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Jonathan A. Marshall thinks of himself as a general, and says that the head of any company that hires him “is like the president of the U.S.” Marshall is a partner at New York’s Pennie & Edmonds. In his 37-year legal career, he has litigated some of the biggest technology-related intellectual property cases. And in some of those cases, nothing was held back. “Bring in Pennie & Edmonds and we are capable of doing nuclear war, of bombing [the other side] back to the stone age, ” he said. “ But we also have the flexibility to conduct a police action or a limited strike. “ Some of his recent cases fall into the overworked category of bet-the-store IP litigation. Currently he is representing Barnes & Noble Inc. in a business-method patent infringement case brought by Amazon.com Inc. In February, he persuaded the U.S. Court of Appeals for the Federal Circuit (CAFC) to lift a Seattle trial judge’s injunction barring the book chain from using its own one-click Internet ordering technology. Amazon.com v. BarnesandNoble.com, No. 00-1109. Earlier, he headed Hewlett-Packard Co.’s team in a seemingly endless copyright battle between Apple Computer Inc. and Microsoft Corp. Hewlett-Packard was also a defendant in that case, which charged that Microsoft’s Windows and HP’s NewWave screen displays infringed on Apple’s Macintosh graphic user interfaces. The case traveled from judge to judge in the Northern District of California, with claim after claim whittled away. Finally, it was resolved to Microsoft’s and Hewlett-Packard’s benefit in the 9th U.S. Circuit Court of Appeals. Apple Computer Inc. v. Microsoft Corp., 35 F.3d 1435, 1438 (9th Cir. 1994). His best-known infringement dispute involved a technology that was distinctly lower-tech. He represented BIC, a French ballpoint pen maker, in a case involving sailboards used for windsurfing. At that time, BIC had a division known as BIC Leisure Products Inc., which was charged with patent infringement by the leading manufacturer of such sailboards, Windsurfing International. Windsurfing prevailed at trial, but when the case got to the appeals court, the court accepted Marshall’s argument that it should limit the damages that BIC had to pay. “My position was that these boards were not cookie cutters. I posed to the CAFC the question as to how many more Porsches and Mercedes were sold if the Ford Escort were taken off the market,” he said, referring to the Federal Circuit. Its ruling is now regarded as a landmark determination of economic damages in an infringement case. BIC Leisure Products v. Windsurfing Int’l., No. 1 F.3d 1214 (Fed. Cir. 1993). Clients who engage the 61-year-old litigator know his services do not come cheaply. “If somebody wants bargain-basement rates, they don’t want us,” he said. But he does give the client the choice as to what kind of battle will be waged, and he lets them know in advance the economic resources such a fight will consume. “We don’t want to give our clients surprises,” he said. To continue the battle metaphor, many engagements require all-nighters in the foxhole. But those are often the moments when the knottiest puzzles finally come unraveled. In one patent case, Marshall spent a whole night examining a scientist’s notebook for evidence of fraudulent alteration of entries. He and his litigation team were working with a photocopy and, by dawn, realized they had nothing to go on. So at 6 a.m., he called counsel for the other side, and asked to see the original notebook. “We went through the whole damn notebook and we got a list of anomalies,” he said. Most of the entries in the notebook were double-spaced, but he found that the key entry on which the case hung was in a different color ink and was single-spaced. At the trial that day, when he cross-examined the scientist, Marshall called him on the anomalous entries. By the time Marshall finished the examination, “the judge was looking at him like he was gonna get this guy for perjury.”

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