Overview

Marla represents clients in the medical, semiconductor, power, networking and other high-tech industries in high-stakes commercial litigations, arbitrations and trials. She helps clients proactively take on commercial threats, monetize their patent assets and/or defend against lawsuits that threaten their businesses. She conducts critical early case evaluations to help clients quickly assess risk, which helps them predict important outcomes and see a fuller range of strategic options. Marla has developed a deep understanding of technology and is skilled at building and leading diverse teams of lawyers, scientists and economists, which enhances her ability to devise and implement successful litigation and trial strategies and to simplify complex technology concepts for judges, juries and arbitrators.

Marla is a Fellow of the Litigation Counsel of America, an invitation-only trial lawyer honorary society composed of less than one-half of one percent of American lawyers who are selected based on effectiveness and accomplishment in litigation, both at the trial and appellate levels, and superior ethical reputation.

Experience

Examples of Marla’s experience include:

  • Serving as lead counsel for a leading global medical technology and life sciences company in a breach of contract case involving silent magnetic resonance imaging technology.
  • Serving as lead counsel for a leading global medical technology and life sciences company in a lawsuit alleging breach of trade secrets, breach of contract and various IP-related causes of action.
  • Serving as lead counsel for the respondent in a confidential arbitration involving claims of breach of contract and misappropriation of trade secrets.
  • Obtaining summary judgment of non-infringement for a global manufacturer of power generation technologies in a patent infringement case involving a method of manufacturing steam turbine blades. The judgment was affirmed on appeal.
  • Defending a global technology solutions manufacturer in a patent litigation lawsuit brought by a provider of internet connectivity technology. The case settled after the client filed summary judgment and Daubert motions.
  • Defending a global technology solutions manufacturer in a patent litigation lawsuit brought by a Fortune 500 integrated communications company, and representing the manufacturer in its assertion of counterclaims in the same matter. The technologies at issue include VDP software, raster image processing and network communications.
  • Representing a global technology solutions manufacturer in inter partes review proceedings related to raster image processors.
  • Serving as lead trial counsel for a software engineering firm on issues of infringement and validity in a patent infringement action against three computer and hard disk drive manufacturers. Persuaded a federal jury that the defendants had willfully infringed a hard disk drive technology patent held by the client and that the client's patent was valid.
  • Representing a global provider of enterprise networking, communications and services in a patent infringement action against the world’s largest e-commerce and cloud computing company. Also led the defense of infringement counterclaims and prevailed on key issues related to those counterclaims at the Markman hearing. The case was favorably settled shortly before trial.
  • Serving as one of three primary trial counsel representing a large medical device manufacturer in a patent infringement action against a major competitor. The case was settled on the eve of closing arguments.
  • Representing a computer hardware design and manufacturing company in a patent infringement action against major computer manufacturers involving microprocessor design and development, recovering a total of $500 million in settlements and licensing for the client.
  • Representing an open network communications inventor and patent holder in five separate actions against mobile phone manufacturers and a cellular carrier. Argued the Markman hearing before a Special Master and prevailed on all key issues.

Publications
  • “Innovation, Patent Litigation and Legislation – Again,” Attorney at Law Magazine (August 2015)
  • Featured in “Minority Powerbrokers Q&A: Robins Kaplan’s Marla Butler,” Law360 (December 2014)
  • “Alternative Fee Arrangements in IP Cases,” Intellectual Property Magazine (July 2014)
  • “Claims Without Merit Are the Problem, Not Trolls,” Today's General Counsel (May 2014)
  • “IP: The Federal Circuit's Joinder Waffle,” InsideCounsel (May 2012)
  • “IP: Discoverability of Settlement Negotiations,” InsideCounsel (May 2012)
  • “IP: Supreme Court May Make Patent Litigation Less Expensive,” InsideCounsel (May 2012)
  • “IP: Due Process and Your Patent Claims,” InsideCounsel (April 2012)
  • “IP: Determining if Your Business Can Handle an ITC Investigation,” InsideCounsel (April 2012)
  • “IP: Determining if the ITC is Right for your Patent Enforcement Efforts,” InsideCounsel (March 2012)
  • “Strategies for dealing with the non-joinder provision,” Managing IP (March 2012)
  • “Patent Pilot Program Ready for Takeoff In New York,” New York Law Journal (December 2011)
  • “Electronically Stored Information: From Pre-Suit to Trial,” Intellectual Property & Technology Law Journal (December 2010)
Presentations
  • “Helsinn: Shh, What Sale?,” American Intellectual Property Law Association, Seattle (May 2018)
  • “Data Privacy & Security: Healthcare and Critical Infrastructure,” Leadership Institute for Women of Color Attorneys, Atlanta (March 2018)
  • “Protecting Digital Property Innovation,” Minnesota CLE webinar (October 2017)
  • “Patent Monetization in Challenging IP Times,” Minnesota CLE, Minneapolis (September 2015)
  • “The Markman Process and Hearing,” Practising Law Institute, New York (April 2013)
  • “Making IP Work for You – Strategies for Monetizing Your IP in Difficult Situations,” National Minority Angel Network, New York (December 2012)
  • “The Markman Process and Hearing,” Practising Law Institute, New York (April 2012)
  • Panelist, “AIA’s Non-Joinder – in Tension with MDL – What Will Litigants & Courts Do?,” Association of Corporate Patent Counsel, San Diego (January 2012)
  • Panelist, “Balancing the Economics of Discovery: Insuring Access to Documents that Matter While Keeping Justice Affordable,” Eastern District of Texas Bar Association and Federal Circuit Bar Association, Irving, Texas (September 2011)
  • Panelist, “Women Helping Women: Leveraging the Value of Women's Affinity Groups Beyond Networking and Mentoring,” Women Legal, New York (June 2011)
  • “ESI From Pre-Suit to Trial,” Practising Law Institute Patent Litigation 2010, Atlanta (November 2010)
  • “The Sea-Change – The Billable Hour, Alternative Fee Agreements and Diversity,” National LGBT Bar Association, Miami (August 2010)
  • “Patent Infringement Litigation,” Patent Resources Group, Orlando (April 2009)
Distinctions
  • Selected to the Minnesota Super Lawyers list (2018)
  • Selected to the New York Super Lawyers list (2013–2017), including Top Women Attorneys in New York Metro (2015–2017)
  • Listed as a “Recommended Individual for Litigation and Licensing,” IAM Patent 1000: The World’s Leading Patent Professionals, New York (2015), Minnesota (2016–2017)
  • Featured as Attorney of the Month, Attorney at Law Magazine Minnesota edition, Women in Law (2015)
  • Listed in Savoy magazine’s “Most Influential Black Lawyers” (2015)
  • Listed in “Top 250 Women in IP,” Managing Intellectual Property (2014)
  • Recognized in “Women Worth Watching,” Profiles in Diversity Journal (2012)
  • One Child, One Lawyer Volunteer of the Year Award, Atlanta Volunteer Lawyers Foundation (2007)
Professional and Civic

Professional Associations

  • American Bar Foundation, Fellow
  • Federal Bar Association, Southern District of New York & Minnesota Chapters
  • Litigation Counsel of America, Fellow
  • New York Intellectual Property Law Association

Community Activities

  • Books for Africa, advisory board
  • Lambda Legal, board of directors (2009–2017); National Leadership Council, former member
  • Leadership Institute for Women of Color Attorneys, board of directors

News