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Sten Jensen

Senior Counsel

Washington, D.C.

Whether handling an ITC or district court trial, Sten Jensen brings exceptional focus and precise execution to his work. 

Sten routinely guides clients such as FUJIFILM and Panasonic through the minefields of the ITC. Sten also has long-standing relationships with attorneys in the ITC’s Office of Unfair Import Investigations, developed when he served on the Executive Committee of the ITC Trial Lawyers' Association. Sten’s credibility with this group, combined with his thorough knowledge of the ITC’s speed and complexity, gives his clients a distinct advantage.

Sten has also represented clients in more than 50 federal patent cases, including cases in the top five venues for patent infringement filings. He has particular experience in Delaware, where he served as a judicial clerk for former District Court Judge Roderick McKelvie. Sten has defended numerous corporations against claims filed by aggressive patent trolls, and his cases have protected a wide range of technologies, including integrated circuits, semiconductors, optical disk drives, digital cameras, printers, and other consumer electronics products.

Sten has frequently lectured on intellectual property issues facing companies in the United States, Japan, and Taiwan. He is widely praised by clients for his dedication, knowledge, and skill in guiding them through discovery, merits, and settlement issues. Sten is listed as a recommended lawyer by The Legal 500 USA for patent litigation, and he is ranked by Chambers USA for IP Litigation with clients commenting that “he gave us great ideas and advice, and negotiated very hard for us.”

  • Sten's Representative Engagements

    • Fujifilm Corp. v. Papst Licensing GmbH & Co. KG: We successfully resolved a long-running patent infringement dispute for Fujifilm against Papst Licensing. We served as coordinating counsel for the defense group in the multi-district litigation and were the lead counsel in two successful IPRs. Our IPR successes pared the case down to one surviving patent, and we convinced the district court to continue a stay of discovery to hear a summary judgment motion of invalidity based on the collateral estoppel effect of the IPRs. While the summary judgment motion was pending, we settled the case for a small fraction of Papst’s original demand.
    • Hologic Corp. v. Fujifilm Corp.: We represented Fujifilm in an ITC investigation and two district court actions in which these competitors asserted claims of patent infringement, antitrust violations, unfair competition, and business torts with respect to their respective 3D digital mammography devices. All litigation was resolved in February 2019 on terms favorable to our client.
    • St. Clair Intellectual Property Consultants v. Fujifilm Corporation (D. Del.). Represented Fujifilm in a seven-year battle against St. Clair with respect to four image compression patents. Obtained a finding by the Federal Circuit that the district court had erred in construing certain key limitations of the patents-in-suit and that Fujifilm did not infringe any of St. Clair’s patents under the proper constructions of those terms, while many defendants paid millions of dollars in settlements.
    • Certain Light Emitting Diode Chips, Laser Diode Chips, and Products Containing Same, Inv. No. 337-TA-674 (ITC). Represented Panasonic in an ITC action filed by Professor Gertrude Rothschild alleging infringement of a patent covering LED manufacturing processes. Secured a termination of the investigation two weeks before the hearing, with no monetary payment required by Panasonic.
    • Certain Electronic Devices, Including Handheld, Wireless Communication Devices, Inv. No. 337-TA-667 (ITC). Represented Panasonic in an ITC action filed by Saxon Innovations, LLC. Secured an early termination of the Investigation, with no monetary payment required by Panasonic.
    • Lighting Ballast Control v. Universal Lighting Technologies (N.D. Texas). Represented ULT in a case brought by a Texas-based subsidiary of Acacia. Secured a unanimous finding by a Federal Circuit panel that the patent-in-suit is indefinite and therefore invalid, while several defendants paid substantial sums in settlements. The Federal Circuit is now rehearing the case en banc to reconsider its prior rulings on the deference owed to district court claim construction findings.
    • Asia Optical v. Fujifilm Holdings (N.Y. Supreme Court and S.D.N.Y). Represented Fujifilm in two actions involving an alleged breach of an oral promise to indemnify Asia Optical. Filed a successful motion to dismiss the state court action for lack of personal jurisdiction, and a successful motion to dismiss the federal action on grounds of res judicata and/or failure to state a claim.
    • Anticancer, Inc. v. Fujifilm Corporation, et al. (S.D. Cal.). Represented Fujifilm and GE in an action on method patent for following the metastasis of tumor cells using fluorescent proteins. Filed a successful motion for summary judgment of non-infringement.
    • Fujifilm Corporation v. Papst Licensing GmbH & Co., KG (D.D.C). Represent Fujifilm in this patent infringement litigation involving digital cameras. Joined forces with other camera manufacturer defendants and recently prevailed on eight IPRs attacking the validity of two of Papst’s more recent patents. We took the lead on two of the eight IPRs, and were heavily involved in the other six. Additional IPRs remain pending against the patents Papst originally asserted against Fujifilm in 2008.
    • Eastman Kodak Company v. Fujifilm Corporation (W.D.N.Y.). Represented Fujifilm in action brought by Kodak on patents related to imaging technology. Settled the case on favorable terms through a complicated transaction in Kodak’s bankruptcy involving a consortium of a dozen companies.
    • Certain Blu-ray Disc Players, Inv. No. 337-TA-824 (ITC). Represented Panasonic in an ITC action involving a patent covering technology for supplying supplemental information for video programs. Settled the case on favorable terms after deposing inventors.
    • Affinity Labs of Texas v. JVC Americas and Kenwood USA (E.D. Texas). Represented JVC and Kenwood in a case involving patents covering technology that allows iPods to connect to home stereos, TVs and car radio “head units.” Settled the case on favorable terms on the eve of trial.
    • Freescale Semiconductor Inc. v. ProMOS Technologies (E.D. Texas); ProMOS v. Freescale (D. Del.). After Freescale filed suit against ProMOS in Texas, filed countersuit in Delaware and succeeded in getting that case on a faster schedule. Settled the case on favorable terms after Markman hearings had been held in both cases, and a Markman order had issued in the E.D. Texas case.
    • Norman IP Holdings LLC v. Canon USA, Inc. (E.D. Texas). Represented Fujifilm and Konica Minolta in action filed on patents covering integrated circuit technology. Settled the case on favorable terms before Markman proceedings began.
    • Fujifilm Corp. v. Papst Licensing GmbH & Co. KG (D.D.C. and PTAB). Represents Fujifilm in this patent infringement litigation involving digital cameras, including counseling the client on two inter partes review petitions. The Orrick team succeeded in obtaining institution of both IPR petitions; a final decision is pending.
    • DiscoVision Associates v. Fuji Photo Film, Ltd. (N.Y. Supreme Court). Represented Fujifilm in a state court action involving alleged breach of a license agreement. Settled the case on favorable terms after the Court denied two summary judgment motions filed by DVA.
    • Cree, Inc. v. SemiLEDs Corporation and SemiLEDs v. Cree, Inc. (D. Del.). Represented SemiLEDs in a six-patent action filed by Cree alleging infringement of patents covering LED technology. Filed a countersuit against Cree for infringing SemiLEDs’ patents, and settled the action on favorable terms after the Court issued a Markman opinion in the case filed by Cree.
    • TVI Interactive Data Corporation v. Sony Corporation, et al. (N.D. Cal.). Represented JVC in an action alleging that the automatic playback features in certain DVD and Blu-ray players infringe TVI’s patents. Settled the case on favorable terms before trial.
    • Traffic Information LLC v. AT&T Mobility LLC (E.D. Texas). Represented JVC in action on a patent for providing traffic information on a mobile device. Settled the case on favorable terms before trial.
    • InMotion Imagery Technologies, LLC v. Panasonic Corporation of North America (E.D. Texas). Represented Panasonic in action on patents covering a system for indexing video content. Settled the case on favorable terms before Markman proceedings.
    • Ambato Media LLC v. Clarion Co. (E.D. Texas). Represented JVC in an action involving patents covering automobile navigation technology. Settled on favorable terms early in the case.
    • Princeton Digital Image Compression v. Canon, Inc., et al. (S.D.N.Y). Represent Fujifilm in an action on patents related to compression of digital images. Filed successful motion to transfer the case from ED Texas to SDNY, and then developed a strong standing defense through discovery that led to a motion to dismiss that was joined by several other defendants. The motion remains pending.
    • Infinity Computer Products v. Konica Minolta Business Solutions, et al. (E.D. Pa.). Represent Konica Minolta in an action filed on two patents covering technology for using a facsimile machine coupled to a personal computer as a scanner or printer. Filed a successful motion to stay the case pending reexaminations.
    • Digitech Image Technologies, LLC (C.D. Cal.). Represent Fujifilm, Panasonic, Canon, Nikon, Konica Minolta, Olympus, Sigma, Best Buy, Micro Electronics, Overstock.com, and Target in action alleging infringement of a digital image processing patent.
    • FastVDO LLC v. Thomson Video Networks Americas (D. Del.). Represent Fujifilm and TVN in actions involving patent covering digital image compression technology.
    • Graphics Properties Holdings, Inc. v. Panasonic Corporation (D. Del.). Represent Panasonic in action involving four patents on flat panel liquid crystal displays.
    • Freescale Semiconductor, Inc. v. Funai Corporation (W.D. Texas). Represent Funai in action filed by Freescale alleging infringement of three circuit patents.

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