerning GPS and location-based services after filing a motion to dismiss all claims under 35 U.S.C. § 101.
  • Apple and Samsung v. FirstFace (PTAB) – Lead counsel for Apple and Samsung in PTAB proceedings related to mobile device technology.
  • Hewlett Packard Enterprise et al. v. MTel (PTAB) – Lead counsel for Hewlett Packard Enterprise and H.P., Inc. in PTAB proceedings challenging MTel patent related to multicarrier modulation. Secured final written decision finding all challenged claims unpatentable.
  • Clean Energy Management Solutions v. SmartThings, Inc. (E.D. Tex.) – As lead litigation counsel for SmartThings, obtained early favorable resolution of infringement suit involving patent related to mesh networks.
  • VIZIO, Inc. v. Nichia (PTAB) – Lead counsel for VIZIO in PTAB proceedings challenging patents related to LED technology.
  • In the Matter of Certain Gaming and Entertainment Consoles, Related Software, and Components Thereof, Investigation No. 337-TA-752 (ITC) – As trial counsel in the ITC for Motorola, obtained initial determination of infringement on two patents related to video coding technology.
  • Motorola v. Microsoft (W.D. Wisconsin/W.D. Washington) – As trial counsel in Seattle, Washington for Motorola, litigated patent and FRAND actions involving video coding and wireless technology.
  • Memory Integrity, LLC v. Fujitsu Ltd. (D. Del.) – Defended Fujitsu in a case brought by Memory Integrity related to computer memory.
  • OPTi Inc. v. Advanced Micro Devices (E.D. Texas) – As trial counsel for AMD, defended litigation over patents relating to processors and chipsets. The case settled favorably for AMD, shortly before it would have been submitted to the jury.
  • Linear Technology Corp. v. Impala et al. (N.D. California) – Represented LTC in six-party litigation over patent related to switching voltage regulators in which LTC won settlement valued in excess of $100 million.

Publications

  • Author, “Navigating Critical PTAB Procedures,” Practicing Law Institute (September 9, 2020)
  • Quoted, “Women Attorneys Few and Far Between at Patent Board Proceedings,” Bloomberg Law (December 23, 2019)
  • Quoted, “AIPLA 2018: PTAB judges talk construction and cherry picking” World Intellectual Property Review (October 29, 2018)
  • Profiled, “California’s Top Intellectual Property Lawyers,” Daily Journal (April 18, 2018)
  • Cited, “Samsung Gets Damages Cut To $11 Million In Bluetooth Patent Suit,” Law360 (March 29, 2018)
  • Quoted, “Google, LG Urge PTAB To Ax Parts Of Anti-Theft Patent,” Law360 (November 28, 2017)
  • Cited, “PTAB Finds Wireless Patent Challenged by Arris, HP Invalid,” Law360 (September 20, 2017)
  • Cited, “PTAB First Half Data: Comcast Tops Petitioner Ranking, Rovi Most Targeted Patent Owner,” Managing Intellectual Property (August 1, 2017)
  • Author “Patent Law: All Things PTAB – What’s Been Happening with the USPTO Patent Trial and Appeal Board?” AIPLA Mid-Winter Institute, February 3, 2017
  • Cited, “Quality Patents Minimize Business Uncertainty, PTO’s Lee Says” The Recorder (September 15, 2016)
  • Co-author, “PTAB Trials Report: An Analysis of Rehearing and Appeal from Final Written Decisions,” Bloomberg BNA’s Patent, Trademark & Copyright Journal (June 1, 2016)
  • Cited, “Federal Circuit Backs HTC, Samsung Streaming Patent Win At PTAB,” Law360 (May 9, 2016) Subscription required
  • Cited, “Samsung, HTC Ax Another Affinity Streaming Patent At PTAB,” Law360 (July 21, 2015)
  • Mentioned, “Samsung, HTC Get Streaming Patent Nixed In AIA Review,” Law360 (May 13, 2015)
  • Quoted, “Samsung, HTC Chip At Patent Suit In PTAB Review,” Law360 (March 10, 2015)
  • Co-author, “The Timing of Settlements in Post-Grant Proceedings,” Patent, Trademark & Copyright Journal (October 24, 2014)
  • Quoted, “Patent Lawyers Split on Impact of Switch to First-to-File System,” The Recorder (February 12, 2013)
  • Silicon Valley Business Journal "Woman of Influence" (2013)
     

Events

  • Speaker, "Twas The Night Before Oral Argument," PTAB LEAP Program (September 8, 2021)
  • Speaker, “Navigating Critical PTAB Procedures: Depositions, Amendments & Motions,” PLI’s Advanced Patent Trial and Appeal Board Trial Strategies (September 9, 2020)
  • Speaker, “PTAB: Discretionary Denials,” ACI’s 18th Annual Life Sciences Patents Conference (August 5-6, 2020)
  • Panelist, “VSM: Best Practices for Remote Hearings and Depositions," AIPLA Spring Meeting (May 14, 2020)
  • Speaker, “Leveraging the PTAB Journey: Concurrent District Court Trial Strategies,” PLI: USPTO Post-Grant Patent Trials 2019: New Challenges & Tactics (September 11, 2019)
  • Speaker, “Proving Your Case from Both Sides of the ‘v’ (Evidentiary and Discovery Issues at the Board),” 2019 AIPLA Road Show: US Patent Office Practice and Proceedings (April 23, 2019)
  • Speaker, “PTAB Master Class,” PTAB Bar Association Annual Conference (March 14-15, 2019)
  • Speaker, “On Your Mark: Petitioner Strategy,” PTAB Master Class, PTAB Bar Association Annual Meeting (March 13, 2019)
  • Moderator, CIPSC Panel, “Standard Essential Patents and Patent Pools,” Santa Clara, CA (November 13, 2018)
  • Moderator, AIPLA 2018 Annual Meeting, PTAB Judges Panel (October 25, 2018)
  • Speaker, Centerforce Women’s IP Strategy Summit (September 25, 2018)
  • Speaker, “Year in Review and Supreme Court Update: Oil States and SAS Institute,” ACC-SFBA PTAB Conference (December 5, 2017)
  • Speaker, “The Evolution of PTAB Trial Practice,” Ropes & Gray Teleconference (September 28, 2017)
  • Speaker, “10 Trends in Patent Litigation Worldwide,” LOT Network Bridge All Members Meeting (May 11, 2017)
  • Speaker, “The Recent PTAB Rule Changes: How Has It Impacted Proceedings?” Mid-Winter APILA Conference (February 3, 2017)
  • Speaker, “PTAB Trials: Tips and Strategies for Practitioners,” Managing IP International Women’s Leadership Forum (November 29, 2016)
  • Speaker, Managing Intellectual Property International Women’s Leadership Forum, “PTAB Strategy” (November 29, 2016)

EDUCATION

Fordham University School of Law, J.D., 1989

College of the Holy Cross, B.A., Pre-Medical Studies, 1985

ADMISSIONS

1993, California

1990, New York

Registered to practice before the United States Patent and Trademark Office

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