Profile
Breton (Bret) Bocchieri is a partner at the Los Angeles office of Seyfarth Shaw LLP. He is a well-known and respected intellectual property trial lawyer who focuses on patent, trademark, copyright, cyberpiracy, trade secret and unfair competition, as well as intellectual property-related antitrust litigation.
Mr. Bocchieri has established numerous important precedents in intellectual property law. For example, he obtained the largest award to date in a cyberpiracy case ($117 million) and won the first court-ordered Internet-posted injunction designed to notify and enjoin users of the defendant's website. His outstanding accomplishments have been widely reported in the New York Times, Wall Street Journal and Los Angeles Times, as well as in more than a dozen legal treatises, law journals and law school textbooks.
Mr. Bocchieri shares his extensive experience, knowledge and understanding through writing articles and lecturing across the country on patent litigation strategy and tactics. Further, he has been featured on CNN Headline News as one of the nation's leading practitioners in Internet piracy.
Bret Bocchieri received his undergraduate degree from Rutgers College, Rutgers University in 1978. In 1985, he obtained his law degree from Franklin Pierce Law Center, which has been ranked by U.S. News and World Report as one of the top five law schools in the country specializing in intellectual property.
He is active in his community and volunteers as a Los Angeles city prosecutor in his free time.
Selected To
Southern California Super Lawyers 2012
Southern California Super Lawyers 2011
Southern California Super Lawyers 2010
Southern California Super Lawyers 2009
Southern California Super Lawyers 2008
Southern California Super Lawyers 2007
Southern California Super Lawyers 2006
Southern California Super Lawyers 2005
Southern California Super Lawyers 2004
About Breton Bocchieri
Admitted: 1985, California
Professional Webpage: www.seyfarth.com/index.cfm/fuseaction/attorney.attorney_deta...
Honors and Awards:
- Described as being one of the Nation's leading legal practitioners in Internet piracy by CNN Headline News
- AV® Rated by Martindale-Hubbell
Bar/Professional Activity:
- Vice Chair, Committee on Intellectual Property, American Bar Association, Tort and Insurance Section 1995 - 1999
- Co-Chair, Los Angeles Century City Bar Association, Patents, Trademarks & Copyrights Section, 1992 - 1998
- Executive Committee, State Bar of California, Intellectual Property Section, 1996 - 1999
- American Intellectual Property Law Association
- U.S. Patent and Trademark Office
- U.S. District Court of California
- U.S. Courts of Appeals for the Federal Circuit
- U.S. Courts of Appeals for the Ninth Circuit
- California
Pro bono/Community Service:
- Los Angeles City Prosecutor, Volunteer.
Scholarly Lectures and Writings:
- Editor, New Matter, Official Publication of the State Bar of California Intellectual Property Law Section, 1993 - 1997
- "The Impact of Festo, Its Progeny and Its Future," New Matter, Official Publication of the State Bar of California Intellectual Property Law Section (one of the country's largest intellectual property law journals), Vol. 26, No. 3 (Fall 2001/Winter 2002), correctly predicting the Supreme Court's reversal of the Festo decision
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Michael L. Keller and Kenneth J. Nunnenkamp, "Area Summary: Patent Law Developments in the United States Court of Appeals for the Federal Circuit During 1990," American University Law Review, Vol. 40, p. 1157 (1991), citing Refac Intl, Ltd. v. Hitachi, et al., supra
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Michael Paul Chu, "Note: An Antitrust Solution to the New Wave of Predatory Patent Infringement Litigation," William and Mary Law Review, Vol. 33 (1992), citing Refac Int'l Ltd. v. Hitachi, el al., supra
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Stephen C. Yeazell, "The Misunderstood Consequences of Modern Civil Process," Wisconsin Law Review (1994), citing Refac Intl, Ltd. v. Hitachi, et al., supra
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Fred C. Zacharias, "Federalizing Legal Ethics," Texas Law Review, Vol. 73 (1994), citing Refac Intl, Ltd. v, Hitachi, et al., supra
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"Discovery Proceedings in Federal Court" § 22.21 (3rd ed. 1995), citing Refac Intl, Ltd. v. Hitachi, et al., supra
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Ari Dobner, "Comment: Litigation For Sale," University of Pennsylvania Law Review, Vol. 144,; p. 1529 (1996), citing Refac Intl, Ltd. v. Hitachi, et al., supra
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Chisum, "Patents, A Treatise On The Law of Patentability, Validity and Infringement" §20.03 [4][b],; Vol. 7, No. 83 (1998), citing Bocchieri, "The Trap of Willful Patent Infringement: A Corporate Dilemma," IDEA: The Journal of Law and Technology, Vol. 29, No. 2 (1988)
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Bender’s Federal Practice Forms, Rule 11, Vol. 2 (1998), citing Refac Intl, Ltd. v. Hitachi, et al., supra; Moore’s Federal Practice § 11.28, Vol. 2, No. 12 (3rd ed. 1998), citing Refac Int’l, Ltd. v. Hitachi, et al., supra
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"Inside the Minds: Conducting Markman Hearings In Patent Infringement Lawsuits—Leading Lawyers on Interpreting Claims, Developing Court Presentations, and Making a Strong Argument," Aspatore Books, (2007) citing Allure Home Creations Co. Inc. v. Zak Designs Inc.
- "The Trap of Willful Patent Infringement: A Corporate Dilemma," IDEA: The Journal of Law and Technology, Vol. 29, No. 2, 1988
- Stephen C. Yeazell, et al., "Civil Procedure" 4th Ed., p. 624, (1996) citing Refac Intl, Ltd. v. Hitachi, et al., 921 F.2d 1247, Fed. Cir., 1990
- "The Reluctant Plaintiff: The Court of Appeals for the Federal Circuit Upholds Stiff Discovery Sanctions in Refac International Ltd. v. Hitachi, Ltd., et al.," WESTLAW, Hot Topics, December, 1990
- "Refac Chastised as Judge Rejects LCD Patent Suit", Los Angeles Times, October 11, 1990
- "Financier Loses Patent Suit Against Calif. Companies", Newsday (New York), October 12, 1990
- "After Court Rebuke, Refac Hints at a Retreat on Suits", New York Times, October 13, 1990
- "Law: Appeals Court Rule", The Wall Street Journal, October 15, 1990
- Kimberly A. Moore, et al., "Patent Litigation and Strategy" (3rd ed. 2008 p. 20, 2nd ed. 2003 p. 18, Teacher’s Manual p. 5), citing Refac Intl, Ltd. v. Hitachi, et al., 921 F.2d 1247, Fed. Cir, 1990
- "Refac Must Pay for Patent Suits, Judge Rules", Orange County Business Journal, June 24, 1991
- "Editorial-Drawing the Line", Electronic Engineering Times, July 1, 1991
- "Wait! Don’t Sign That Contract", EDN News, November 14, 1991
- John Lerner, "Patenting In the Shadow of Competitors, The Journal of Law & Economics" (University of Chicago), Vol. 38, No. 2, 463, 470 n.20 (1993) citing Bocchieri, "Obtaining Attorney Fees in Intellectual Property Cases: Rule 11 and Other Sanctioning Mechanisms," IDEA: The Journal of Law and Technology, Vol. 33, No. 3, 1993
- "Obtaining Attorney Fees in Intellectual Property Cases: Rule 11 and Other Sanctioning Mechanisms," IDEA: The Journal of Law and Technology, Vol. 33, No. 2, 1993
- "Patents-Six Companies Win Trade Commission Judge's Decision in an Infringement Complaint", New York Times, May 31, 1993
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"Are You Experienced?: Examining the Need for Specialized Ethics Rules in Patent Litigation," The Berkeley Electronic Press, Paper 196, 2004, citing "Obtaining Attorney Fees in Intellectual Property Cases: Rule 11 and Other Sanctioning Mechanisms," IDEA: The Journal of Law and Technology, Vol. 33, No. 2
, 1993
- "Critics Take Aim at 'Submarine Patent' Amendments", Los Angeles Times, June 1, 1994
- "Patent Evolution: Case Law Suggests New Defense Strategies," Los Angeles Daily Journal, August 4, 1995
- Co-Author, "Strategic Considerations for a Defendant in a Patent Enforcement Action," Sunnyvale Center for Innovation, Invention, and Ideas, Washington and the West Patent Seminar, January, 1996
- Advisory Editor (1997-present); "Facing the International Trade Commission: What to Do When Your Client is Served With a Complaint," Los Angeles Lawyer, October, 1996
- "Intellectual Property: Only Federal Circuit Can Consider Mandamus Petition-Relating to Prejudgment Orders in Patent Infringement Action", Los Angeles Daily Journal, December, 1997
- "Recent Developments in the Right of Publicity," Conflicts of Convergence Seminar, The State Bar of California Intellectual Property Law Section, January 16, 1997
- "Federal Circuit Has Sole Jurisdiction Over Writs of Mandamus in Patent Cases", Mealey's Litigation Report: Intellectual Property, January 5, 1998
- "When Strategic Alliance Leads to Courthouse", The Recorder, September 9, 1998
- "Patent Medicine", California Law Business, April 12, 1999
- "Law Firms, Like Their Clients, Need to Adapt", Corporate Legal Times, July, 1999
- "Pulling Back on High-Tech Reins", CNBC & The Wall Street Business Journal, September, 1999
- "OneQwest Hit With $117M Sanction in Qwest Dispute", The Recorder, December, 2002
- "Cyberpiracy Ruling Levels Heavy Damages", Los Angeles Daily Journal, December, 2002
- Re: "Qwest v. OneQwest"; The Millennium Show, March 13, 2003
- Re: "Qwest v. OneQwest" CNN Headline News, May 16, 2003
- Silicon Valley Intellectual Property Litigation, March, 2003
- "What To Do After the Win; Recovering Costs and Attorney's Fees After A Successful Intellectual Property Litigation," Colorado Bar Association, Intellectual Property Law Section, February, 2003
- Panelist, "Stop In The Name of Love Before I Sue: Hidden Dangers and Pitfalls In File Sharing," Beverly Hills Bar Association, October, 2003
- "How to Stop Internet Piracy In Four Days and Win 117 Million Dollars: Everything You Wanted to Know About Napster, Grokster, Qwest v. OneQwest, Officer Liability, Web-Posted Injunctions, New Internet Torts, and Much More," Beverly Hills Bar Association, January, 2004
- Guest Lecturer, Trademark Law, University of California Law School, February, 2004
- "Maximizing the Value of Your Intellectual Property," Practising Law Institute, March, 2004
- "Avoiding Pitfalls in Patent Infringement Litigation," Washington State Patent Law Association, October, 2004
- Co-Speaker, with Dr. Gilbert Calvillo, "How to Win Patent Infringement Jury Trials," Washington State Patent Law Association, May, 2005
- Co-Speaker, with Michael Lachuk, Esq., "Markman Hearings-The Last 'Trial' Your Client May Ever See," Intellectual Property Section of the State Bar of California and Loyola Law School, November, 2007
- "Energy Products Of Idaho Says Biofuel Patent Invalid", IP Law360, October 9, 2007
- "Alliant Energy Sued Over Biofuel Byproduct-Use Patent", Bloomberg, October 9, 2007
- Selected as Presenter of Patent Litigation Markman hearing reenactment, 33rd Annual Intellectual Property Institute of the Intellectual Property Section of the State Bar of California, November, 2008
- "When is Extrinsic Evidence Really 'Extrinsic?'" IDEA: The Intellectual Property Law Review, Vol. 48, No. 4, 2008
- "Present and Future Perspectives on Patent Litigation”, Intellectual Property Section of the State Bar of California, June, 2008
Verdicts and Settlements:
- REPRESENTATIVE ENGAGEMENTS: Principal architect of the now widely followed procedure in patent litigation as outlined in the precedent-setting Refac Int’l, Ltd. v. Hitachi, et al., 921 F.2d 1247 (Fed. Cir. 1990) establishing that a plaintiff must provide detailed infringement claim charts early in discovery or suffer dismissal with prejudice as a sanction. This case has been reported in the national press including the New York Times, Wall Street Journal, Los Angeles Times, and various trade journals and legal treatises, and is one of the few patent cases to be featured in textbooks for general law courses throughout the country, including Patent Litigation and Strategy (2nd and 3rd editions), with accompanying teacher’s manual; Obtained a judgment for trademark infringement and cybersquatting, for Internet Piracy (Qwest Communications Int’l v. One Qwest, 2002 U.S. Dist. LEXIS 25469 (W.D. Wa. Nov. 12, 2002)); Established new method of calculating damages for Internet infringement; Obtained first court-ordered “web posted” injunction designed to notify and enjoin users of the website; Led the defense on a case filed against 118 companies involving three basic patents covering liquid crystal display technology and obtained defense judgment of over two million dollars; Won the rare sanctions of dismissal and default with prejudice in three different reported intellectual property cases; these precedents have been used to curb abusive litigation practices in the intellectual property arena; Obtained the first sanction of dismissal with prejudice in a Ninth Circuit intellectual property case for violation of a protective order; Established, for the first time, the level of prefiling investigation necessary in a patent infringement case; Represented world’s largest manufacturer of specialty gas purifiers used in semiconductor fabrication in a patent infringement case; Established, for the first time, Ninth Circuit precedent holding that the Federal Circuit has exclusive writ of mandamus jurisdiction in patent infringement cases even as to supervisory matters involving non-patent issues; Obtained the first ruling of non-infringement in a patent infringement case as a discovery sanction pursuant to Rule 37 of the Federal Rules of Civil Procedure; Represented plaintiff in a patent trade secret and breach of confidence case involving the first use of image transfer via the Internet; Represented a Fortune 500 toy manufacturer in various patent infringement actions involving several billion dollars in product sales; Represented leading computer disk drive manufacturer in a patent infringement case filed with the International Trade Commission involving $10 billion in product sales; Represented the world’s largest application-specific C-MOS chip manufacturer in a patent infringement action filed in Japan involving a break-through transistor invention and more than $50 million in liability; Represented leading wireless telephone manufacturer in a breach of contract and trade secret case; Represented Fortune 500 company in a complex copyright infringement case spanning 15 years of product sales; Represented leading lighting manufacturer in the first Public Use Proceeding (involving patentability of a patent application) litigated to decision before the U.S. Patent and Trademark Office; Represented various manufacturers in patent interference actions before the U.S. Patent and Trademark Office; Represented a major Japanese automobile manufacturer in a design patent case involving a leading automobile wheel design; Represented a software company in a trade secret case involving protocol converters.
Educational Background:
- Rutgers College, Rutgers University, B.A., 1978
- Middlesex County College, A.S. Electrical Engineering Technology, 1982