Tom BenGera

Associate

An intellectual property (IP) lawyer, Tom focuses specifically on trademark, patent, and copyright law. He represents and counsels technology clients in IP matters, including pre-suit diligence, fact and expert discovery, motion practice, depositions, and at trial.

Representing clients in federal courts across the country, including California, Delaware, Texas, and Nevada, Tom has counseled clients on the offensive and defensive side of patent, antitrust, and trademark disputes, and has represented some of the world’s premier multinational corporations. His practice covers a wide range of technology, including:

  • 3G/4G communications
  • Database management systems
  • Mobile device cameras
  • Semiconductor technology
  • Signal processing
  • Flash memory
  • Voice over Internet Protocol (VoIP)
  • Web applications
  • Data encryption 
  • Content delivery systems
  • Call center software and servers
  • Computer hardware and software
  • Consumer products

Having extensive litigation experience, particularly in the area of patent damages, Tom recently played a central role in excluding the opinions of a defendant’s expert in a high-stakes litigation, involving radio-frequency identification (RFID) technology. In another case, Tom developed and briefed an argument that convinced the Court to reverse a previously-held claim construction, and subsequently played a pivotal role in resuming and expediting discovery for that patent in order to preserve the scheduled trial date.

Tom excels at navigating the many stages of federal district court and ITC litigation—from pre-suit diligence, through pleadings, fact and expert discovery, and pre-trial procedures. He also has experience counseling clients regarding their IP portfolios and licensing efforts.

During law school, Tom served as Brooklyn Law School’s Trade Secrets Institute fellow and was responsible for updating the Institute’s database with case-law developments in trade secrets law. Tom also worked at the Berkman Klein Center for Internet & Society at Harvard University, where he championed the rights of Cambridge-area start-ups, helping them navigate various IP issues in cyberspace, including open-source software licensure and Digital Millennium Copyright Act (DMCA) takedown procedures.

  • AGIS Software Development, LLC v. Apple Inc., No. 2:17-cv-513 (E.D. Texas)
    • Led damages-related fact discovery and motion practice; developed damages theories.
    • Prepared Apple’s damages expert for deposition and trial.
    • Developed strategy for expert discovery; prepared outlines and control documents for expert depositions.
    • Drafted Daubert, summary judgment, and in limine motions.
    • Prepared cross-examination materials for trial; developed juror questionnaire.
  • VoIP-Pal.com, Inc. v. Apple Inc., No. 3:18-cv-6216 (N.D. California)
    • Drafted motion to transfer and motion to dismiss under §101.
    • Handled negotiation of joint defense agreement; led weekly joint defense group calls.
  • Intellectual Ventures II LLC v. FedEx Corp., et al., No. 2:16-cv-980 (E.D. Texas)
    • Managed day-to-day damages-related fact discovery.
    • Successfully excluded the affirmative opinions of FedEx’s damages expert.
    • Prepared IV’s damages expert for trial, including mock cross-examination.
    • Led nightly “meet and confers” during trial.
  • Sound View Innovations, LLC v. Facebook, Inc., No. 1:16-cv-116 (D. Delaware)
    • Performed pre-suit diligence on portfolio of 10,000+ patents; identified viable reads and assessed patentability.
    • Executed confirmatory assignments to remedy chain-of-title defects.
    • Negotiated protective order and electronically stored information (ESI) order.
    • Oversaw day-to-day discovery for four patents relating to login authentication and dynamic user interface.
    • Drafted written discovery, motions to compel, contentions, and claim construction arguments.
    • Advocated for (and drafted) successful motion to reconsider relating to adverse means-plus-function construction.
    • Led subsequent effort to re-open and expedite discovery.
  • Arista Networks, Inc. v Cisco Systems, Inc., No. 5:16-cv-923 (N.D. California)
    • Drafted Cisco’s motion to dismiss/stay antitrust litigation relating to ethernet switching technology.
    • Assisted lead attorney in preparation for hearing on motion to stay.
  • Intellectual Ventures I, LLC v. Toshiba Corp., et al., No. 1:13-cv-453 (D. Delaware)
    • Took two prior art depositions relating to USB technology.
  • Cox Commc’ns Inc., et al. v. Sprint Commc’ns Co. L.P., et al., No. 1:12-cv-487 (D. Delaware)
    • Coordinated effort to intervene as non-party on behalf of Cisco Systems, Inc.
    • Drafted motion for final judgment; assisted lead attorney in preparation for related hearing.

 

  • Overview

    An intellectual property (IP) lawyer, Tom focuses specifically on trademark, patent, and copyright law. He represents and counsels technology clients in IP matters, including pre-suit diligence, fact and expert discovery, motion practice, depositions, and at trial.

    Representing clients in federal courts across the country, including California, Delaware, Texas, and Nevada, Tom has counseled clients on the offensive and defensive side of patent, antitrust, and trademark disputes, and has represented some of the world’s premier multinational corporations. His practice covers a wide range of technology, including:

    • 3G/4G communications
    • Database management systems
    • Mobile device cameras
    • Semiconductor technology
    • Signal processing
    • Flash memory
    • Voice over Internet Protocol (VoIP)
    • Web applications
    • Data encryption 
    • Content delivery systems
    • Call center software and servers
    • Computer hardware and software
    • Consumer products

    Having extensive litigation experience, particularly in the area of patent damages, Tom recently played a central role in excluding the opinions of a defendant’s expert in a high-stakes litigation, involving radio-frequency identification (RFID) technology. In another case, Tom developed and briefed an argument that convinced the Court to reverse a previously-held claim construction, and subsequently played a pivotal role in resuming and expediting discovery for that patent in order to preserve the scheduled trial date.

    Tom excels at navigating the many stages of federal district court and ITC litigation—from pre-suit diligence, through pleadings, fact and expert discovery, and pre-trial procedures. He also has experience counseling clients regarding their IP portfolios and licensing efforts.

    During law school, Tom served as Brooklyn Law School’s Trade Secrets Institute fellow and was responsible for updating the Institute’s database with case-law developments in trade secrets law. Tom also worked at the Berkman Klein Center for Internet & Society at Harvard University, where he championed the rights of Cambridge-area start-ups, helping them navigate various IP issues in cyberspace, including open-source software licensure and Digital Millennium Copyright Act (DMCA) takedown procedures.

  • Representative matters
    • AGIS Software Development, LLC v. Apple Inc., No. 2:17-cv-513 (E.D. Texas)
      • Led damages-related fact discovery and motion practice; developed damages theories.
      • Prepared Apple’s damages expert for deposition and trial.
      • Developed strategy for expert discovery; prepared outlines and control documents for expert depositions.
      • Drafted Daubert, summary judgment, and in limine motions.
      • Prepared cross-examination materials for trial; developed juror questionnaire.
    • VoIP-Pal.com, Inc. v. Apple Inc., No. 3:18-cv-6216 (N.D. California)
      • Drafted motion to transfer and motion to dismiss under §101.
      • Handled negotiation of joint defense agreement; led weekly joint defense group calls.
    • Intellectual Ventures II LLC v. FedEx Corp., et al., No. 2:16-cv-980 (E.D. Texas)
      • Managed day-to-day damages-related fact discovery.
      • Successfully excluded the affirmative opinions of FedEx’s damages expert.
      • Prepared IV’s damages expert for trial, including mock cross-examination.
      • Led nightly “meet and confers” during trial.
    • Sound View Innovations, LLC v. Facebook, Inc., No. 1:16-cv-116 (D. Delaware)
      • Performed pre-suit diligence on portfolio of 10,000+ patents; identified viable reads and assessed patentability.
      • Executed confirmatory assignments to remedy chain-of-title defects.
      • Negotiated protective order and electronically stored information (ESI) order.
      • Oversaw day-to-day discovery for four patents relating to login authentication and dynamic user interface.
      • Drafted written discovery, motions to compel, contentions, and claim construction arguments.
      • Advocated for (and drafted) successful motion to reconsider relating to adverse means-plus-function construction.
      • Led subsequent effort to re-open and expedite discovery.
    • Arista Networks, Inc. v Cisco Systems, Inc., No. 5:16-cv-923 (N.D. California)
      • Drafted Cisco’s motion to dismiss/stay antitrust litigation relating to ethernet switching technology.
      • Assisted lead attorney in preparation for hearing on motion to stay.
    • Intellectual Ventures I, LLC v. Toshiba Corp., et al., No. 1:13-cv-453 (D. Delaware)
      • Took two prior art depositions relating to USB technology.
    • Cox Commc’ns Inc., et al. v. Sprint Commc’ns Co. L.P., et al., No. 1:12-cv-487 (D. Delaware)
      • Coordinated effort to intervene as non-party on behalf of Cisco Systems, Inc.
      • Drafted motion for final judgment; assisted lead attorney in preparation for related hearing.