Representative Matters

Ms. Natland has been involved in the following litigation cases, amongst others:

Victoria’s Secret Stores Brand Management, Inc. v. Urban Decay Cosmetics, 2:12-cv-00693-GLF-MRA(2012). Represented Defendant and Counter Claimant, Urban Decay Cosmetics, in connection with declaratory judgment suit involving the NAKED mark. Case settled favorably for client resulting in complete phase-out of accused Victoria’s Secret product.

Broadcom Corp. v. BroadVoice, Inc., SACV05-431 DOC (2005).  Represented Plaintiff, Broadcom Corporation, in trademark infringement suit. Case settled favorably for client.

Ms. Natland’s Trademark Trial and Appeal Board (TTAB) experience is extensive, with some highlights noted below:

Ms. Natland successfully represented My Horse Player, Inc. in an ex parte proceeding before the Trademark Trial and Appeal Board, in which the Board's decision on appeal reversed the Examining Attorney by finding that MY HORSE PLAYER is not descriptive and is registrable on the Principal Register (TTAB 2008).

Ms. Natland successfully represented Hurley International LLC as Plaintiff in a precedential decision from the Trademark Trial and Appeal Board, finding on summary judgment that the Defendants had committed fraud on the USPTO. Hurley International LLC v. Volta 82 USPQ2d 1339 (TTAB 2007).  Listed by Allen’s Trademark Digest as one of the top ten trademark cases before the TTAB in 2007.

Ms. Natland successfully represented Jose Remacle in a precedential decision from the Trademark Trial and Appeal Board, reversing the Examining Attorney and finding that the mark BIO-CD is not descriptive and is registrable on the Principal Register. In re Remacle 66 USPQ2d 1222 (TTAB 2002).

Speeches & Seminars

Ms. Natland has spoken extensively on topics related to trademark and Internet law, including:

Guest Lecturer, Chapman School of Law (Music and Entertainment Law) (2015)

Panelist, Chapman Entertainment and Sports Law Symposium, Chapman Law School (2015)

The Intersection of False Advertising Claims and the FDCA, OCBA Entertainment and Sports Section (2015)

Scams, Schemes, and Spoofs: Online Brand Protection, American Corporate Counsel (ACC) (2015)

The Intersection of False Advertising Claims and the FDCA, American Corporate Counsel (ACC) (2014)

Avoiding False Advertising & Unfair Competition, IP Impact Silicon Valley - Trademark Seminar (2013)

Financing of Litigation in Trademark Actions, International Trademark Association (INTA) Annual Meeting (2013)

Silver Linings Playbook: Best Practices in Trademark Clearance and Selection, American Corporate Counsel (ACC) (2013)

Swimming with Piranhas: Avoiding Trade Secret Misappropriation, False Advertising & Unfair Competition Claims, American Corporate Counsel Association (ACC) (2013)

Soarin' Over Your Trademarks: Keys to Monetizing Your Brands, American Corporate Counsel Association (ACC) (2012)

Navigating the Murky Waters of the New Top Level Domain Name Launch (ACC) (2012)

Trademark and Copyright Clearance Scenarios: A Lawyer's Day at the Happiest Place on Earth.... American Corporate Counsel Association (ACC) (2011)

Trademarks in Sports: Ambush Marketing, International Trademark Association (INTA) Annual Meeting (2011)

Keywords and Trademarks, American Corporate Counsel Association (ACC) (2010)

Brand Power:  How to Develop and Protect a Profitable Brand, The Entrepreneurship Institute's Presidents' Forum (2007) (panelist)

Careers in Trademark Law, International Trademark Association Annual Meeting (INTA) (2006)

Brand Searching and Clearance in the Internet Age, International Trademark Association (INTA) Annual Meeting (2005) 

Trademark Trial and Appeal Board Practices, Practicing Law Institute (2004)

Trademark Year in Review, OCPLA/SDIPLA Spring Seminar (2003)

Trademarks and the Internet, National Association of Legal Secretaries (2003)

Dilution and the Victoria’s Secret Case, Orange County Paralegal Association (2003)

Articles

In addition, Ms. Natland has published numerous articles related to copyright, trademark and Internet law, including:

Susan Natland and Jessica Sganga, GoDaddy victorious in dispute over OSCARS and ACADEMY AWARDS marks, World Trademark Review, September 2015

Nuisance Repeat Filing Resolution: An Interview with the Enforcement Committee, INTA Bulletin, April 2015

Tacking isn't tacky - narrow doctrine saves defendant, World Trademark Review, January 2014

SPI in high spirits after suit against STOLI marks is dismissed for lack of standing, World Trademark Review, September 2013

No shades of grey: TTAB finds "white" deceptive for black tea, World Trademark Review, April 2013

Madrid Protocol registrations not insulated from petition to cancel based on abandonment, World Trademark Review, October 2012

Advertising at the Olympics - Let the Games Begin!, Convergence (an International Bar Association publication), Orange County Business Journal and Law360, July 2012

Ninth Circuit recognizes protectable trade dress for skull-shaped vodka bottle, World Trademark Review, June 2012

Time to Review – Achieving Best Practices in Trademark Audits, World Trademark Review, March 2012

Mark for Coffee House Likely to Cause Confusion with Coffee Certification Mark, World Trademark Review, March 2012

Nearly $300,000 awarded to plaintiff in keyword case against competitor, World Trademark Review, February 2011

Eighth Circuit: actual confusion is not a prerequisite to monetary relief, World Trademark Review, January 2011

Common U.S. Marines Slogan Remains in Public Domain, World Trademark Review, October 2010

Use of Identical Mark is Circumstantial Evidence of Dilution, World Trademark Review, July 2010

A TTAB Finds Mark Disparaging For Use with Wine, World Trademark Review, April 2010

Plaintiff Has Its Cake, May Not Eat It Too, World Trademark Review, December 2009

Trademark “Squatter” Enjoined From Using JAPONAIS Mark, World Trademark Review, September 2009

Eight-year delay bars claim that REDSKINS mark disparages Native American, World Trademark Review, July 2009

Heartbrand beefs with Yahoo!, World Trademark Review, May 2009 

Hershey Garners Sweet Victory Against Furniture Company, World Trademark Review, December 2008

Hobbit Sleeps on Rights, Says Court, World Trademark Review, August 2008

Google’s Motion to Dismiss AdSense Complaint Rejected, World Trademark Law Report, July 2008

Focus on Fraud: Still Treacherous Territory in the U.S., INTA Bulletin, June 2008

The Importance of Trademark Audits, INTA Bulletin, March 2008

HOT WHEELS summary judgment spins out in Ninth, World Trademark Law Report, 2007

TTAB applies more lenient Section 2(d) test in FIRST NIAGARA, World Trademark Law Report, July 2007

Trademark Management: The Whole Truth and Nothing But the Truth, World Trademark Review, April 2007

Jonathan Livingston Seagull Claims Survive Summary Judgment Motion, World Trademark Law Report, April 11, 2007

Trademark Audits – what you need to know, World Trademark Review, May 2006

LAWYERS.COM Generic for Online Legal Database, World Trademark Law Report, March 2, 2006

No Second Bite of the Apple for SNAP Mark Owner, World Trademark Report, December 14, 2005

Infamous Mustang Ranch Name Still Up in the Air, World Trademark Report, September 9, 2005

Brand Searching and Clearance in the Internet Age (contributing author), International Trademark Association, May 18, 2005

Duck Quacking Sound Mark Shot Down by District Court, World Trademark Law Report, April 26, 2005

Nissan Dilution Case Driven Back to the District Court, World Trademark Law Report, October 7, 2004

No New Home for Disputed ‘TahoeLuxuryProperties’ Domain Name, World Trademark Law Report, July 12, 2004

Master Card’s ‘Priceless’ Ads Not Infringed by Political Broadcasts, World Trademark Law Report, April 6, 2004

Fake Gucci Bags Too Good to Recall, World Trademark Law Report, February 12, 2004

MBNA Forfeits MONTANA SERIES and PHILADELPHIA CARD, World Trademark Law Report, November 19, 2003

Default Respondent Prevails in UDRP Action, World Trademark Law Report, September 17, 2003

In Re MBNA America Bank, N.A., Federal Circuit Case Digest, September 2003

In Re The Boulevard Entertainment, Inc., Federal Circuit Case Digest, August 2003

Enterprise Rent-A-Car Company v. Advantage Rent-A-Car, Inc., Federal Circuit Case

Representative Matters for Plaintiff/Patent Holders
Representative Matters for Defendants/Accused Infringers
Articles
Newsletters
Speeches & Seminars

Representative Matters for Plaintiff/Patent Holders

Toshiba Corporation v. Wistron Corporation, Investigation No. 337-TA-705 (U.S. I.T.C. 2010). Represented Toshiba in ITC investigation (and a parallel district court action) involving patents on computer hardware and software features.  Just before trial and after defeating each summary judgment motion brought by Wistron, the case settled with Wistron paying for a license under Toshiba’s patents.

Mallinckrodt, Inc. and Nellcor Puritan Bennett, Inc. v. Masimo Corp. Represented Masimo in patent infringement lawsuit involving patents asserted by both parties related to pulse oximeter medical devices.

254 F. Supp. 2d 1140 (C.D. Cal. 2003). Successfully obtained favorable claim construction involving 11 patents.

292 F. Supp. 2d 1201 (C.D. Cal. 2003). Obtained summary judgment of noninfringement on two of Nellcor’s asserted patents.

Assisted trial team in successfully representing Masimo Corp. in a five-week jury trial obtaining $134.5 million dollar damage award.  The jury found that all four of Masimo’s asserted patents were valid and willfully infringed.  Also, successfully defended Masimo against lone patent asserted by defendants.  The appellate court affirmed the damages judgment and ordered the entry of a permanent injunction.  147 Fed.Appx. 158, 2005 WL 2139867 (Fed. Cir. 2005).

Alfa Leisure, Inc. v. King of the Road.  Represented Alfa Leisure in patent infringement lawsuit involving fifth-wheel travel trailers. 

314 F. Supp. 2d (C.D. Cal. 2004).  Successfully defended against summary judgment of unenforceability due to inequitable conduct and also, on that motion, persuaded the Court to dismiss inequitable conduct defense.

2004 WL 1375684 (C.D. Cal. 2004).  Successfully dismissed defendant's invalidity defenses.

O'Hagins, Inc. v. M5 Steel Mfg., Inc., 276 F.Supp.2d 1020 (N.D. Cal. 2003).  Represented O’Hagins in a patent infringement lawsuit involving a patent on roof ventilation devices.  Successfully dismissed competitor’s counterclaim for declaratory judgment of non-infringement of related design patents.

Wechsler v. Macke International (C.D. Cal. 2001).  Represented Wechsler in a patent litigation involving a pet watering device.  Successfully represented Wechsler at one week jury trial, where the jury found that Defendant’s infringement was willful and awarded Wechsler damages.

Representative Matters for Defendants/Accused Infringers

Bierman v. Toshiba Corp., WL No. Civ. 1004032 (Cal. Super. 2014). Represented Toshiba in its defense of a trade secret misappropriation action involving alleged software inventions in which $100 million in damages was sought and successfully achieved summary judgment based on the statute of limitations. Convinced the court that Bierman was constructively aware of the product features alleged to be the misappropriation because of widespread industry publications available beginning in 1988 and showed numerous inconsistencies in Bierman’s story.  The summary judgment order brought a successful end to a four-year litigation.

Digitech Image Technologies, LLC v. HTC America, Inc., (C.D. Cal. 2013) Represented HTC in patent infringement action related to digital image processing.  Obtained favorable dismissal.

Canatelo, LLC  v. Toshiba America, (D.P.R. 2013). Represented Toshiba America Information Systems, Inc. in a patent infringement action related to automated security camera technology.  Obtained favorable dismissal.

Ingeniador, LLC v. Vital Images, (E.D. Tex. 2012). Represented Vital Images, Inc. and Toshiba Medical Systems Corporation, Inc. in patent infringement action related to internet database technology.  Obtained favorable dismissal.

Data Carriers, LLC v. HTC America, Inc., (D. Del. 2012). Represented HTC in patent infringement action regarding autocomplete features.  Obtained favorable dismissal.

Rotatable Technologies, LLC v. HTC America, Inc., (E.D. Tex. 2012). Represented HTC in patent infringement action related to screen rotations on smartphones.  Obtained favorable dismissal. 

MOSAID Technologies, Inc v. HTC America, Inc., (D. Del. 2011). Represented HTC in a patent infringement action related to e-911 standards.  Obtained favorable dismissal. 

Typhoon Touch Technologies, Inc. v. Dell, Inc., 659 F.3d 1376 (Fed Cir. 2011). Represented manufacturers of portable computers with touch screens and obtained affirmance of judgment of no patent infringement. 

Toshiba Corporation v. Wistron Corporation, 270 F.R.D. 538 (C.D. Cal. 2010.). Represented Toshiba regarding counterclaims brought by Wistron on power management patents.  Successfully obtained dismissal of claims on these patents for lack of standing.

Guardian Media Technologies, Ltd. v. Toshiba America Consumer Products, L.L.C., 658 F.Supp.2d (S.D. Cal. 2009) and CV09-0052 (C.D. Cal. 2009).  Represented defendant Toshiba charged with infringement of patents involving methods for censoring video programs in two district courts.  Prior to this lawsuit, a significant segment of the industry had taken a license under the plaintiff’s patent.  But, after adopting Toshiba’s proposed claim construction, and prior to any substantial discovery, two district courts granted and entered judgment of noninfringement on each patent, which prevented Toshiba from paying tens of millions of dollars in royalties sought by the plaintiff.

Commonwealth Scientific and Industrial Research Organization v. Toshiba America Information Systems, Inc. et al. (E.D. Tex. 2007).  Represented Toshiba in a patent infringement lawsuit involving wireless LAN standards.  Successfully settled the case on 4th day of trial after presentation of the invalidity defense.

Linex Tech, Inc. v. Belkin Int’l, Inc. et al., 628 F.Supp.2d 703 (E.D. Texas 2008).  Represented Toshiba in a patent infringement lawsuit involving wireless networking technology.  Successfully settled the case after court ordered plaintiff to supplement its infringement contentions with specificity.

O2 Micro v. Microsemi (E.D. Tex. 2007).  Represented Microsemi in a patent infringement lawsuit involving DC/AC inverter technology.

StorMedia Texas, LLC v. Toshiba American Information Systems, Inc., et al.  (E.D. Tex. 2007).  Represented Toshiba in a patent infringement case involving hard drives.  Successfully dismissed from that case after presenting invalidity contentions.

In the Matter of CERTAIN POINT OF SALE TERMINALS AND COMPONENT PARTS THEREOF, Investigation No. 337-TA-524 (U.S.I.T.C. 2004).  Represented CyberNet, Inc. (Korea) and CyberNet USA in patent infringement investigation involving point of sale terminals at the International Trade Commission.

California Pacific Labs, Inc. v. Nalge Nunc Intern. Corp., 2003 WL 24027885 (N.D. Cal. 2003).  Represented Nalge and Apogent in a trade secrets, trade dress, trade mark, conspiracy and breach of contract case involving laboratory equipment.  Obtained summary judgment dismissing most of plaintiff’s causes of action. The case later settled.

RAS Holding Corp. et al. v. SurgiLight, Inc. (M.D. Fla. 2000).  Represented SurgiLight, Inc. in patent infringement action involving a method of treatment for presbyopia.

Articles

Co-author, "Attack on software patents in the United States," Intellectual Property and Entertainment Law, Newsletter of the International Bar Association Legal Practice Division, Vol. 7 Issue 1 (September 2015).

Co-author, "Another Reason to Coordinate Discovery in Parallel Litigation – Circumvention in Section 1782 Requests," International Litigation News, Newsletter of the International Bar Association Legal Practice Division (April 2013)

Author, “Ten Steps in Analyzing Patent Infringement,” ExecSense, E-book available on Amazon.com (February 6, 2013)

Co-author, "The Heightened Domestic-Industry Standard for NPEs", Intellectual Property Litigation Newsletter, American Bar Association Section of Litigation, Summer 2012, Vol. 23 No. 4 (September 2012)

Co-author, “What Medical Device Companies Need to Know about Intellectual Property”, Medical Electronic Device Solutions (MEDS) Magazine (August 2012)

Co-author, "Be careful what you write: attorney-client privilege for international businesses," International Litigation News, Newsletter of the International Bar Association Legal Practice Division (May 2012)

"The Supreme Court reigns in states' aggressive assertion of personal jurisdiction," North American Regional Forum News, Newsletter of the International Bar Association Legal Practice Division (May 2012)

Co-author, “An Overview of U.S. Patent Litigation for Canadians,” 28 Canadian Intellectual Property Review 1, 2012

“The U.S. Patent Litigation Process,” IP Osgoode (December 2010)

“Parent/Subsidiary Liability Issues in Patent Litigation,” ABA Intellectual Property Litigation, Vol. 21, No. 2 (Winter 2010)

"The Supreme Court Takes on Patent Law,"  SideBar,  Federal Litigation Section of the Federal Bar Association (Summer 2007)

"A Supreme End to Patent Trolls?" Orange County Lawyer, The Orange County Bar Association (August 2007)

Co-authored brief for the AIPLA as amicus curiae in Microsoft Corp. v. AT&T Corp. before the Supreme Court of the United States (2007)

“Possible U.S. patent reforms set to have significant impact,” Indus Business Journal (June 2005)

“Patents need to be protected but maybe not ‘at all costs’,” Indus Business Journal (August 2004)

“Surprise! Legal wrangling hinges around dictionary definition,” Indus Business Journal (November 2003)

Trademark and Federal Circuit Review Newsletters

For all issues of the Federal Circuit and Trademark Review Newsletters dating back to May 2012, please click here.

Speeches & Seminars

Panelist on “Anti-NPE Laws - How recent Case Law, the FTC NPE survey, and the newly proposed Innovation Act affect the Enforcement & Valuation of Patents” at a joint Orange County Patent Law Association (OCPLA) and AIPLA event in Irvine, CA (January 2014).

Presented at the “Intellectual Property Seminar for Executives and IP Managers" in Tokyo, Japan (November 2013).

Presented on “eDiscovery and IP Litigation" in Seoul, South Korea (November 2013).

Presented on "Strategies to Handle U.S. Litigations" in Hsinchu and Taipei, Taiwan (September 2013).

Presented on "Recent Trends in U.S. Patent Litigation - Litigation involving Standard Essential Patents (SEP) - from Non-Practicing Entities to Practicing Entities" in Tokyo, Japan (April 2013).

Presented on "Strategies Relating to Preissuance Submission, Post-grant Review and Inter Partes Review" for the Benrishi Kai (Patent Attorney Association of Japan) in Tokyo, Japan (December 2012).

Presented on "Strategies for Taking Advantage of the America Invents Act, Resolving the Tension Between Patentable Subject Matter & Joint Infringement" in Tokyo, Japan (October 2012).

Panelist on “Successful Medical Device Development” at Medical Electronic Device Solutions Conference, San Diego, CA (August 2012).

Presented on "Developments in ITC Litigation - An Overview For Japanese Companies," UBIC hosted seminar, Tokyo, Japan (April 2012).

Lectured on “U.S. Patent Litigation” as part of a three part seminar in Tokyo for the Patent Attorney Kai organization (2011).

Lectured on “Personal Jurisdiction issues for Japanese Companies” and “ITC litigation” in Tokyo as part of seminar on US IP law (2011).

Lectured on “Practical Tips on Enforcing and Defending Patents:  Trial and Post-Trial Matters” at the American Bar Association – Section of Intellectual Property Law Summer Conference, June 21, 2005.

Lecturer on “Patent Enforcement” for the “Understanding Intellectual Property Law for the High Technology Industry” course offered by University of California at Irvine.

Speaking

Ms. Holland has spoken extensively in the field of trademark and copyright law, including seminars sponsored by INTA, OCTANe Venture Capital, the Society of Cosmetic Chemists, law firms in Germany and England, the Orange County Patent Law Association, the Orange County Bar Association, the Orange County Business Journal, the San Diego Business Journal, and the Advertising Production Association of Orange County.  She has been a guest on the radio program “Southern California Business Focus” where she discussed basic copyright issues.

Teaching

Ms. Holland has taught several courses in, and served as an adjunct professor of, intellectual property at several institutions, including: USC Business School for foreign corporations wanting to do business in the U.S.; USC Law School; UC Irvine; UC Riverside; Chapman University; and OC Community College

Publications

"To Tweet or Not to Tweet: Social Media and Intellectual Property Issues,"Orange County Business Journal, October 2015

"Getting the Deal Through: Trademarks 2016," Law Business Research Ltd., September 2015

Quoted in "Condoms may be key to ‘.sucks’ trademark success, lawyers claim," World Intellectual Property Review (WIPR), July 2015

"Managing Intellectual Property Assets,” California Business Law Practitioner, Fall 2014

"Clearing marks in the U.S.: What European practitioners need to know,” 9th Annual Taylor Wessing Brands Forum, London, England, March 2013

“More Than a Brand Name – Monetizing the Unique Aspects of Your Company and Your Products to Increase your Bottom Line,”  Orange County Business Journal,  November 2012

Contributing thoughts to "The Avengers face a new adversary: trademark professionals", a blog post on World Trademark Review, September 2012

"Domain Name Mania - Managing the Mayhem" Orange County Lawyer Magazine, July 2009

“Managing Intellectual Property Assets,” Chapter 1 in the multi-volume treatise Intellectual Property in Business Transactions published by the California Continuing Education of the Bar, 2008 - 2014

Legal Guide to Intellectual Property, a book published by Entrepreneur Press, 2007

“What Is A Copyright” Orange County Business Journal

Speeches & Seminars

Trademark Application Pre-Filing Strategies: Overcoming the Obstacles, Strafford, June 2015

International Trademark Law and Strategy: Practical Tips for Protecting, Licensing and Enforcing Trademarks Abroad, Los Angeles County Bar Association, September 2014 (Co-Panelists: Mei-Lan Stark, Head IP Counsel for Fox and INTA President and Michael Lewis, USPTO Regional IP Attaché for Mexico, Central America and the Caribbean)

Let The Good Times Roll: IP Issues with Social Media and User-Generated Content, American Corporate Counsel (ACC), August 2014

Intellectual Property: Get My Stuff Off the Web!,Beverly Hills Bar Association, August 2014 (Co-Panelists: Ian Ballon and Neville Johnson)

Moderator, INTA-USPTO Roundtable: Los Angeles, May 2014

Trademark Clearance and Filing Strategies, Los Angeles Intellectual Property Law Association, October 2013

Avoiding False Advertising & Unfair Competition Claims, Silicon Valley, July 2013

Silver Linings Playbook: Best Practices in Trademark Clearance and Selection, American Corporate Counsel (ACC), April 2013

Intellectual Property Licensing, U.S. Department of Commerce, SABIT Intellectual Property Rights Program, March 2013

Facebook and Beyond: What Every Lawyer Needs to Know, Orange County Bar Association, January 2013

It's A Social World After All: An Update on Trademark and Copyright Issues in Social Media, Association of Corporate Counsel, April 2012 

How To Make Money With Your Intellectual Property, LAIPLA/Loyola Law School, July 2011

What’s In A Name? Protecting Trademarks Associated With Television Shows In The U.S., 28th Annual International Law Symposium - Entertainment & Sports Law: The International Dimension, February 2011

Intellectual Property and Social Media, Constitutional Rights Foundation, 4th Annual Constitution Day Conference, September 2010

IP And Social Media, Association of Corporate Counsel-SoCal Chapter, April 2010

Intellectual Property Nuts and Bolts – Trademarks, Los Angeles County Bar Association, May 2009

Bang For The Buck: Extracting Maximum Value From Intellectual Property In An Economic Crisis, Association of Corporate Counsel-SoCal Chapter, April 2009

Recent Developments In Trademark Law: Metatags, Infringement, But No Injunctions?, Orange County Paralegal Association, August 2008

Emotional Brand Building, ASR, San Diego, September 8, 2007

Protecting Brand Integrity: Best Practices and Lessons Learned, U.S. Chamber of Commerce The Cost of Counterfeiting and Piracy Conference, August 2007

The Global Reach of US Notice and Take Down Provisions, LES Pan-European Conference, Glasgow, Scotland, June 22, 2006

Preventing Brand Infringement and Dilution on the Internet, Orange County Paralegal Association, January 2005

Trademark Update: European Union Expansion; Changes in US Trademark Procedure; and the Electronic PTO, Orange County Paralegal Association March 2004

Training for the Big Leagues: Securing International Trademark and Design Protection, Beverly Hills Bar Association, May 2003

Brand Enforcement Strategies 2002 Trademark Seminar, June 2002

Articles

Getting the Deal Through: Trademarks 2016, Law Business Research Ltd., September 2015

Betty Boop in Blunderland: Ninth Circuit's Trademark Ruling In Fleischer Studios v. A.V.E.L.A, Los Angeles County Bar Association's Entertainment Law and IP Section - Entertainment and Intellectual Property Law Journal, Vol. 2, Number, 2 May/June 2012

Protecting Your Upside In A Downturn: Due Diligence Considerations For Purchasing Intellectual Property In An Economic Crisis, Association of Corporate Counsel-SoCal Chapter News Letter, February 2009

Maintaining Brand Integrity In The Marketplace, World Trademark Review, May/June 2008

Before You Go to China: Strategies for Protecting Your Trademarks in China, Orange County Lawyer, August 2007

Who Wants To Sue A Multi-Billionaire: Google's Risky Venture Into YouTube, Cyberspace Lawyer, June 2007

Brand Management: Five Ways to Watch Your Competitors, Managing Intellectual Property, April 2007

Deep Pockets: The Risks of Buying Websites With Consumer Generated Content and How They Hope to Avoid the Major Lawsuit, E-Commerce Law Report, November 2006

How I Learned to Stop Worrying and Love YouTube: Video-Hosting Services and the Death of Copyrights on the Internet, Daily Journal, August 2006

Articles, Speeches & Seminars

"Recent Trends in Obviousness" 

Moderator of the ACC-SD Intellectual Property Roundtable (October 15, 2013)

"Developing Your Initial Patent Litigation Case Strategy"

Presenter at Knobbe Martens' IP Impact 2011 Seminar hosted in San Diego (August 15, 2011)

"Recent Developments in US Patent Law and Practice"

Presenter at the TECH IP 2011 Seminar in Auckland, Sidney and Melbourne (March 14-17, 2011)

"CPA Expert Witnesses - What Attorneys Expect"

Presenter at the CalCPA seminar (July 22, 2010)

"2010 Amendments to the Federal Rules of Civil Procedure" (January 26, 2010)

"ebayv. MercExchange and Other Developments in the Supreme Court”

Presenter and moderator of ACCA’s IP Practice Group Roundtable (June 2006)

“How To Present a Successful Appeal to the Federal Circuit”

    Presenter at the 2006 Joint OCPLA/SDIPLA Meeting, La Costa Resort and Spa (March 24-26, 2006)

“Claim Construction in Light of Phillips and Other Developments at the Federal Circuit”

Presenter and moderator of ACCA’s IP Practice Group Roundtable (March 2006)

“Overview of Intellectual Property for Business Lawyers”

Presented topic of Patent Litigation (2000)
Presented topic of Trade Secrets Law (1998), (1999)

Recent Trends and Developments in Trade Secret Litigation, Minnesota Institute Legal Education, Intellectual Property Litigation Course (1999) (co-author)

Intellectual Property for Business Lawyers, West Group (1996) (co-author)

“Distinctive Characteristics of Excel VR Rate Adaptive Pacemaker with an Innovative Activity Sensor,” (1990, Vol. 13, No. 9, Pacing And Clinical Electrophysiology) (co-author)

Representative Matters

Bern Unlimited v. Dye Precision, Inc., et al. (2013). Defended trademark infringement, trademark dilution and unfair competition action in the District of Massachusetts (Boston) in multi-defendant case regarding alleged product configuration trade dress for helmets for use in action sports.  Achieved favorable settlement for client.

I-Flow Corporation. v. Apex Medical Technologies, Inc., et al., 07cv1200 DMS (NLS) (S.D. Cal.)  Representing patent holder, I-Flow Corp. in a patent infringement, trade secret misappropriation and unfair competition action from complaint through trial and a favorable jury verdict.

99¢ Only Stores v. 99¢ Plus Discount Store, et. al., C 07-6395 CRB (N.D. Cal.)  After obtaining judgment against defendants for trademark infringement, initiated contempt proceedings on behalf of client 99¢ Only Stores, which resulted in a favorable settlement including payment of monetary damages.

Automobile Club of Southern California v. The Auto Club, Inc., CV-05-3940 (C.D. Cal.) Represented Automobile Club of Southern California and obtained summary judgment that Defendant committed acts of unfair competition.  On the eve of trial, obtained a consent judgment with respect the remainder of the causes of action in the client’s favor.

Sorensen v. ITC (and Mercedes-Benz USA, LLC, Intervenor), 427 F.3d 1375 (Fed. Cir. 2005).  Argued appeal to the Federal Circuit on behalf of Appellant Sorensen and obtained a reversal of the ITC’s claim construction and finding of non-infringement.  Subsequent to the successful appeal, obtained a favorable settlement for the client.

Sephra LLC v. Buffet Enhancements International, Inc.,, 06 CV 2452 (S.D. Cal.) Obtained a favorable settlement for patentee, Sephra LLC.  

American Cal Car, Inc. v. BMW of North America, LLC, 04 CV 0614 (S.D. Cal.) Represented American Cal Car, Inc. against BMW, and on the eve of trial, obtained a favorable settlement for patentee.

Sephra LLC v. Jarden Corp., 06 CV 0836 (S.D. Cal.) Obtained a favorable settlement for patentee, Sephra LLC.

Sephra LLC v. The Helman Group, Ltd., 06 CV 0385 (S.D. Cal.) Obtained a favorable settlement for patentee, Sephra LLC.

Express, LLC v. Fetish Group, Inc., CV 05-2931 (C.D. Cal.) Obtained summary judgment of copyright infringement for DJ defendant Fetish Group, Inc. and summary judgment defeating the other sides counterclaims.

99¢ Only Stores v. Best Bargain, CV 06-967 RMT (C.D. Cal.)  Obtained judgment in favor of Plaintiff 99¢ Only Stores, enjoining defendant from infringing plaintiff’s family of trademarks. 

Patterson Fan Co. v. Romla Co., Civil Action No. 3:05 CV-1843 (D. S.Car.) Obtained dismissal of action for lack of personal jurisdiction.  

99¢ Only Stores v. Allen’s 99¢ et a, (S.D. Cal. 2004).  Representing 99¢ Only Stores, obtained a TRO and preliminary injunction to prevent the defendant from infringing plaintiff’s trademarks.  After obtaining preliminary relief, obtained a favorable settlement that included a consent judgment in client’s favor.

Turn-Key-Tech, LLC v. Toyota Motor Co., et al., 01 CV 2157 (S.D. Cal.)  Obtained a favorable settlement for patentee.

Turn-Key-Tech, LLC v. Kia Motors Corp., et al., 01 CV 1885 (S.D. Cal.) Obtained a favorable settlement for patentee.

Turn-Key-Tech, LLC v. Hyundai Motor Co. Ltd, et al., 01 CV 1884 (S.D. Cal.)  Obtained a favorable settlement for patentee.

Turn-Key-Tech, LLC v. Honda Motor Co. Ltd, et al., 01 CV 2155 (S.D. Cal.) Obtained a favorable settlement for patentee.

Turn-Key-Tech, LLC v. Mitsubishi Motors, et al., 01 CV 2156 (S.D. Cal.) Obtained a favorable settlement for patentee.

Koito Manufacturing Inc. v. Turn-Key-Tech, LLC, 381 F.3d 1142 (Fed. Cir. 2004) Represented patentee Turn-Key-Tech, including arguing the appeal before the Federal Circuit, which resulted in a modification of the claim construction and a subsequent favorable settlement for the patentee.

On Command Video v. LodgeNet Entertainment Systems (C.D. Cal. 1996).  After a favorable claim construction and avoiding summary judgment of infringement, obtained a favorable settlement for defendant saving over $100 million in asserted patent infringement damages.

Representative Cases for Plaintiffs

Rolex Watch U.S.A., Inc. v. Watch Empire LLC, et al., CV13-09221-SJO (FFMx) (C.D. Cal. 2015).  Represented Rolex in action to enjoin trademark counterfeiting, trademark infringement and unfair competition by Watch Empire, an online retailer of counterfeit Rolex watches.  When the Defendants failed to provide sufficient discovery and engaged in other discovery misconduct, the litigation team pursued a series of motions to compel and for sanctions.  The discovery motions culminated in the court striking the defendants’ answer as a sanction.  Rolex was then able to secure a default judgment that included a broad permanent injunction, a $5,000,000 statutory damages award, and an award of attorneys’ fees.   

Dominion Dealer Solutions LLP v. AutoAlert, Inc.  Represented AutoAlert, Inc. in defeating five petitions for inter partes review filed by a competitor challenging the validity of AutoAlert's patents related to lead generation and data mining for automotive dealerships.  The five denials represent a rare feat, considering that only about 12% of the 203 IPR petitions decided by the PTAB during 2013 were denied.

Rolex Watch U.S.A., Inc. v. Melrose Jewelers, CV12-06400 FMO (MRWx) (C.D. Cal. 2013).  Represented Rolex in action to enjoin trademark counterfeiting, trademark infringement, unfair competition and cybersquatting by Melrose, an online retailer of counterfeit Rolex watches.  After conducting discovery and filing a motion for summary judgment of infringement, the case settled with Melrose entering into a consent judgment, which included a permanent injunction and award of $8.5 million to Rolex.

Rohr, Inc. dba Goodrich Aerostructures v. Sheets Manufacturing, Inc. CV-37-2011-00076563-CU-BC-SC (Cal. Superior Court 2011).  Represented Goodrich in case for breach of contract and specific performance to obtain an audit of an aircraft parts vendor suspected of misappropriating Goodrich’s trade secrets related to aircraft nacelle manufacturing designs.  The case settled favorably for Goodrich before trial.

Toshiba Corporation v. Wistron Corporation, Investigation No. 337-TA-705 (U.S. I.T.C. 2010). Represented Toshiba in ITC investigation (and a parallel district court action) involving patents on computer hardware and software features. Just before trial, the case settled with Wistron paying for a license under Toshiba’s patents.

DatCard Systems, Inc. v. Codonics, Inc., Civil Action No. SACV 08-00063 AHS (RNBx) (C.D. Cal. 2010). Represented plaintiff DatCard Systems in patent litigation involving medical disc publishers and related software. After the litigation was stayed pending reexamination of DatCard’s patent, and after the parties had filed other lawsuits against each other for Lanham Act and other claims, all lawsuits settled, with the accused infringer consenting to a permanent injunction under DatCard’s patent.

Golden Hour Data Systems, Inc. v. emsCharts, Inc., et al., Civil Action No. 2:06-cv-381-TJW (E.D.Tx. 2008).  Obtained $3.5 million jury verdict on behalf of San Diego-based Golden Hour Data Systems in patent case involving computerized integrated data management services for the emergency medical services industry. The jury found all claims valid and willfully infringed.

Duke University and Orexigen Therapeutics, Inc. v. Elan Corp., Eisai Co., Ltd., et al., Civil Action No. 1:04CV532 (M.D.N.C. 2006). Represented plaintiffs Duke and Orexigen in lawsuit to establish rights in patent applications involving pharmaceutical compositions for the treatment of obesity. The case settled, with Duke and Orexigen securing rights that enabled Orexigen to launch a successful IPO to continue development of the technology.

Jonathan Manufacturing Corp. v. Central Industrial Supply Co., Civil Action No. 04CV1365 DOC (SHx) (C.D. Cal. 2005).  Obtained preliminary injunction in patent case involving slide assemblies for computer server racks.

Alfa Leisure, Inc. v. Chief Industries, Inc., Civil Action No. 01-796RT (SGLx) (C.D. Cal. 2005).  Represented owner of patent covering chassis designs for fifth wheel trailers. After obtaining summary judgment dismissing defendant’s inequitable conduct counterclaim and all but a few of its invalidity defenses, the case settled with defendant paying license royalties to our client.

Yamaha Motor Co., Ltd. v. Bombardier Inc., Investigation No. 337-TA-452 (U.S. I.T.C. 2002).  Represented patent owner Yamaha in ITC investigation involving personal watercraft. Case settled after a four-week trial, just days before the ITC was to issue its initial determination.

Vitalcom, Inc. v. Telemetry For Medicine, Inc., Case No. 812533 (Cal. Superior Ct.).  Represented plaintiff Vitalcom in trade secret misappropriation case. Obtained final judgment and injunctive relief.

Densoes & Geddes, Ltd. v. Win-It-Too, Inc., CV 96-1303 (C.D. Cal). Obtained preliminary injunction and summary judgment of infringement for plaintiff in trademark case involving alcoholic beverage products.

Yamaha Corporation of America v. Ryan, 13 U.S.P.Q. 2d 1157 (C.D. Cal. 1989).  Obtained preliminary injunction for plaintiff Yamaha in trademark case involving digital music technology.

Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443 (Fed. Cir. 1986).  Represented patent owner Bausch & Lomb and obtained reversal of invalidity ruling on patent for contact lenses.

Representative Cases for Defendants

Smart Irrigation Solutions, Inc. v. Hunter Industries, Incorporated  8:15-cv-00081 JLS-AN (C.D. Cal. 2015). Represented Hunter Industries in patent case involving irrigation controllers.  After explaining Hunter’s noninfringement and invalidity defenses, the patent holder voluntarily dismissed the complaint with prejudice.  While one of Hunter’s competitors settled by taking a license under the patent in suit, Hunter never had to answer the complaint.

MOSAID Technologies Inc. v. HTC America, Inc. 11-CV-00598-SLR (D. Del. 2013). Represented HTC in patent case involving personal alarm systems that use GPS to determine the location of a mobile phone during an emergency or other hazardous situation.  After HTC filed several motions for summary judgment, the case settled on terms very favorable to HTC.

Walker Digital LLC v. Nordstrom, Inc. and Gap, Inc. 11-CV-00135-SLR (D. Del. 2012).  Represented Nordstrom and Gap in patent case involving e-commerce sales of retail products over the internet.  Early in the case, we engaged the plaintiff and explained why there was no infringement of the asserted patent.  Shortly thereafter, and with minimal expense to our clients, the case was dismissed by stipulation.

Qaxaz LLC v. Alpine Electronics of America, Inc.  11-CV-00492-LPS (D. Del. 2012).  Represented Alpine Electronics in patent case involving GPS devices that allow for remote entering, storing and sharing of addresses for positional information.  After developing strong noninfringement and invalidity defenses, and before conducting any formal discovery, the case settled on terms very favorable to Alpine.

Affinity Labs of Texas LLC v. Alpine Electronics of America, Inc. 9:08-CV-00171 RC (E.D. Tex. 2009).  Represented Alpine Electronics in patent case involving technology for connecting portable audio players, such as iPhones, to automobile sound systems.  We were able to achieve a favorable settlement for Alpine and its customers early in the case with minimal expense.  Other defendants that did not settle eventually lost at trial and were ordered to pay millions in damages.

Dahl v. Swift Distribution, Inc., dba Ultimate Support Systems, 757 F. Supp. 976 (C.D. Cal. 2010).  Represented Ultimate Support Systems accused of patent, trademark and copyright infringement relating to collapsible carts for transporting music, sound and video equipment. After successfully defeating Dahl’s request for a temporary restraining order and preliminary injunction, Ultimate moved for summary judgment of noninfringement of the patents in suit. The court granted the motion and the case settled immediately thereafter with Dahl dropping all of his claims against Ultimate.

Guardian Media Technologies, Ltd. v. Toshiba America Consumer Products, L.L.C., Civil Action No. 09CV-0052 R (RCx) (C.D. Cal. 2009). Represented defendant Toshiba charged with infringement of a patent involving methods for censoring video programs. Prior to this lawsuit, a significant segment of the industry had taken a license under the plaintiff’s patent. But, after adopting Toshiba’s proposed claim construction, and prior to any substantial discovery, the court granted summary judgment of noninfringement, which prevented Toshiba from paying tens of millions of dollars in royalties sought by the plaintiff.

Hsi-Yuan Shawn Chen v. Unisen, Inc., dba Star Trac, Civil Action No. C09-128RSL (W.D. Wash. 2009).  Represented defendant Star Trac charged with infringement of a patent involving brakes for exercising cycles. Obtained a stay of the litigation in favor of Star Trac prior to the Rule 26(f) scheduling conference, after successfully requesting reexamination of the plaintiff’s patent in the PTO.

Bryan Callan v. Christian Audigier, Inc. et al., Civil Action No. CV08-8072 GW (RCx) (C.D. Cal. 2009).  Represented defendant Christian Audigier charged with copyright infringement and breach of contract involving tattoo artwork and designs for street wear. Obtained settlement of the case on a confidential basis just before trial.

Beekley Corp. v. Jessop Precision Products, Inc., Civil Action No. 3:06cv335 (RNC) (D.Conn. 2007).  Represented defendant Jessop Precision Products in patent and trademark case involving radiographic marker technology. After serving a detailed expert report on invalidity of the asserted patents and trademarks, the case settled (on a confidential basis), with our client remaining in the market without disruption.

Ranbaxy Labs. Ltd. v. Abbott Labs, 04-cv-8078, 2005 WL 3050608 (N.D. Ill. 2005).  Represented declaratory judgment plaintiff Ranbaxy in patent infringement action in the Northern District of Illinois on patents relating to extended release clarithromycin (active ingredient in Abbott's BIAXIN XL® product). In opposing Abbott's motion for a preliminary injunction, succeeded in showing a likelihood that two patents were unenforceable due to inequitable conduct.

Talbert Fuel Systems Patents Co. v. Unocal Corp., Union Oil Company of California, and Tosco Corp., 347 F.3d 1355 (Fed. Cir. 2003). Represented defendant Tosco Corp. (later acquired by Conoco-Phillips) charged with infringement of patent on reformulated gasoline. Obtained summary judgment of noninfringement, affirmed on appeal, which prevented Tosco from paying millions of dollars in royalties sought by the plaintiff.

Auto Wax Co. v. Kasei Kogyo Co., 65 U.S.P.Q. 2d 1315 (W.D. Tx. 2001). Obtained dismissal of complaint for lack of personal jurisdiction over a Japanese defendant in a patent case involving automobile care products.

General Mills, Inc. v. Hunt-Wesson, Inc., 917 F. Supp. 663 (D. Minn. 1996), aff’d, 103 F.3d 978 (Fed. Cir. 1997). Obtained summary judgment of noninfringement, affirmed on appeal, for defendant Hunt-Wesson in patent case on microwave food packaging.

Brown v. Adidas International, 938 F. Supp. 628 (S.D. Cal. 1996). Represented defendant Adidas and obtained dismissal of action alleging patent infringement, copyright infringement and trade secret misappropriation related to athletic shoe technology.

Aeroquip Corp. v. Deutsch Co., 887 F. Supp. 293 (S.D. Ga. 1995). Represented defendant Deutsch in patent case involving aerospace tooling and fittings. After successfully moving to transfer case from unfavorable forum, case settled.

Rollerblade, Inc. v. Canstar Sports, Inc., Investigation No. 337-TA-348 (U.S. I.T.C. 1993). Successfully represented Canstar, which makes the well-known line of Bauer ice hockey equipment, in ITC investigation involving patent on in-line skates.

Refac Int’l. , Ltd. v. Hitachi, Ltd., et al., 921 F.2d 1247 (Fed. Cir. 1990). Represented defendants Analog Devices, Inc. and NEC Electronics, Inc. in patent case involving LCD technology. Successfully obtained dismissal of case and award of sanctions against plaintiff for discovery violations and filing a frivolous action.

Recent Speeches and Seminars

"Strategies to Handle U.S. Litigations," presented in Hsinchu and Taipei, Taiwan (September 2013).

"Recent Trends in U.S. Patent Litigation - Litigation involving Standard Essential Patents (SEP) - from Non-Practicing Entities to Practicing Entities," presented in Tokyo, Japan (April 2013).

"How to Get the Most Out of Your Relationship with Outside Litigation Counsel," presented at IP Impact Seattle Seminar (February 2012).

“Recent Case Law Update,” covering topics including patentable subject matter, induced and joint infringement, and patent damages, presented at IP Impact Northern Virginia Seminar (September 2011).

Other Representative Articles, Papers and Speeches

“Forum Selection From The Plaintiff’s Perspective,” Spring Meeting of the American Intellectual Property Law Association, 2006, speech and paper.

“Preparing to Prevail: Preliminary Injunction Practice Pointers,” 20th Annual Intellectual Property Law Conference of the American Bar Association, Section of Intellectual Property Law, 2005, speech and paper.

“Using The International Trade Commission As An Alternative To Litigation,” Los Angeles Intellectual Property Law Association, Washington In The West Seminar, 2003, speech and paper.

“Attorney-Client Privilege Issues for In-House Counsel,” 18th Annual Intellectual Property Conference of the American Bar Association, Section of Intellectual Property Law, 2003, speech and paper.

“Recent Developments in Patent Law,” Annual Meeting of the American Bar Association, Section of Intellectual Property Law, 1998, speech and paper.

“Confronting Attorney-Client Privilege Problems From the In-House Perspective,” Spring Meeting of the American Bar Association, Section of Intellectual Property Law 1998, speech and paper.

Other Articles and Papers

“Remedies For Patent Infringement in the Federal Circuit-A Survey of the First Six Years,” published in the IDEA Journal of Law and Technology, Volume 29, 1989.

“Preliminary Injunctions in Trade Secret Cases,” published by the Practicing Law Institute, 1986.

“California Laws and Intellectual Property: Inventions, Copyrights and Unfair Competition,” published by the California Continuing Education of the Bar, 1985.

Co-author, "The Impact of Alice on Patent Eligible Subject Matter - With a Focus on U.S. District Courts' and Federal Circuit's Decisions relating to Business Methods and Computer Software-Related Inventions on Decisions," Journal of the Japanese Group of the International Association for the Protection of Intellectual Property (AIPPI), Vol. 60 No. 11 (November 2015)

Co-author, "A Taxonomy of Buffer Overflow Characteristics," Dependable and Secure Computing, IEEE Transactions on, Volume 9, Issue 3 (January 2012)

Author, A Discussion on the Patentability of Signals: Examining In re Nuijten, 8 Nw. J. Tech. & Intell. Prop. 131 (2009).

Representative Patent Matters

Silver State Intellectual Technologies, Inc. v Apple Inc., Civil Action No. 13 CV 0957 (D. Nev.).  Represented plaintiff asserting patents in the field of graphical user interface design for communications and navigation functions found in smartphones and tablets.  Case settled successfully without litigation.

Oasis Research, LLC v. Pro Softnet Corp.,et al., Civil Action No. 4:10 CV 435 (E.D. Tex.).  Represented defendant accused of infringing patents in the field of remote data storage and computer backup, in the Sherman Division of the Eastern District of Texas.  Asserted patents ultimately held invalid by a Texas jury for failure to name co-inventors.

The Laryngeal Mask Company Ltd., et al. v. Ambu A/S, et al., Civil Action No. 07 CV 1988 (S.D. Cal). Represented plaintiff asserting patent in field of laryngeal mask airway devices, a medical device used to administer anesthesia gases and establish an airway in unconscious patients. Obtained disqualification of initial defense counsel. Case settled successfully after appeal to the Federal Circuit. Published decisions at 2008 U.S. Dist. Lexis 15320 (S.D. Cal 2008); 618 F.3d 1367 (Fed. Cir. 2010).

Golden Hour Data Systems, Inc. v. emsCharts, Inc., et al., Civil Action No. 06 CV 381 (E.D. Tex.). Obtained $3.5 million jury verdict on behalf of San Diego-based Golden Hour Data Systems in patent case involving computerized integrated data management services for the emergency medical services industry.  Brought case before Judge T. John Ward in the Eastern District of Texas.

American Calcar v. BMW of North America, Civil Action No. 04 CV 0614 (S.D. Cal.) Represented plaintiff asserting multiple patents in the areas of car/driver graphical user interfaces, telematics and navigation systems – defendant took a license under the asserted patents and the case settled before trial.

Raytheon v. Overland Storage, et al., Civil Action No. 03 CV 013 (E.D. Tex.).  Defended manufacturer of mass data storage products against patent infringement claim brought in the Eastern District of Texas (Judge T. John Ward).  After filing summary judgment motion, plaintiff offered full license at nominal cost and case settled.

Hewlett-Packard v. Mustek, Civil Action No. 99 CV 0351 (S.D. Cal.).  Represented defendant against five asserted HP patents in the field of image scanning — obtained complete defense victory after jury trial and appeal.  Published decision at 340 F.3d 1314 (Fed. Cir. 2003).

Flex Products v. Advantage Sealing Systems, Civil Action No. 00 CV 0231 (S.D. Cal.).  Represented plaintiff asserting patents in the field of rubberized asphalt compositions – obtained preliminary injunction that was affirmed on appeal – defendant took a license under the asserted patents.

Farnbach v. Hewlett-Packard, Civil Action No. 99 CV 0884 (S.D. Cal.).  Represented plaintiff inventor asserting patents covering oscilloscope trigger circuits – successfully settled case with defendant taking a license under the asserted patent.

Millennium v. Cardiff Software, Civil Action No. 99 CV 1577 (S.D.N.Y.).  Represented defendant software company against four asserted patents in the field of electronic forms and data entry systems – successfully settled case allowing defendant to continue selling accused products.

Representative Trademark Matters

Eagle Precision Technologies, Inc., et al., v. Eaton Leonard Robolix, Inc., Civil Action No. 03 CV 352 (S.D. Cal.).  Represented defendant in complex contractual trademark dispute over use of the “Eaton Leonard” name and trademark for computer controlled tube bending equipment.  Successfully defended client’s continued use of its name and trademark and favorably settled case.

Creative Labs v. Mad Dog Multimedia, Civil Action No. C02-04575 (N.D. Cal.).  Defended client against motion for temporary restraining order and product recall alleging trademark/trade dress infringement and false advertising in connection with computer sound cards.  Published decision at 66 U.S.P.Q.2d 1625.

Polaris Pool Systems v. Letro Products, Civil Action No. 94 CV 7747 (C.D. Cal.).  Represented plaintiff in jury trial asserting registered trade dress of automatic swimming pool cleaners – obtained infringement verdict against defendant and permanent injunction.

Helix Technology v. Overland Data, Civil Action No. 98 CV 11292 (D. Mass.).  Represented defendant in trademark case involving technical service programs – obtained partial summary judgment against plaintiff – settlement allowed client to continue use of mark.

Yoder Brothers v. GroLink Plant, Civil Action No. 01 CV 2308 (N.D. Ohio).  Represented trademark owner in declaratory judgment action involving asexually reproduced plants – infringer agreed to stop using client’s mark and case settled.

Articles

“New Eastern District of Texas Procedures Aim to Curb Nuisance Value Lawsuits," published in SideBAR quarterly newsletter of the Federal Litigation Section of the Federal Bar Association, Summer 2011 (with Nick Transier).

“Licensing After MedImmune v. Genentech,” presented to the San Diego Chapter of the Licensing Executives Society, Summer 2007.

“Southern District Rolls Out New Patent Local Rules,” published in the Association of Business Trial Lawyers – San Diego (ABTL) Report, Fall 2006 (with Joe Reisman).

Speeches & Seminars

"The Future of Patent Law Remedies," co-panelist at the Third Annual USD Patent Law Conference, January 2013.

“Enablement Requirements for Computer-Based Systems,” presented to the San Diego Intellectual Property Association, Fall 2005.

“Practical Tips on Enforcing and Defending Patents: Pre-Litigation Matters,” presented at the Intellectual Property Law Annual Summer Conference of the ABA, June 2003.

“Motion Practice in Patent Cases,” presented to the Intellectual Property Law Section of the San Diego County Bar Association, November 2000.

Inter Partes Review Proceedings

Game Show Network, LLC v. Stephenson (IPR 2013-00289)

Ranbaxy Labs. Ltd. & Ranbaxy Inc. v. Vertex Pharms., Inc. (IPR2013-00024)

Redline Detection, LLC v. STAR EnviroTech, Inc. (IPR2013-00106)

Dominion Dealer Solutions, LLC. v. AutoAlert, Inc. (IPR2013-00220)

Dominion Dealer Solutions, LLC. v. AutoAlert, Inc.(IPR2013-00222)

Dominion Dealer Solutions, LLC. v. AutoAlert, Inc. (IPR2013-00223)

Dominion Dealer Solutions, LLC. v. AutoAlert, Inc.(IPR2013-00224)

Dominion Dealer Solutions, LLC. v. AutoAlert, Inc. (IPR2013-00225)

Game Show Network, LLC & WorldWinner.com, Inc. v. Stephenson (IPR2013-00289)

Gatekeeper Sys., Inc. v. Dane Techs., Inc. (IPR2013-00305)

Gatekeeper Sys., Inc. v. Dane Techs., Inc. (IPR2013-00338)

Litigation

Redline Detection, LLC v. Star EnviroTech, Inc. (IPR2013-00106, Fed. Cir. 2015-1047)

Kathrein-Werke KG v. Radiacion Y Microondas S.A., 2011 U.S. Dist. LEXIS 113778 (N.D. Ill. Sept. 26, 2011)

Kinetic Concepts, Inc. v. Bluesky Medical Corp., 2010 U.S. Dist. LEXIS 143923 (W.D. Tex. Oct. 18, 2010)

Kathrein-Werke KG v. Radiacion Y Microondas S.A., 2010 U.S. Dist. LEXIS 50468 (N.D. Ill. May 17, 2010)

Kinetic Concepts, Inc. v. Blue Sky Medical Group, Inc., 554 F.3d 1010 (Fed. Cir. 2009)

Kinetic Concepts, Inc. v. Bluesky Medical Group, Inc., 2008 U.S. Dist. LEXIS 2900 (E.D. Tex. Jan. 14, 2008)

Cimcore Corp. v. Faro Techs., Inc., 2007 U.S. Dist. LEXIS 17936, 2007 WL 935665 (S.D. Cal. March 12, 2007)

Faro Techs., Inc. v. Cimcore Corp., 2006 U.S. Dist. LEXIS 23745, 2006 WL 1119223 (M.D. Fla. Apr. 27, 2006)

Custom Teleconnect, Inc. v. International Tele-Services, Inc., 254 F. Supp. 2d 1173 (D. Nev. 2003)

General Creation LLC v. LeapFrog Enters., Inc., 232 F. Supp. 2d 661 (W.D. Va. 2002)

Jam Strait, Inc. v. American Products Co., 2002 U.S. Dist. LEXIS 18956 (E.D. La. Oct. 4, 2002)

General Creation LLC v. LeapFrog Enters., Inc., 192 F. Supp. 2d 503 (W.D. Va. 2002)

Flex-Foot, Inc. v. CRP, Inc., 238 F.3d 1362, 57 U.S.P.Q.2d 1635 (Fed. Cir. 2001)

Phoenix Displays, Inc. v. Burke Display Sys., Inc., 250 F.3d 760 (Fed. Cir. 2000) (unpub. table)

Smith+Noble L.L.C. v. South Jersey Vinyl Inc., 47 U.S.P.Q.2d 1944 (C.D. Cal. 1998)

Forte Techs., Inc. v. Victormaxx Techs., Inc., 1996 U.S. Dist. LEXIS 6741 (W.D.N.Y. Jan. 18, 1996)

Interferences

Yorkey v. Diab, 466 Fed. Appx. 907 (Fed. Cir. 2012) (unpub. table) (Interference No. 105,471)

Yorkey v. Diab, 601 F.3d 1279 (Fed. Cir. 2010) (Interference No. 105,477)

Yorkey v. Diab, 605 F.3d 1297 (Fed. Cir. 2010) (Interference No. 105,471)

Lowy v. Frazer, 75 U.S.P.Q.2d 1797 (Bd. Pat. App. & Int. 2004)

Rose v. Frazer, 2001 Pat. App. LEXIS 43 (Bd. Pat. App. & Int. 2001) (unpub.) (identical to order entered in Lowy v. Frazer, Int’f No. 104,775)

Bronshtein v. Roser, 61 U.S.P.Q.2d 1738 (Bd. Pat. App. & Int. 2001) (unpub.)

Bronshtein v. Roser, 61 U.S.P.Q.2d 1742 (Bd. Pat. App. & Int. 2001) (unpub.)

Speeches & Seminars

Panelist, "USPTO and Plain Meaning of Terms" Webinar, Intellectual Property Owners Association (May 2015)

Presenter, "2014 Patent Update for Medical Device Companies - USPTO Post-Grant Proceedings: Lessons Learned After 2 Years," IN3 Medical Device Summit, San Francisco (November 2014)

Panelist, "Understanding New Proceedings for Challenging Patent Validity,” 2013 Patent Disputes Forum, November 2013 (Santa Clara, CA)

Panelist, "Important Developments in Intellectual Property and How They Impact Your Business," IP Impact - Silicon Valley, September 2013 (Palo Alto, CA)

Panelist, "Post-Grant Proceedings under the America Invents Act," Los Angeles Intellectual Property Law Association (LAIPLA) “Washington in the West” Conference, January 2013 (Los Angeles, CA)

Panelist, "Dealing Strategically with the America Invents Act," IP Impact - Silicon Valley, September 2012 (Palo Alto, CA)

Panelist, "Strategic Implications of the America Invents Act," IP Impact - Silicon Valley, October 2011 (Menlo Park, CA)

Mr. King has published a number of articles on intellectual property law and has lectured frequently on patent strategies and other intellectual property law topics.  

"What Businesses And Engineers Need To Know About Recent Developments in Patent Law,"OCTANe Strategic Growth Series, Irvine, California.

"Post Grant Patent Challenges," 37^th Annual Intellectual Property Institute, The State Bar of California, San Diego, California.

Look Before You Leap – Avoiding Intellectual Property Problems When Starting A New Information Technology Business," OCTANE Software Information Technology Seminar, Irvine, California.

The American Invents Act – How Changes To The Patent Law Can Help Emerging Companies,"  Patent Strategies Seminar, Irvine, California

"Cease and Desist Strategies – Preparing For Licensing Negotiations,"Orange County Patent Law Association, Irvine, California. 

“Defending the Crown Jewels: How to Manage and Protect Intellectual Property,” Harvard Business School Entrepreneurs Conference, Anaheim, California

Patent Claim Drafting Techniques That Enhance Enforcement And Increase Licensing Revenue,"  Orange County Patent Law Association, Seminar, Irvine, California

“Patent Allowance, Now What? Continuation Strategies That Significantly Increase Patent Value,” Orange County Patent Law Association, Costa Mesa, California 

“Protecting Innovative Medical Products,” Harvard Business School Entrepreneurs Conference, Irvine, California

“Tailoring a Patent Portfolio to Increase Licensing Revenue,” Orange County Licensing Executive Society, Irvine, California.

“Limiting Language and Alternative Embodiments: What to Do and What to Avoid,” Orange County Patent Law Association, Costa Mesa, California.

“Transforming Proprietary Knowledge Into Competitive Business Tools,” Chapman University, Orange, California.

“Profiting from Technology Innovation,” Harvard Alumni Association, Irvine, California.

“Protecting Intellectual Property – A Venture Capitalist’s Perspective,” Harvard Business School Entrepreneurs Conference, Irvine, California.

“Patent Strategies to Enhance Your Competitive Position,” Harvard Business School Entrepreneurs Conference, Irvine, California.

“Intellectual Property Protection for Startups,” Harvard Business School Entrepreneurs Conference, Irvine, California.

“Patent Preparation and Drafting for the International Company,” International Intellectual Property Seminar, Newport Beach, California.

Speeches & Seminars

Trademark Application Pre-Filing Strategies: Overcoming the Obstacles, Strafford, June 2015

International Trademark Law and Strategy: Practical Tips for Protecting, Licensing and Enforcing Trademarks Abroad, Los Angeles County Bar Association, September 2014 (Co-Panelists: Mei-Lan Stark, Head IP Counsel for Fox and INTA President and Michael Lewis, USPTO Regional IP Attaché for Mexico, Central America and the Caribbean)

Let The Good Times Roll: IP Issues with Social Media and User-Generated Content, American Corporate Counsel (ACC), August 2014

Intellectual Property: Get My Stuff Off the Web!,Beverly Hills Bar Association, August 2014 (Co-Panelists: Ian Ballon and Neville Johnson)

Moderator, INTA-USPTO Roundtable: Los Angeles, May 2014

Trademark Clearance and Filing Strategies, Los Angeles Intellectual Property Law Association, October 2013

Avoiding False Advertising & Unfair Competition Claims, Silicon Valley, July 2013

Silver Linings Playbook: Best Practices in Trademark Clearance and Selection, American Corporate Counsel (ACC), April 2013

Intellectual Property Licensing, U.S. Department of Commerce, SABIT Intellectual Property Rights Program, March 2013

Facebook and Beyond: What Every Lawyer Needs to Know, Orange County Bar Association, January 2013

It's A Social World After All: An Update on Trademark and Copyright Issues in Social Media, Association of Corporate Counsel, April 2012 

How To Make Money With Your Intellectual Property, LAIPLA/Loyola Law School, July 2011

What’s In A Name? Protecting Trademarks Associated With Television Shows In The U.S., 28th Annual International Law Symposium - Entertainment & Sports Law: The International Dimension, February 2011

Intellectual Property and Social Media, Constitutional Rights Foundation, 4th Annual Constitution Day Conference, September 2010

IP And Social Media, Association of Corporate Counsel-SoCal Chapter, April 2010

Intellectual Property Nuts and Bolts – Trademarks, Los Angeles County Bar Association, May 2009

Bang For The Buck: Extracting Maximum Value From Intellectual Property In An Economic Crisis, Association of Corporate Counsel-SoCal Chapter, April 2009

Recent Developments In Trademark Law: Metatags, Infringement, But No Injunctions?, Orange County Paralegal Association, August 2008

Emotional Brand Building, ASR, San Diego, September 8, 2007

Protecting Brand Integrity: Best Practices and Lessons Learned, U.S. Chamber of Commerce The Cost of Counterfeiting and Piracy Conference, August 2007

The Global Reach of US Notice and Take Down Provisions, LES Pan-European Conference, Glasgow, Scotland, June 22, 2006

Preventing Brand Infringement and Dilution on the Internet, Orange County Paralegal Association, January 2005

Trademark Update: European Union Expansion; Changes in US Trademark Procedure; and the Electronic PTO, Orange County Paralegal Association March 2004

Training for the Big Leagues: Securing International Trademark and Design Protection, Beverly Hills Bar Association, May 2003

Brand Enforcement Strategies 2002 Trademark Seminar, June 2002

Articles

Getting the Deal Through: Trademarks 2016, Law Business Research Ltd., September 2015

Betty Boop in Blunderland: Ninth Circuit's Trademark Ruling In Fleischer Studios v. A.V.E.L.A, Los Angeles County Bar Association's Entertainment Law and IP Section - Entertainment and Intellectual Property Law Journal, Vol. 2, Number, 2 May/June 2012

Protecting Your Upside In A Downturn: Due Diligence Considerations For Purchasing Intellectual Property In An Economic Crisis, Association of Corporate Counsel-SoCal Chapter News Letter, February 2009

Maintaining Brand Integrity In The Marketplace, World Trademark Review, May/June 2008

Before You Go to China: Strategies for Protecting Your Trademarks in China, Orange County Lawyer, August 2007

Who Wants To Sue A Multi-Billionaire: Google's Risky Venture Into YouTube, Cyberspace Lawyer, June 2007

Brand Management: Five Ways to Watch Your Competitors, Managing Intellectual Property, April 2007

Deep Pockets: The Risks of Buying Websites With Consumer Generated Content and How They Hope to Avoid the Major Lawsuit, E-Commerce Law Report, November 2006

How I Learned to Stop Worrying and Love YouTube: Video-Hosting Services and the Death of Copyrights on the Internet, Daily Journal, August 2006

Cases For Plaintiff

Schindler Elevator Corp. v. Otis Elevator Co., 593 F.3d 1275 (Fed. Cir. 2010).  Successfully obtained reversal of summary judgment of noninfringement and claim construction ruling on patent relating to elevator dispatching systems.  On remand, obtained a jury verdict that Otis directly and indirectly infringed the patent and that the patent is valid.  Post-trial proceedings and appeal pending.

Cases for Defendant

Toshiba Corporation v. Wistron Corporation, Investigation No. 337-TA-705 (U.S. I.T.C. 2010). Represented Toshiba in ITC investigation (and a parallel district court action) involving patents on computer hardware and software features.  Just before trial and after defeating each summary judgment motion brought by Wistron, the case settled with Wistron paying for a license under Toshiba’s patents.

Linex Techs., Inc. v. Belkin Int'l, Inc. 628 F. Supp. 2d 703 (E.D. Tex. 2008).  Represented Toshiba in patent infringement lawsuit involving patent asserted by Linex against multiple defendants related to a system and method for transmitting a plurality of spread-spectrum signals, radiated by a plurality of antennas, over a communications channel having fading.  Successfully obtained a favorable ruling on inadequacy of Plaintiff’s infringement contentions.  Obtained settlement of the case on a confidential basis prior to trial.

Camp Scandinavia AB  v. Trulife, Inc. (E.D. Mich. 2007).  Represented Trulife in patent infringement lawsuit involving patent asserted by Plaintiff related to an ankle foot orthotic product.  Defeated Plaintiff’s motions for summary judgment of infringement and validity.  Obtained settlement of the case on a confidential basis just before trial.

SynQor, Inc. v. Artesyn Technologies, Inc. (E.D. Tex. 2007).  Represented Cherokee in patent infringement action asserted by SynQor against multiple defendants involving three patents relating to bus convertors and non-isolated point of load convertors used in intermediate bus architectures.

Articles, Speeches & Seminars

Moderator, "Design Patent Litigation - The Next Frontier," AIPLA Patent Litigation Committee Online Education Subcommittee sponsored event

Representative Matters

Kreative Power, LLC v. Monoprice (N.D. Cal. 2014).
Obtained summary judgment of no utility patent infringement, no design patent infringement, no copyright infringement and invalidity of design patent on behalf of defendant Monoprice.

Jimmy Styks LLC v. Hobie Cat Co., LLC (C.D. Cal. 2014).
Negotiated favorable settlement in patent infringement suit related to handles for stand up paddleboards resulting in dismissal of case with prejudice.

Salmon Licensing LLC v. Cellphone-Mate Inc. (D. Del. 2014).
Negotiated favorable settlement in patent infringement suit related to cell phone repeaters resulting in dismissal of case with prejudice.

Traffic Information v. Fandango, Inc.(E.D. Tex. 2014).
Negotiated favorable settlement in patent infringement suit related to traffic information in mobile apps resulting in dismissal of case with prejudice.

Sapphire Dolphin v. Monoprice (D. Del. 2014).
Negotiated favorable settlement in patent infringement suit related to communications over Bluetooth network via near field communications resulting in dismissal of case with prejudice.

Ideative Product Ventures, Inc. v. Monoprice (E.D. Tex. 2014).
Negotiated favorable settlement in patent infringement suit related to HDMI swivel adapters resulting in dismissal of case with prejudice.

LaserDynamics, LLC v. Boombang Inc. (S.D.N.Y. 2014).
Negotiated favorable settlement in patent infringement suit related to DVD playback resulting in dismissal of case with prejudice.

Dominion Assets LLC v. Masimo Corp. and Cercacor Laboratories, Inc. (N.D. Cal. 2014).
Knobbe Martens represented Masimo & Cercacor in complex litigation involving Dominion Assets asserting three patents regarding non-invasive blood analyte monitoring against Masimo’s Rainbow technology. The patents resulted out of research to detect blood glucose levels in the 1980s. The research company then transferred the right and title for its technologies to a subsidiary in 1991. Between 1994 and 1995, the patent office issued the three patents-in-suit to the subsidiary. Dominion acquired all of the subsidiary’s intellectual property in 2006. Irfan Lateef led a team that obtained dismissal of the suit for lack of standing at the time the complaint was filed. In 2010, Dominion had assigned the patents to Acacia – a known non-practicing entity. This deal assigned all of Dominion’s rights, title, and interest in patents, including those in suit, for Acacia to monetize them. Dominion sent a letter to Acacia in March 2012, seeking to terminate the agreement and claiming the company had not made any progress in monetizing the technology. Despite telling the court that Acacia agreed to the request, Dominion did not sign Acacia’s proposed termination language because of added terms. The parties did not execute a written termination agreement until April 2014.

Canatelo, LLC  v. Toshiba America (D.P.R. 2013). 
Represented Toshiba America Information Systems, Inc. in a patent infringement action related to automated security camera technology.  Obtained favorable dismissal.

U.S. Ethernet Innovations Inc. v. Acer et al. (E.D. Tex. and N.D. Cal.).
Defended Toshiba Corporation to successfully obtain summary judgment in a significant non-practicing entity case.  The plaintiff had sued over 30 defendants for infringing patents directed to Ethernet technology.  Judge Claudia Wilken of the Northern District of California granted judgment of invalidity on two patents and non-infringement of two others.  Successfully transferred the case from the Eastern District of Texas to the Northern District of California.

In the Matter of Certain Electronic Imaging Devices, Inv. No. 337-TA-850 (U.S.I.T.C. 2013). 
Submitted public interest Statement on behalf of T-Mobile USA, Inc. encouraging Commission to decline to issue an exclusion order that would compensate the patentee for non-infringing features of the accused products.

Charles C. Freeny, et al. v. Western Digital Corp. (E.D. Tex. 2013). 
Negotiated favorable settlement resulting in dismissal of case with prejudice.

Kroy IP Holdings, LLC v. Capita Techs. Inc. (E.D. Tex. 2012). 
Negotiated stipulated dismissal of case following service of invalidity contentions on behalf of defendant.

Agri-Cover Inc. v. Ben Sabio (C.D. Cal. 2011). 
Successfully enforced trademark on behalf of owner.

Hawaii AirBoards, LLC v. Hobie Designs, Inc. (D. Hawaii 2011). 
Negotiated favorable settlement resulting in dismissal of case.

In the Matter of Certain Computer Notebook Products and Components Thereof, Inv. No. 337-TA-705 (U.S.I.T.C. 2010).
Obtained summary determination for complainant Toshiba regarding respondents’ affirmative defenses in patent infringement lawsuit involving hardware and software components of notebook computers.

Commonwealth Scientific and Indus. Research Org. v. Toshiba America Info. Sys., Inc., et al. (E.D. Tex. 2007).
Represented Toshiba in a patent infringement lawsuit involving wireless LAN standards.

Discovision Assoc. v. Toshiba Corp. (S.D.N.Y. 2008).
Represented Toshiba in lawsuit involving breach of patent license agreement for optical disc playback and recording products.

Light Valve Solutions, LLC v. 3M Company, et al. (N.D. Ga. 2008).
Represented Toshiba in patent infringement lawsuit involving projectors.

Articles

Co-author, "Another Reason to Coordinate Discovery in Parallel Litigation – Circumvention in Section 1782 Requests," International Litigation News, Newsletter of the International Bar Association Legal Practice Division (April 2013)

Speeches & Seminars

Howard T. Markey Inn of Court, “Expert Witnesses in Patent Litigation: From Teva to Trial” Irvine (March 2015)

Brian Claassen, “Intellectual Property Basics – SBIR/STTR and Tech Transfer,” Cal State Fullerton’s Research Week (March 22, 2013)

Representative Matters for IP Owner/Plaintiff
Representative Matters for Accused Infringer/Defendant
Other Noteworthy Cases
Articles
Books and Chapters
Speeches & Seminars

Representative Matters for IP Owner/Plaintiff

Masimo Corp. v. Philips Electronics North America Corp. and Philips Medizin Systeme Boblingen GmbH., Case No. 09-80-LPS-MPT (D. Del. Oct. 17, 2014).  Represented medical-device maker Masimo and led trial team to a complete victory in obtaining a jury verdict of over $466 million for lost-profits damages against Philips for infringing two Masimo patents.  The jury also rejected Philips’s infringement claims seeking $169 million.

Applied Medical Resources Corp. v. Tyco Healthcare Group LP d/b/a Covidien, CV 11-01406, (C.D. Cal., July 11, 2014).  Represented medical-device maker and patent owner  Applied Medical Resources, Corp. in an inventorship dispute filed by Covidien and Gaya Ltd.  In a 130-page opinion, the district court ruled in Applied's favor on all claims, holding that no individuals associated with Gaya are inventors on any of the five Applied patents at issue.  All litigation between the parties has since settled.

Schindler Elevator Corp. v. Otis Elevator Corp., 593 F.3d 1275 (Fed. Cir. 2010). Represented elevator company Schindler and obtained reversal of noninfringement ruling. On remand, obtained a jury verdict that Otis directly and indirectly infringed the patent and that the patent is valid. On second appeal, Federal Circuit invalidated the patent for obviousness. No. 2011-1615 (Fed. Cir. 2012).

Advanced Thermal Sciences Corp. v. Applied Materials, Inc., SACV 07-1384 JVS (C.D. Cal 2010). Represented BE Aerospace subsidiary ATS, and after a bench trial, won a ruling that AMI breached a joint development agreement by filing ten patent applications on temperature control systems for semiconductor fabrication equipment and that ATS was the sole inventor and owner of other patents. ATS was also awarded its attorney fees.

Applied Medical Resources Corp. v. United States Surgical Corp., 448 F.3d 1324, reh’g en banc denied, (Fed. Cir. 2006). Represented medical-device maker and patent owner and obtained reversal of noninfringement ruling. After remand, jury verdict of patent validity and no infringement. Affirmed on appeal.

Applied Medical Resources Corp. v. United States Surgical Corp., 353 F. Supp.2d 1075 (C.D. Cal. 2004), aff'd, 453 F.3d 1356 (Fed. Cir. 2006). In jury trial, represented medical-device maker in obtaining verdict of $43.5 million and a finding that Tyco-Unit U.S. Surgical had willfully infringed patent. The Court upheld the verdict, enhanced the damages, and entered a $64.5 million judgment. The appellate court affirmed the judgment in its entirety.

Mallinckrodt, Inc. v. Masimo Corp., 2004 U.S. Dist. LEXIS 28518 (C.D. Cal 2004), aff’din part andrev’din part, 2005 U.S. App. LEXIS 19427, 2005 WL 2139867, 147 Fed. Appx. 158, reh’g en banc denied, 2005 U.S. App. LEXIS 24108 (Fed. Cir. 2005), cert. dismissed, 546 U.S. 1162 (2006). In jury trial and on appeal, obtained $134.5 million verdict for owner of four patents on read-through-motion pulse oximeters. Jury found that Covidien-held Nellcor had willfully infringed the four patents, while also finding that client had not infringed a Tyco patent. Before trial, the court dismissed on summary judgment other Nellcor claims and defenses. 254 F. Supp.2d 1140 (Markman), 292 F. Supp.2d 1201, and 293 F. Supp.2d 1102 (C.D. Cal. 2003). The appellate court affirmed a $164.5 million judgment and ordered the entry of a permanent injunction. The case settled for $330 million and future royalties.

Gart v. Logitech, Inc., 254 F.3d 1334 (Fed. Cir. 2001), cert. denied, 122 S. Ct. 921 (2002). Represented plaintiff patent owner and obtained reversal of noninfringement ruling.  Ruling led to settlement.

Hunter Douglas, Inc. v. Harmonic Design, Inc., 153 F.3d 1318 (Fed. Cir. 1998), cert. denied, 525 U.S. 1143 (1999).  Argued appeal on various jurisdictional and preemption issues for electronic window-blind manufacturer.

Representative Matters for Accused Infringer/Defendant

Personalized Media Communications, LLC v. Amazon.com and Amazon Web Services, LLC, CA No. 13-cv-1608-RGA (D. Del. Aug. 10, 2015).  Represented Amazon and successfully persuaded the district court, on a motion for judgment on the pleadings, to invalidate all seven patents asserted by a non-practicing entity because all of the patents claimed ineligible subject matter.

Smith & Nephew Inc. v. Rea and Synthes, 721 F.3d 1371 (Fed. Cir. 2013); Dupuy Synthes Prods., LLC v. Smith & Nephew, Inc., Appeal No. 2014-1136 (Jan. 13, 2015). In two appeals before the Federal Circuit, Mr. Re represented Smith & Nephew, which was accused of infringing patents on orthopedic bone plates by subsidiaries of Johnson & Johnson. First, Mr. Re obtained a reversal of a Patent Office reexamination decision upholding the claims and the Federal Circuit held the claims were invalid for obviousness. In a second appeal, the Federal Circuit held that the Patent Office correctly held that the second patent was also invalid for obviousness. These appellate rulings rendered moot all pending litigation concerning these patents.

St. Jude Medical, Inc. v. Access Closure, Inc., 729 F.3d 1369 (Fed. Cir. 2013). On appeal, represented medical-device maker after it lost a trial and faced a pending injunction for infringing a patent on devices for sealing vascular punctures. Obtained a reversal and a Federal Circuit ruling that patent was not protected by safe-harbor provision and thus was invalid for double patenting.  Ruling led to $320 million sale of client to Cardinal Health in 2014.

Applied Medical Resources Corp. v. Tyco Healthcare Group LLP, No. 09-CV-176-KFG (E.D. Tex. Oct. 7, 2011). Represented medical-device maker accused of infringing five Tyco patents. After two jury trials on four patents, jury and court ruled that all four patents were invalid and not infringed. First jury found one unchallenged claim infringed and awarded $4.8 million.  Affirmed on appeal.

Kinetic Concepts, Inc. v. Smith & Nephew, Inc. SA-08-CV-102-RF (W.D. Tex. 2010), rev’d, 688 F.3d 1342 (Fed. Cir. 2012). Represented Smith & Nephew at jury trial and obtained judgment that KCI patents on negative pressure wound therapy were invalid for obviousness. While on appeal, patent holder terminated license with KCI. The Federal Circuit reversed the district court and while on rehearing over right to trial by jury on obviousness, patent holder licensed Smith & Nephew to settle case.

Typhoon Touch Technologies, Inc. v. Dell, Inc., 659 F.3d 1376 (Fed Cir. 2011). Represented numerous manufacturers of portable computers with touch screens and obtained affirmance of judgment of no patent infringement.

Kinetic Concepts, Inc. v. Blue Sky Medical Group, 554 F.3d 1010, reh’g en banc denied, (Fed. Cir. 2009). On appeal, obtained affirmance of jury verdict that gauze-based system for negative pressure wound therapy does not infringe patents.

Heuft Systemtechnik GmbH v. Industrial Dynamics Co., 2008 U.S. App. LEXIS 13486, 2008 WL 2518562 (Fed. Cir. 2008). In jury trial and appeal, represented manufacturer of bottle-inspection equipment accused of patent infringement. After jury trial and verdict of infringement, successfully defeated claims for damages and injunction, and after appeal, defeated all claims of infringement as well.

Koepnick Medical & Educ. Research Found., L.L.C. v. Alcon Labs., Inc. et al., 347 F. Supp. 2d 731 (D. Ariz. 2004), aff'd, 2005 U.S. App. LEXIS 28880, 2005 WL 3543012, reh’g denied (Fed. Cir. 2005). Representing Bausch & Lomb, Inc. at the district court and on appeal, obtained favorable claim construction and judgment of no infringement against patent owner alleging that LASIK eye surgery infringed patent.

Princeton Biochemicals, Inc. v. Beckman Coulter, Inc., 411 F.3d 1332 (Fed. Cir. 2005), aff’g 2004 WL 1398227 (D.N.J. 2004). In jury trial and on appeal, represented laboratory-instrument maker, Beckman Coulter, accused of patent infringement. After verdict, obtained ruling that Beckman had not infringed and that the patent was invalid for obviousness and because Beckman was the first inventor. The appellate court affirmed the invalidity ruling.

Hewlett-Packard Co. v. Mustek Systems, Inc., 99 CV 0351 (S.D. Cal.), aff’d in part andrev’din part, 340 F.3d 1314, reh’g denied (Fed. Cir. 2003). In jury trial and on appeal, successfully represented manufacturer of digital scanners accused of infringing several Hewlett-Packard patents. Client found not liable because the asserted patents were either invalid or not infringed.

Practice Management Information Corp. v. American Medical Ass’n, 121 F.3d 516, amended, 133 F.3d 1140 (9th Cir. 1997), cert. denied, 524 U.S. 923 & 525 U.S. 810, reh’g denied, 525 U.S. 923 (1998). Represented defendant, a medical-books publisher, and established misuse of AMA copyright.

Lockwood v. American Airlines, Inc., 50 F.3d 966 (Fed. Cir.), cert. granted, 515 U.S. 1121, vacating right to jury trial, 515 U.S. 1182 (1995), on remand, 107 F.3d 1565 (1997), aff’g 834 F. Supp. 1246 and 847 F. Supp. 777 (S.D. Cal.). Represented American Airlines and established that three asserted patents were invalid and not infringed.  Also, obtained writ of certiorari on right to trial by jury in cases challenging a patent’s validity, causing withdrawal of jury demand, and vacatur of Federal Circuit ruling finding such a right.

Other Noteworthy Cases

Ruhe v. Masimo Corp., 14 F.Supp.3d 1342 (C.D. Cal., April 3, 2014). Representing Masimo, persuaded a district court to vacate an arbitration award in a constructive wrongful termination action because of the arbitrator’s “evident partiality.” The award included over $5,000,000 in punitive damages. The district court held that the arbitrator should have disclosed that his brother had represented Masimo’s main competitor in antitrust and patent suits in which Masimo was awarded hundreds of millions of dollars. On appeal before the U.S. Court of Appeals for the Ninth Circuit.

Superior Court for the State of California v. ISD Corp., AAA arbitration (2014).  Representing software vendor at trial and defeated claim brought by the state courts of California that they could terminate client’s supply of case management software despite various termination provisions.  Pending client’s claim for attorney fees as prevailing party.    

United States ex rel. Ruhe v. Masimo Corp., 977 F.Supp. 2d 981 (C.D. Cal. 2013).  Representing Masimo, obtained summary judgment against a group of former employees who alleged that Masimo caused false claims to the government in connection with its devices which noninvasively measure a patient’s hemoglobin.  The district court rejected relators claims that the devices, known as Pronto, were worthless and thus any governmental payment for reimbursement was a false claim.   On appeal before the U.S. Court of Appeals for the Ninth Circuit. 

Yorkey v. Diab, 601 F.3d 1279 and 605 F.3d 1297 (Fed. Cir. 2010) and Appeal No. 2011-1360 (Fed. Cir. 2012). In three appeals from two patent interferences against Covidien subsidiary Nellcor, represented medical-device maker Masimo and established that it was the first inventor of various algorithms for pulse oximeters to measure through motion. 

Articles

"Litigating for the Greater Good: Knobbe Martens Lawyer Scores Big Wins,"Of Counsel (March 2015)

"Why We Need Our Patent System: Masimo, OC’s Shining Example,"Orange County Business Journal (November 2014)

"Litigator of the Week: Joseph Re of Knobbe Martens," The American Lawyer Litigation Daily (October 2014)

"Knobbe wins $466.7M for medical tech company," quoted in the Daily Journal (October 2014)

Co-author, “Gunn v. Minton: The Supreme Court’s Correction of the Federal Circuit’s Overly Broad Assertion of Jurisdiction Over State-Law Claims,” 38 New Matter 5 (No. 1 Spring 2013)

Co-author, "The Pendulum Has Swung Too Far: Recent Misuse of the Entire Market Value Rule to Limit Reasonable-Royalty Patent Damages," 84 Pat. Trademark & Copyright J. (BNA) 195 (June 1, 2012)

Law360 Q&A with Knobbe Martens' Joseph Re, Portfolio Media, Inc. (June 2011)

“In Pfaff Case Court Clarifies On-Sale Bar," Nat’l L.J., Feb. 8, 1999 (I.P. Supp.) at 1.

“Litigating Under Both Markman Decisions,” 1997 Patent Litigation 283 (Prac. Law Inst.).

“It’s Elementary: In Warner-Jenkenson, the Supreme court Upholds One Doctrine and Bolsters Another,” L.A. Daily J., Apr. 4, 1997, at 7.

“On Vacatur: Litigant’s Ability to ‘Wipe Slate clean’ Is Impaired,” L.A. Daily J., Apr. 7, 1995, at 7.

“Vacating Patent Invalidity Judgments Upon an Appellate Determination of Noninfringement,” 72 J. Pat. & Tm. Off. Soc’y 780 (1991), cited by the Supreme Court of the United States in Cardinal Chem. Co. v. Morton Int’l, Inc. (1993).

“Using Rule 30(b)(6) for Corporate Depositions,” 3 Prac. Litigator 83 (No. 4) 1992).

“Parallel Prosecution: Effect of Patent Prosecution on Concurrent Litigation,” 73 J. Pat. & Tm. Off. Soc’y 965 (1991).

 “Federal Circuit Jurisdiction Over Appeals From District Court Patent Decisions,” 16 AIPLA Q.J., 169 (1988).

Books and Chapters

Brief Writing and Oral Argument (9th ed. Oceana Pubs. 2005), co-author.

Cases and Materials on Remedies (6th ed. Foundation Press 2005), junior editor.

Chapter 186, "Court of Appeals for the Federal Circuit" in 8 West's Federal Forms - National Courts (West Pub. 2002), co-author, with annual pocket part supplements which are up to date.

Chapter 5, “The Answer and Other Responsive Filings” in Patent Litigation Strategies Handbook (2nd ed. BNA Books 2006), co-author, with annual pocket part supplements which are up to date.

Speeches & Seminars

“Recent Supreme Court Patent Case Law Update,” presented at the Intellectual Property Owners Association (IPO) 42^nd Annual Meeting in Vancouver, British Columbia (September 8, 2014). 

“Litigating a Patent-Related Dispute in Court While the USPTO is Reexamining or Reviewing the Same Patent,” presented at the Annual Spring Meeting of the AIPLA in Philadelphia, Pennsylvania (May 15, 2014).

"From Patents to Porn: The #Blurred Lines Between Intellectual Property #Trolls and Legitimate Intellectual Property Enforcement," presented at Thomas Jefferson School of Law in San Diego, California (October 18, 2013).

“The Trial Lawyer’s Toolbox,” presented to the 37^th Annual Intellectual Property Institute, IP Law Section, State Bar of California in San Diego, California (November 9, 2012).

“Patent Prosecution Through The Eyes of a Patent Litigator,” presented to the Washington State Patent Law Association in Seattle, Washington (September 19, 2012).

“Strategies for Multi-Defendant Patent Cases,” presented at the 2012 AIPLA Electronic and Computer Patent Law Summit in San Diego, California (April 2, 2012).

“Reasonable Royalty Patent Infringement Damages After Lucent, ResQNet and Uniloc,” presented at the Annual USC IP Symposium in Beverly Hills, CA (March 15, 2012). 

“Disqualification of Law Firms In Patent Cases,” presented at the Annual Meeting of the AIPLA in Washington D.C. (October 21, 2011).

“Patent Prosecution Through The Eyes of a Patent Litigator,” presented to the 35^th Annual  Intellectual Property Institute, IP Law Section, State Bar of California in Napa, California (October 29, 2010).

“Erase the Mystery–Insight in Conducting Voir Dire,” presented to the ABTL 37^th Annual Seminar in Kona, Hawaii (October 21, 2010).

Advocating Patent Cases With Emotion, presented at the Annual Spring Meeting of the AIPLA in New York, New York, (May 7, 2010). 

“In Defense of Proving Patent Invalidity by Clear and Convincing Evidence,” presented at the Annual Spring Meeting of the AIPLA in Houston, Texas (May 15, 2008).

Representative Patent Matters

Silver State Intellectual Technologies, Inc. v Apple Inc., Civil Action No. 13 CV 0957 (D. Nev.).  Represented plaintiff asserting patents in the field of graphical user interface design for communications and navigation functions found in smartphones and tablets.  Case settled successfully without litigation.

Oasis Research, LLC v. Pro Softnet Corp.,et al., Civil Action No. 4:10 CV 435 (E.D. Tex.).  Represented defendant accused of infringing patents in the field of remote data storage and computer backup, in the Sherman Division of the Eastern District of Texas.  Asserted patents ultimately held invalid by a Texas jury for failure to name co-inventors.

The Laryngeal Mask Company Ltd., et al. v. Ambu A/S, et al., Civil Action No. 07 CV 1988 (S.D. Cal). Represented plaintiff asserting patent in field of laryngeal mask airway devices, a medical device used to administer anesthesia gases and establish an airway in unconscious patients. Obtained disqualification of initial defense counsel. Case settled successfully after appeal to the Federal Circuit. Published decisions at 2008 U.S. Dist. Lexis 15320 (S.D. Cal 2008); 618 F.3d 1367 (Fed. Cir. 2010).

Golden Hour Data Systems, Inc. v. emsCharts, Inc., et al., Civil Action No. 06 CV 381 (E.D. Tex.). Obtained $3.5 million jury verdict on behalf of San Diego-based Golden Hour Data Systems in patent case involving computerized integrated data management services for the emergency medical services industry.  Brought case before Judge T. John Ward in the Eastern District of Texas.

American Calcar v. BMW of North America, Civil Action No. 04 CV 0614 (S.D. Cal.) Represented plaintiff asserting multiple patents in the areas of car/driver graphical user interfaces, telematics and navigation systems – defendant took a license under the asserted patents and the case settled before trial.

Raytheon v. Overland Storage, et al., Civil Action No. 03 CV 013 (E.D. Tex.).  Defended manufacturer of mass data storage products against patent infringement claim brought in the Eastern District of Texas (Judge T. John Ward).  After filing summary judgment motion, plaintiff offered full license at nominal cost and case settled.

Hewlett-Packard v. Mustek, Civil Action No. 99 CV 0351 (S.D. Cal.).  Represented defendant against five asserted HP patents in the field of image scanning — obtained complete defense victory after jury trial and appeal.  Published decision at 340 F.3d 1314 (Fed. Cir. 2003).

Flex Products v. Advantage Sealing Systems, Civil Action No. 00 CV 0231 (S.D. Cal.).  Represented plaintiff asserting patents in the field of rubberized asphalt compositions – obtained preliminary injunction that was affirmed on appeal – defendant took a license under the asserted patents.

Farnbach v. Hewlett-Packard, Civil Action No. 99 CV 0884 (S.D. Cal.).  Represented plaintiff inventor asserting patents covering oscilloscope trigger circuits – successfully settled case with defendant taking a license under the asserted patent.

Millennium v. Cardiff Software, Civil Action No. 99 CV 1577 (S.D.N.Y.).  Represented defendant software company against four asserted patents in the field of electronic forms and data entry systems – successfully settled case allowing defendant to continue selling accused products.

Representative Trademark Matters

Eagle Precision Technologies, Inc., et al., v. Eaton Leonard Robolix, Inc., Civil Action No. 03 CV 352 (S.D. Cal.).  Represented defendant in complex contractual trademark dispute over use of the “Eaton Leonard” name and trademark for computer controlled tube bending equipment.  Successfully defended client’s continued use of its name and trademark and favorably settled case.

Creative Labs v. Mad Dog Multimedia, Civil Action No. C02-04575 (N.D. Cal.).  Defended client against motion for temporary restraining order and product recall alleging trademark/trade dress infringement and false advertising in connection with computer sound cards.  Published decision at 66 U.S.P.Q.2d 1625.

Polaris Pool Systems v. Letro Products, Civil Action No. 94 CV 7747 (C.D. Cal.).  Represented plaintiff in jury trial asserting registered trade dress of automatic swimming pool cleaners – obtained infringement verdict against defendant and permanent injunction.

Helix Technology v. Overland Data, Civil Action No. 98 CV 11292 (D. Mass.).  Represented defendant in trademark case involving technical service programs – obtained partial summary judgment against plaintiff – settlement allowed client to continue use of mark.

Yoder Brothers v. GroLink Plant, Civil Action No. 01 CV 2308 (N.D. Ohio).  Represented trademark owner in declaratory judgment action involving asexually reproduced plants – infringer agreed to stop using client’s mark and case settled.

Articles

“New Eastern District of Texas Procedures Aim to Curb Nuisance Value Lawsuits," published in SideBAR quarterly newsletter of the Federal Litigation Section of the Federal Bar Association, Summer 2011 (with Nick Transier).

“Licensing After MedImmune v. Genentech,” presented to the San Diego Chapter of the Licensing Executives Society, Summer 2007.

“Southern District Rolls Out New Patent Local Rules,” published in the Association of Business Trial Lawyers – San Diego (ABTL) Report, Fall 2006 (with Joe Reisman).

Speeches & Seminars

"The Future of Patent Law Remedies," co-panelist at the Third Annual USD Patent Law Conference, January 2013.

“Enablement Requirements for Computer-Based Systems,” presented to the San Diego Intellectual Property Association, Fall 2005.

“Practical Tips on Enforcing and Defending Patents: Pre-Litigation Matters,” presented at the Intellectual Property Law Annual Summer Conference of the ABA, June 2003.

“Motion Practice in Patent Cases,” presented to the Intellectual Property Law Section of the San Diego County Bar Association, November 2000.

Representative Litigation Matters
Articles
Speeches

Representative Litigation Matters

Ms. Zadra-Symes acted for parties involved in the following cases, amongst others:

Monster Energy Co. v. Monster Escorts LLC (M.D. Ga. 2015). Represented Monster Energy Company in trademark and copyright infringement action against vehicle escort company. Obtained consent judgment of infringement and permanent injunction.

Lizalde, et al. v. Advanced Planning Services, Inc., First Allied Securities, Inc., et al., (2013). Represented one of defendants in copyright infringement action filed in the US District Court for the Southern District of California. Obtained favorable settlement for client.

Andrew Zuckerman v. Lenny USA et al., 2:12-cv-03249, C.D.Cal. (2013). Represented defendant in copyright infringement case filed in US District Court for Central District of California. Obtained favorable settlement for defendant.

Sweet People (dba Miss Me) v. ITC Girl Inc. (2013). Represented defendant in copyright and trademark infringement action filed in US District Court for the Central District of California. Obtained favorable settlement for client.

James R. Glidewell Dental Ceramics, Inc., Dba Glidewell Laboratories V. Keating Dental Arts, Inc., WL 655314 (CD Cal. 2013). Represented defendant Keating Dental Arts Inc. in a trademark dispute brought by Glidewell Laboratories. Glidewell claimed that Keating Dental’s trademark KDZ BRUXER for dental crowns infringed Glidewell’s registered trademark BRUXZIR for dental crowns. The court held that “bruxing” is a common dental term, that Glidewell’s BRUXZIR mark is a weak mark, and that there was no likelihood of confusion between Keating's KDZ BRUXER trademark and Glidewell’s BRUXZIR trademark.

Monster Energy Company v. HRHH Hotel/Casino, LLCet al., 2014 WL 293773 (CD Cal. 2013). Represented Monster Energy in an arbitration against HHHH Hotel/Casino. Monster Energy prevailed on its claims for breach of contract and obtained all of its requested declaratory relief, including a declaration that Monster Energy acquired by assignment and is the owner of all rights in the mark REHAB worldwide for all beverages, and that Hard Rock is precluded from using the REHAB trademark for beverages. Monster Energy also prevailed on its claim for damages and attorneys’ fees and costs.

Sweet People Apparel Inc., dba Miss Me, and RCRV, Inc. dba Rock Revival v. Machine Jeans Inc. and The Wet Seal Inc. (2012). Represented defendants in copyright action filed in US District Court for Central District of California. Obtained favorable settlement for client.

PBEV, LLC v. Hansen Beverage Company d/b/a Monster Beverage Company, Case No. 7:10-cv-3526 (N.D. Ala. 2011). Represented energy drink manufacturer in trademark litigation. Case settled favorably for client.

Hansen Beverage Company v. Cytosport Inc., 2009 U.S. Dist. LEXIS (C.D. Cal.). Represented Plaintiff in obtaining preliminary injunction involving MONSTER ENERGY trademark.

Deckers Outdoor Corporation vs. Bon-Ton Stores, Inc., 2:08-cv-08074-ODW-VBK (C.D. Cal. 2009). Represented Defendant Bon-Ton Stores, Inc. in design patent infringement litigation involving boot designs. Obtained transfer of litigation to client's preferred venue and ultimately favorable settlement for client.

Deckers Outdoor Corporation vs. Aldo U.S. Inc., et al., 2:08-cv-07289-R-FFM (C.D. Cal. 2009). Represented Defendants Bon-Ton Stores, Inc. and Alloy Media, LLC in design patent infringement litigation involving boot designs. Case settled favorably for clients. 

Robert, Jr., Inc. v. Run Athletics International, LLC, 09-cv-1180 R (JCx) Central District of CA (C.D. Cal. 2009). Represented defendant in patent infringement litigation involving shoe design. Case settled favorably for defendant.

Amirsys, Inc. v. Structurad, LLC et al., 2:07-CV-573-DB (D. Utah 2007). Represented plaintiff in copyright infringement suit involving subscription website relating to radiology content, resulting in mediated settlement.

Parallax Group International, LLC v. BJ's Wholesale Club, Inc.,and, Venture Products, LLC, 07cv4211 SJO (Ex) (C.D. Cal. 2007). Represented defendant in design patent infringement litigation involving children's playmats. Case settled favorably for clients. 

Robert Hidey Architects, Inc. v. Richard John Cardoza and Ritner Group, Inc., SACV 8:07-00292-JVS (ANx) (C.D. Cal. 2007 ). Represented defendant in copyright infringement case involving architectural drawings; case resolved through mediated settlement.

Winn, Inc. v. Compgrip USA Corp., 2007 WL 1417633 (C.D. Cal.) Represented Plaintiff in obtaining summary judgment of patent infringement.

Automobile Club of Southern California v. The Auto Club, Ltd., 2007 U.S. Dist. LEXIS 19221 (represented plaintiff in defeating summary judgment motion claiming trademark invalidity and non-infringement); See also 2007 U.S. Dist. LEXIS 19230 (represented plaintiff in obtaining summary judgment that defendants were unfairly competing by operating as a motor club in California without a license from the Department of Insurance).

Express, LLC v. Fetish Group, Inc., 424 F. Supp. 2d 1211, (C.D. Cal. 2006) (obtained summary judgment of copyright infringement in defendant’s lace and embroidery design on clothing); See also 464 F. Supp 2d 965 (obtained summary judgment dismissing plaintiff’s fraud and unfair competition claims).

Broadcom Corp. v. BroadVoice, Inc., SACV05-431 DOC (2005) (represented plaintiff in trademark infringement suit and later obtained settlement through mediation).

Mattel, Inc. v. Simba Toys GmbH & Co. KG et al., (CV-03-9388 MMM) (2003): represented defendant in copyright and trade dress infringement suit resulting in mediated settlement.

Winn Inc. v. Eaton Corporation, 272 F. Supp. 2d 968 (C.D. Cal. 2003) (represented Plaintiff in successfully defeating defendant's motion for summary judgment of non-infringement and invalidity of Plaintiff's patents relating to golf club grips).

Ford Motor Co., Carroll Shelby et al. v. Superformance International Replicars, Inc., 251 F. Supp. 2d 983, (D. Mass. 2002) (represented defendant in obtaining summary judgment dismissing Carroll Shelby’s claims to trade dress rights in shape of Cobra vehicle).

Ford Motor Co. v. Ultra Coachbuilders Inc., 57 U.S.P.Q. 2d 1356 (C.D. Cal. 2000) (represented defendant in defeating Ford Motor Co.’s motion for preliminary injunction against limousine manufacturer’s retention of Ford emblems on converted automobiles; denial of injunction upheld on appeal by 9th Circuit).

Modtech, Inc. v. Designed Facilities Construction, Inc., 48 U.S.P.Q. 2d 1208 (C.D. Cal. 1998) and 51 U.S.P.Q.2d 1206 (C.D. Cal. 1999) (represented plaintiff in obtaining preliminary injunction enforcing copyrights in architectural drawings; obtained contempt order following defendant’s violation of injunction).

Terri Lee Associates et al. v. Doll City, USA, SACV-97-6 (AHS) (C.D. Cal. 1998), represented plaintiff in trademark and rights of publicity case involving collectible dolls; case resolved through mediated settlement after issuance of preliminary injunction in plaintiff's favor.

Beam System, Inc. v. Checkpoint Systems, Inc. et al., 42 U.S.P.Q. 2d 1461 (C.D. Cal. 1997) (represented one of defendants in obtaining dismissal of copyright infringement claims involving computer software).

Asia Entertainment Inc. v. Nguyen, 40 U.S.P.Q.2d 1183 (C.D. Cal. 1996) (obtained summary judgment of copyright infringement in favor of plaintiff involving music and sound recording copyrights; after subsequent trial, attorney fees awarded in favor of client, Asia Entertainment).

Dogloo, Inc. v. Doskocil Mfg. Co., Inc., 893 F. Supp. 911 (C.D. Cal. 1995) (represented plaintiff in obtaining preliminary injunction enforcing trade dress rights in shape of dog kennel).

Essie Cosmetics, Inc. v. Dae Do International, Ltd. et al., 808 F. Supp. 952 (E.D.N.Y. 1992) (represented plaintiff in obtaining preliminary injunction enforcing trade dress rights in shape of nail polish bottle).

Articles

Contributing author, United States Chapter, Trade Secret Protection: A Global Guide, published by Global Law and Business (January 2016)

Co-author, Getting the Deal Through: Trademarks 2016, published by Law Business Research Ltd. (September 2015)

Co-author, Kluwers Advertising Treatise - United States Chapter, Wolters Kluwer Law & Business (September 2015)

Contributing author, Licenses and Insolvency, A Practical Guide to the Effects of Insolvency on IP License Agreements, published by International Bar Association (October 2014)

Co-author, Supreme Court Decision POM Wonderful LLC v. Coca-Cola Co: What You Need to Know, Knobbe Martens Firm Alert (June 2014)

Contributing thoughts in "Legal Perspective on Negative Online Reviews: What Both Sides Should Consider Before Jumping Into the Fray," JD Supra Perspectives (February 2014)

Contributing author, Trademark Surveys, Volume 1, Designing, Implementing and Evaluating Surveys, published by ABA Section of Intellectual Property Law (2013) 

Law360 Q&A with Knobbe's Lynda Zadra-Symes, Law360 (June 2013)

Author, The Current State of Copyright Exhaustion in the U.S., Presented at the AIPLA 2013 Spring Meeting (May 2013)

Author, Anti-counterfeiting strategies in the United States, North American Regional Forum News (Newsletter of the International Bar Association Legal Practice Division) (April 2013)

Contributing author, "International Design Protection", Globe Law and Business (May 2012)

Author, Avoiding IP Troubles Online, The Patriot (February 2012)

Author, The potential pitfalls of comparative advertising, World Trademark Review (2010)

Author, Controlling Counterfeit Trade in Tangible Products Over the Internet (2006)

Author, Sounds, Smells, Shapes and Colors: Protection and Enforcement of Nontraditional Trademarks in the U.S. (2005)

Speeches

"The Social Network: Current Legal Issues in Social Media," Association of Corporate Counsel (ACC) - Southern California DoubleHeader (November 2015)

"The Legalities of Fashion - Intellectual Property Workshop," Fashion Week San Diego (September 2013)

"Understanding Trade Secrets and Trade Secret Misappropriation," IP Impact San Diego - Trademark Seminar (July 2013)

"What You Need to Know About Copyright Exhaustion Without Getting Exhausted," AIPLA 2013 Spring Meeting (May 2013)

"You've Just Been Sued - What to do in the First 30 Days," Association of Corporate Counsel (ACC) - Southern California DoubleHeader (April 2013)

"Avoiding Trade Secret Misappropriation, False Advertising & Unfair Competition Claims," Association of Corporate Counsel (ACC) - Southern California In-House Counsel Conference (January 2013)

"Hiring Competitor’s Top Talent & Being Fiercely Competitive Without Exposing Your Company," Association of Corporate Counsel (ACC) - Southern California In-House Counsel Conference (January 2013)

"Winning at the Outset: Improving Chances of Success on a Preliminary Injunction Motion," AIPLA (October 2010)

"Controlling Counterfeit Trade in Tangible Products Over the Internet," Worldwide Piracy Prevention Conference (2006)

Representative Matters

Nutrishop, Inc.
Catherine Holland is the lead IP counsel for Nutrishop, Inc., one of the fastest growing chains of retail nutrition stores in the United States. In 2015 the company will have grown to approximately 300 locations in 36 states. Ms. Holland has directed all of the company’s intellectual property efforts, including its extensive licensing program and brand enforcement efforts.

MonkeySports, Inc.
Catherine Holland is the lead IP counsel for MonkeySports, Inc., a sports retailer who has experienced explosive growth through on-line sales in the United States and around the world.  Ms. Holland has directed the company’s brand enforcement efforts on the internet and in social media around the globe. She has also assisted in the launch of the company’s brand into clothing and nutritional supplements.

Impact Beverage, Inc.
Catherine Holland is the lead IP counsel for Impact Beverage, Inc., a dynamic new company which has brought a new sports beverage to the market across the United States. Ms. Holland has directed the company’s brand enforcement efforts on the internet and in social media around the globe. She has also assisted in the launch of the company’s brand into clothing and nutritional supplements.

Speaking

Ms. Holland has spoken extensively in the field of trademark and copyright law, including seminars sponsored by INTA, OCTANe Venture Capital, the Society of Cosmetic Chemists, law firms in Germany and England, the Orange County Patent Law Association, the Orange County and Los Angeles Bar Associations, the Orange County Business Journal, the San Diego Business Journal, and the Advertising Production Association of Orange County.  She has been a guest on the radio program “Southern California Business Focus” where she discussed basic copyright issues.

Ms. Holland has taught several courses in, and served as an adjunct professor of, intellectual property at several institutions, including: USC Business School for foreign corporations wanting to do business in the U.S.; USC Law School; UC Irvine; UC Riverside; Chapman University; and OC Community College.

Publications

"To Tweet or Not to Tweet: Social Media and Intellectual Property Issues,"Orange County Business Journal, October 2015

"Getting the Deal Through: Trademarks 2016," Law Business Research Ltd., September 2015

Quoted in "Condoms may be key to ‘.sucks’ trademark success, lawyers claim," World Intellectual Property Review (WIPR), July 2015

"Managing Intellectual Property Assets,” California Business Law Practitioner, Fall 2014

"Clearing marks in the U.S.: What European practitioners need to know,” 9th Annual Taylor Wessing Brands Forum, London, England, March 2013

“More Than a Brand Name – Monetizing the Unique Aspects of Your Company and Your Products to Increase your Bottom Line,”  Orange County Business Journal,  November 2012

Contributing thoughts to "The Avengers face a new adversary: trademark professionals", a blog post on World Trademark Review, September 2012

"Domain Name Mania - Managing the Mayhem" Orange County Lawyer Magazine, July 2009

“Managing Intellectual Property Assets,” Chapter 1 in the multi-volume treatise Intellectual Property in Business Transactions published by the California Continuing Education of the Bar, 2008 - 2014

Legal Guide to Intellectual Property, a book published by Entrepreneur Press, 2007

“What Is A Copyright” Orange County Business Journal

Representative Matters
Articles
Speeches & Seminars

Representative Matters

JS Products v. Kabo Tool (Fed. Cir.) Invalidated patent on summary judgment for DJ plaintiff by demonstrating that micron level dimensional differences in accused tools retailed at Lowe’s were also inherently present in prior art. Argued successfully to obtain affirmance on appeal.

Kreative Power v. Monoprice, Inc.  (N.D. Cal)  Defended on-line retailer of consumer electronics against claims of infringing utility patent, design patent, and copyright relating to a pyramid-shaped power outlet/surge protector. Obtained summary judgment of invalidity and no infringement within 6 months after complaint was filed, with no need for depositions or claim construction hearing.

Inogen v. Inova  (Fed. Cir.)  Obtained affirmance of PTAB decision in favor of patentability for manufacturer of portable oxygen concentrators used for respiratory therapy.

Bierman v. Toshiba (Cal. Sup. Ct., Marin County)  Obtained summary judgment for accused defendant based on statute of limitations in case alleging trade secret misappropriation and breach of NDA, stemming from alleged confidential disclosure of software used to protect computers in the event of power loss.

John Deks Australia Pty, Ltd. v. Atlas Bolt and Screw Company (N.D. Ohio). Represented defendant in a patent and copyright infringement suit involving construction products in a five-week jury trial. Obtained directed verdict and attorney fee award on the copyright claim, and favorable judgment on the patent claim, which was upheld on appeal to the Court of Appeals for the Federal Circuit, 14 U.S.P.Q. 2d 1077 (Unpublished).

Archive Corp. v. Cipher Data Products, Inc., 12 U.S.P.Q.2d 1464 (C.D. Cal.). Represented accused infringer of patent on a computer tape drive. Successfully opposed two motions for preliminary injunction, even though the patent had been found valid and infringed in prior litigation with a third party. Obtained stay of proceedings to permit hostile takeover of patent owner, which ultimately resolved the lawsuit.

Stillwell Developments, Inc., Sleepsafe Industries, Inc. v. Chen et al., 11 U.S.P.Q.2d 1328 (C.D. Cal.). Defended claims of trade secret misappropriation relating to a portable fire alarm, and related claims of unfair competition, breach of contract and commercial fraud. Brought successful directed verdict motion, which lead to attorneys fees award for successful defense of trade secret claim.

Atari Games Corp. v. Nintendo of America, Inc., (N.D. Cal.). Represented video game manufacturer accused of infringing patents and copyrights in hardware and software used to lock out unlicensed video games. Conducted extensive discovery in Japan. Obtained voluntary dismissal of one patent infringement claim, and participated in three-week jury trial on remaining patent. 

Applied Materials, Inc. v. Advanced Semiconductor Materials of America, Inc. (N.D. Cal.). Represented defendant in post-trial proceedings in patent infringement case relating to semiconductor wafer processing equipment. Successfully obtained a stay of permanent injunction pending appeal with favorable security terms, which were upheld on appeal to Federal Circuit.

The Beam System, Inc. v. Checkpoint Systems, Inc., 42 U.S.P.Q. 2d 1461 (C.D. Cal.). Represented defendant in computer software copyright infringement lawsuit. Obtained a protective order from the court to maintain the confidentiality of client's code. Ultimately, obtained a dismissal of the entire action based upon plaintiff's violation of that court order.

Cook v. Makita USA, Inc., (Cal. Sup. Ct., Riverside). Defended against claims of trade secret misappropriation related to power tool design. Negotiated settlement shortly before trial in which plaintiff dismissed all claims without any compensation from defendant.

Cabinet Vision v. Cabnetware, (S.D. Cal.), aff’d, 2000 U.S. App. LEXIS 2030 (unpublished). Represented defendant in post-trial proceedings patent infringement action relating to computer-aided design software. Initially obtained injunction against patent owner making misrepresentations to potential customers regarding anticipated outcome of lawsuit. Later successfully obtained judgment as a matter of law overturning unfavorable jury verdicts on invalidity.

Yamaha Motor Company, Ltd. Represented personal watercraft manufacturer in a series of patent enforcement actions in both District Court and the United States International Trade Commission relating to a portfolio of dozens of patents. The actions against major competitors were each resolved by license agreement resulting in significant royalties to the client.

Gart v. Logitech, Inc., CV 98-05957 CBM (Mcx) (C.D. Cal.) Represented plaintiff in a patent infringement suit relating to the ergonomic design of computer mice. After a successful appeal regarding claim construction issues, obtained a favorable settlement of the case. Continued enforcement efforts have resulted in several other licenses with mouse manufacturers. Published opinions: 254 F.3d 1334 (Fed. Cir. 2001); 67 USPQ2d 1263 (C.D. Cal. 2003).

Zimmer Inc. v. Nobel Biocare, USA, Inc. Defended dental implant manufacturer in an arbitrated patent infringement dispute. Conducted arbitration through final hearing, obtaining a judgment of no infringement in connection with a patent that six major competitors had previously licensed and paid millions of dollars in royalty payments. Obtained attorney fee award in excess of $2 million.

Nazomi v. HTC (N.D. Cal) Defended mobile phone handset manufacturer in multi-defendant action against two patents relating to Java processing technology, obtained summary judgment of non-infringement on both patents.

University of North Dakota v. James Hardie (D. N.D.) Represented construction products manufacturer in contract dispute regarding ownership of technology relating to fillers used in reinforced concrete products. Obtained preliminary injunction against University filing patents on the technology, and summary judgment that key technology rights were not owned by the University.

Nobel Biocare USA v. Technique D’Usage Sinlab (ED Va) Brought declaratory judgment action against patentee on patents relating to computerized dental surgical planning and CAD/CAM techniques for custom dental prosthetics. Obtained summary judgment of no infringement on all four patents.

Nobel Biocare USA v. Materialise (C.D. Cal) Brought declaratory judgment action against patentee on patent relating to CAD/CAM techniques for designing and rapid prototyping custom surgical templates. Obtained summary judgment of no infringement.

Dr. Paula Small v. Nobel Biocare USA (SDNY) Defended dental implant manufacturer against patentee on two patents relating to dental implant design. Although patents survived re-exam and re-issue, obtained summary judgment of invalidity due to on-sale bar, lack of written description requirement, and re-issue recapture.

Kruse Technology Partnership v. Caterpillar (C.D. Cal) Represented inventor of patent portfolio relating to computerized fuel injection controls to improve fuel efficiency and reduce emissions. Obtained favorable claim construction after 4 day evidentiary hearing, leading to settlement with Caterpillar. Enforced patents against GM, Isuzu, and other major diesel engine manufacturers, including Cummins.

Intamin Ltd. v. Magnetar (Fed. Cir.) Represented accused patent infringer against world’s largest amusement park ride manufacturer regarding patent on eddy-current magnetic braking system. On second appeal, affirmed favorable judgment that patent was unenforceable due to unclean hands. Also obtained attorney fee award.

Acuff v.Custom Control Sensors (AAA arbitration) Represented licensee and manufacturer of aerospace pressure sensing switches in royalty dispute on technology and patent license agreement. Licensor alleged that $11M in back royalties were owed. Obtained award that licensee owed no further royalties and instead was itself owed $7M in overpaid royalties. 

Hansen Beverage Co. v. National Beverage Co. (9^th Cir) In trademark infringement suit, obtained preliminary injunction against competitor of Monster Energy brand energy drink, and successfully enforced settlement agreement on appeal to 9^th Circuit.

Hansen Beverage Co. v. Cytosport (C.D. Cal) In trademark infringement suit, obtained preliminary injunction against competitor of Monster Energy brand energy drink, leading to settlement on eve of trial.

Monster Energy Co. v. HRHH Hotel Casino (JAMS arbitration) Successfully enforced trademark assignment agreement from Hard Rock Hotel relating to REHAB brand, and obtained attorney fee award.

Victoria’s Secret v. Urban Decay (S.D. Ohio) Represented cosmetics company owning trademark rights in NAKED brand against Victoria’s Secret, leading to favorable settlement and Victoria’s Secret discontinuing use of NAKED on cosmetic.

Articles

“Direct Molding Statutes: Potent Weapons, But Are They Constitutional?” Journal of the Patent & Trademark Office Society, Vol. 71, No. 1, 1989.

“Copyright Law, The U.S. Joins The Berne Convention,” Orange County Lawyer, December 1989.

“Legal Protection For Works Of Art,” Orange County Lawyer, March, 1991.

“Building A Winning Paper Trail For Intellectual Property Litigation,” Orange County Business Journal, September, 1991.

“What The Japanese Businessman Should Know About U.S. Copyright Law,” Kaigai Chuzai, May 1992.

“Growing Software Intensive Companies,” ABL Key Observer Report, May 1992.

“A Primer on Patents,” Orange County Business Journal, September 1993.

“The Pitfalls Of Providing Intent-to-Use Trademark Applications As Loan Security,” Los Angeles Daily Journal, February 7, 1997; Orange County Reporter, February 10, 1997.

“Recent Developments In Intellectual Property Law,” 1996 Annual Review of the Business Law Section of the State Bar of California, 1997.

“Swap Talk: Retail-Space Operators and Internet Providers May Be Secondarily Liable for Infringement,” Los Angeles Daily Journal, September 5, 1997.

“Secondary Liability for Copyright and Trademark Infringement: Where Cyberspace and Retail Space Meet,” Orange County Lawyer, March 1998.

“Litigating Obviousness: A New Approach for Using Expert Witnesses,” Journal of the Patent and Trademark Office Society, Vol. 81, No. 3, March 1999.

“Ch. 11 – Pretrial Proceedings,” co-author with Don W. Martens, Patent Litigation, Edited by Laurence H. Pretty, PLI Press, 2000.

“Pre-Litigation Patent Enforcement,” Thomson-Reuters, co-author with Don Martens, 2008-2013.

Speeches & Seminars

"IP Year in Review," CLE Wrap-Up: Substance Abuse, Elimination of Bias & the IP Year in Review, Knobbe Martens Hosted CLE Seminar (January 7, 2016)

"The Practitioner’s Perspective: The Effect of Patent Non-Practicing Entities on Industry," Trolls or Toll-Takers: Do Intellectual Property Non-Practicing Entities Add Value to Society? 2015 Chapman Law Review Symposium, Orange, CA (January 30, 2015)

Program Chair, The Third Annual Technology Seminar – Program Chair for Using Technology in Trials Today: What is a Must and What is a Bust, The Orange County Bar Association Masers Division, Irvine, CA (November 18, 2014)

"Woke Up This Morning – My Patent’s Gone: Recent Pro-Accused Infringer Trends in Patent Law," 2014 ACC-SoCal Double Header, Anaheim, CA (August 28, 2014)

“Best Practices and Trends in U.S. Patent Litigation and Prosecution,” US Litigation and Patent Prosecution Seminar, Osaka, Japan (July 11, 2014)

“Best Practices and Trends in U.S. Patent Prosecution,” US Patent Prosecution Seminar, Tokyo, Japan (July 8, 2014)

“Trends in U.S. Patent Litigation: Pro-Accused Infringer,” US Litigation Seminar, Tokyo, Japan (July 7, 2014).

Chapman University School of Law, Adjunct Professor 2013-2014, “Patent Litigation”

ACC-SoCal Double Header, “What to do in the First 30 Days of an IP Suit” (April 2013)

JAMS “Recent Trends in Intellectual Property Litigation”, roundtable participant (July 2006)

“Rule 11 in Patent Cases,” Intellectual Property/Technology Law Section Meeting, Orange County Bar Association (March 2006)

Los Angeles Intellectual Property Lawyers Association, Annual Seminar, “One Year Down the Road: Claim Construction Post-Phillips” (May 2006)

USC Gould School of Law, 2005 Intellectual Property Institute, “You’ve Been Sued for Patent Infringement – Now What?” (May 2005)

“ADR in Intellectual Property Cases,” Orange County Patent Law Association (March 2005)

Intellectual Property Owners Association (I.P.O.), “Drafting ADR Clauses – Lessons From the Battlefield,” Washington D.C. (November 2004)

Chapman University School of Law 3rd Annual Preview of the Supreme Court: “An Update of Intellectual Property Law,” Phillips v. AWH Corp (October 2004)

“Timing Summary Judgment in Federal Court,” Orange County Barristers (September 2004)

“Fundamentals of Business Practices Litigation,” Continuing Education of the Bar (CEB), Costa Mesa, (September 2000)

Entrepreneurs Conference, Harvard Business School Association of Orange County, “Intellectual Property Protection for the Internet,” Irvine (May 2000)

William P. Gray Legion Lex Inn of Court, “Everything You Wanted to Know About Motion Practice,” Costa Mesa (May 2000)

Lead defense counsel in patent infringement case, Costa Mesa, Whittier College School of Law, Mock Trial presentation (February 2004, 2005, 2006)

Lead defense counsel in trade secrets case, Costa Mesa, Whittier College School of Law, Mock Trial presentation (February 2003)

Mr. Sganga has also lectured on Intellectual Property Law issues for Orange County Patent Law Association, Orange County Barristers, Orange County Barristers, SO/CAL/TEN (Southern California Technology Executives Network), Practicing Law Institute (PLI), and Continuing Education of the Bar (CEB).