Representative Matters for Plaintiffs/Patent Owners

AutoAlert v. Dominion Dealer Solutions; AutoAlert v. DealerSocket, 12-01661-JLS-JPRx, 13-00657 SJO-JPRx, (C.D. Cal. 2015).  Represented AutoAlert in two patent infringement lawsuits relating to lead generation software.  Prevailed on the claim construction disputes. Cases settled before trial.

Dominion Dealer Solutions v. AutoAlert; DealerSocket v. AutoAlert (PTAB 2013–2015).  Represented patent owner AutoAlert in fourteen IPR and CBM proceedings before the Patent Trial Appeal Board relating to lead generation software.  Achieved denials of six of the AIA challenges prior to institution.  The instituted proceedings settled prior to the oral hearings.

Beauty 21 Cosmetics, Inc. v. Glam Doll, Inc. et al., 14-882-JGB-DTBx (C.D. Cal. 2015).  Represented Beauty 21 in asserting trademark infringement, copyright infringement, and misappropriation of trade secrets relating to cosmetics products.  Successfully defeated motion for summary judgment prior to settlement before trial.

CEATS v. Orbitz, 14-cv-05202-RMD (N.D. Ill. 2015).  Represented CEATS in patent infringement lawsuit relating to seat selection software. Case settled before trial.

In re Dominion Dealer Solutions, 749 F.3d 1379 (Fed. Cir. 2014).  Represented Appellee AutoAlert in opposing a petition for writ of mandamus to the U.S. Patent and Trademark Office to vacate non-institution decisions and institute five inter partes review proceedings.  The Federal Circuit denied the petition.

iTEK Services v. Technical Services and Logistics, et al., 12-01592-CJC-RNBx (C.D. Cal. 2014).  Represented iTEK in asserting claims of trade secret misappropriation, copyright infringement, and trademark infringement. Case settled before trial.

Gunnar Optiks v. Allure Eyewear et al., 13-CV-1320-H-RBB (S.D. Cal. 2013). Represented Gunnar Optiks in patent infringement lawsuit relating to technology for computer eyewear.  Case settled before trial.

Kruse Technology Partnership v. Volkswagen, 2012-1352 (Fed. Cir. 2013).  Represented appellant in appeal of grant of summary judgment of noninfringement.

Kruse Technology Partnership v. Daimler, et al., 10-1066-JVS-RNBx (C.D. Cal. 2012).  Represented Kruse Technology Partnership in patent infringement lawsuit relating to fuel injection strategies for internal combustion engines. Claims against several defendants settled prior to trial.

IMRA America v. IPG Photonics, 06-15139-AJT-MKM (E.D. Mich. 2011).  Represented patent owner IMRA in patent infringement lawsuit relating to high power fiber lasers.  Obtained successful claim construction.

Kruse Technology Partnership v. General Motors, et al., 09-4970-JVS-RNBx (C.D. Cal. 2010).  Represented plaintiff in patent infringement lawsuit relating to fuel injection strategies for internal combustion engines.  Obtained favorable claim constructions.  Case settled before trial.

Wave Loch v. American Wave Machines, 08-cv-928-MMA-WMc (S.D. Cal. 2009).  Represented Wave Loch in patent infringement lawsuit relating to artificial wave technology.

Kruse Technology Partnership v. Caterpillar (C.D. Cal. 2008).  Represented plaintiff in patent infringement lawsuit relating to fuel injection strategies for internal combustion engines.  Defeated motion for summary judgment of noninfringement and invalidity.  Case settled before trial.

Optivus et al. v. Ion Beam Applications, 03-2052 SJO-VBKx (C.D. Cal. 2007).  Represented Loma Linda University Medical Center in patent infringement lawsuit relating to proton beam therapy systems. Case settled before trial.

Optivus et al. v. Ion Beam Applications, 469 F.3d 978 (Fed. Cir. 2006).  Represented appellant Loma Linda University Medical Center in appeal of grant of summary judgment of noninfringement. Affirmed-in-part.

Jonathan Manufacturing Corp. v. Central Industrial Supply Co., 04-1365-DOC-SHx (C.D. Cal. 2006).  Represented Jonathan Manufacturing in patent infringement lawsuit regarding computer server mounting technology.  Obtained preliminary injunction against defendant.

Transit Care vs. Dura Automotive (C.D. Cal. 2005). Represented Transit Care in patent infringement lawsuit relating to technology for recreational vehicles. Case settled before trial.

In re Certain Personal Watercraft and Components Thereof, Inv. No. 337-TA-452 (ITC 2002). Counsel for patentee in ITC investigation regarding technology for personal watercraft. Case settled after four-week trial.

Bassani Mfg. v. Brothers Performance Warehouse, Inc. dba BBK Performance, Inc. (C.D. Cal. 2001).  Represented Bassani Mfg. in trade dress infringement and unfair competition litigation.  Case settled before trial.

R&B Wire Products, Inc. v. Cheng Kuang Chen, et al. (S.D.N.Y. 2001).  Represented R&B Wire Products in trade dress infringement lawsuit involving imported goods.  Obtained TRO and seizure order.

Representative Matters for Defendants/Accused Infringers

The Ergo Baby Carrier v. Infantino, LLC, 2:15-cv-03229-AB-GJS (C.D. Cal. 2015). Defended Infantino against claims of patent infringement relating to child carriers.  Case settled before trial.

MEI 3D v. Gunnar Optiks, 13-0215-SI-KAW (N.D. Cal. 2013). Defended Gunnar Optiks in patent infringement lawsuit relating to technology for 3D imaging.  Case settled before trial.

Glidewell Labs. v. Keating Dental Arts, 11-1309-DOC-ANx (C.D. Cal. 2013). Defended Keating against claims of trademark infringement relating to tradenames for zirconium dental implants.  Successfully opposed motion for summary judgment of infringement and received case-dispositive grant of summary judgment of noninfringement.

Intamin Ltd. v. Magnetar Technologies, 2010-1003 (Fed. Cir. 2010). Represented Appellee Magnetar against appeal of summary judgment of non-infringement, invalidity, and no recovery due to plaintiff’s unclean hands.  Federal Circuit affirmed.

Typhoon Touch Technologies v. Dell, Inc., et. al. (E.D. Tex. 2010), 659 F.3d 1376 (Fed. Cir. 2011).  Defended Toshiba against claims of patent infringement regarding portable computers with touchscreens.  Obtained summary judgment of non-infringement.  Federal Circuit affirmed on appeal.

Intamin Ltd. v. Magnetar Technologies, 2009 WL 1582919 (C.D. Cal 2009).  Defended Magnetar against claims of patent infringement relating to magnetic brakes for amusement park rides.  Obtained summary judgment of non-infringement, invalidity, and no recovery due to plaintiff’s unclean hands. Received a finding of an exceptional case and an award to Magnetar of its attorneys’ fees.

In re Certain Cold Cathode Fluorescent Lamp (“CCFL”) Inverter Circuits and Products Containing Same, Inv. No. 337-TA-666 (ITC 2009).  Represented respondent Microsemi in ITC investigation relating to circuitry for flat screen power supplies.

Boss Industries, Inc. vs. Yamaha Motor Corporation, U.S.A., 2:05-cv-422 (D. Utah 2008).  Defended Yamaha against claims of patent infringement relating to personal watercraft seats.  Obtained favorable claim constructions leading to summary judgment of non-infringement.  Federal Circuit affirmed on appeal.  333 Fed. Appx. 531 (Fed. Cir. 2009).

Intamin Ltd. v. Magnetar Technologies, 483 F.3d 1328 (Fed. Cir. 2007). Represented appellee Magnetar against appeal of summary judgment of noninfringement.  Affirmed-in-part. 

Leggett & Platt Inc. v. Hickory Springs Mgf. Co., 07-0549-CAS-FFMx (C.D. Cal. 2007).  Defended Hickory Springs against claims of patent infringement relating to furniture design.  Case settled before trial.

Classic Foods Int’l v. Kettle Foods, 04-725-CJC-Ex (C.D. Cal. 2006). Defended Kettle Foods against trademark infringement claims.  Case settled before trial. 

Express, LLC v. Fetish Group, 424 F. Supp. 2d 1211 (C.D. Cal. 2006), 464 F. Supp. 2d 965 (C.D. Cal. 2007).  Defended fashion boutique owner against claims by national retailer of fraud and unfair competition.  Obtained summary judgment of copyright infringement in client’s distinctive design on clothing.  Obtained summary judgment dismissing plaintiff’s fraud and unfair competition claims. 

Romala Stone, Inc. v. The Home Depot U.S.A., Inc., 1:04-cv-02307-WBH (N.D. Cal. 2004). Defended Home Depot against claims of patent infringement relating to home furnishing.  Successfully moved the Court to transfer the case to the client’s home forum.

Zurich Insurance v. Zurich-American Trust Co., 03-477-JVS-SHSx (C.D. Cal. 2004). Defended Zurich-American against claims of trademark infringement.  Case settled before trial.

Pateajton v. The Home Depot U.S.A., Inc., 03-7811-WMB-PLAx (C.D. Cal. 2004). Defended Home Depot against claims of patent infringement relating to safety feature for window blinds.  Case settled before trial.

Optus Software v. FileNet, 02-5910-AET (D.N.J. 2003).  Defended FileNet against claims of copyright infringement, breach of contract, and unfair competition.  Developed evidence of spoliation prior to settlement.

Advanced Delivery & Chemical Sys., Ltd. v. Air Products and Chemicals, Inc. 99-CA-406-SS (W.D. Tex. 2001).  Defended Air Products against claims of patent infringement relating to high purity chemical delivery systems. Obtained summary judgment of invalidity prior to case settling before trial.

Speeches & Seminars

"Enforcement of Patents: Offensive and Defensive Strategies," workshop presentation, International Society for Optics and Photonics, February 5, 2015, San Francisco, California.

"Magnifying Your IP IQ: Topics for the Savvy Intellectual Property Manager," workshop presentation, International Society for Optics and Photonics, January 30, 2014, San Francisco, California.

"On the Patenting of Mice and Men: The Supreme Court’s Association for Molecular Pathology v. Myriad Genetics Case and Other Developments in Patent Law," Federal Bar Association, Inland Empire Chapter, September 25, 2013, Riverside, California.

Scientific Articles

“Photoclinometry,” D G Jankowski, Article in Encyclopedia of Planetary Sciences, Chapman & Hall (1998).

“Rheology and Structure of Planetary Near-Surface Materials From Landform Topography,” Cornell University Department of Astronomy Doctoral Thesis, 1994.

"Topography of Small Martian Valleys." Goldspiel J M, S W Squyres, D G Jankowski, Icarus 105, 479–500 (1993).

"‘Softened’ impact craters on Mars: Implications for ground ice and the structure of the Martian megaregolith.” D. G. Jankowski and S. W. Squyres, Icarus 106, 365–379 (1993).

"Plains Tectonism on Venus: The Deformation Belts of Lavinia Planitia," Squyres, S. W., D. G. Jankowski, G. E. McGill, M. Simons, and S. C. Solomon, J. Geophys. Res. 97, 13579–13600 (1992).

"Sources of Error in Planetary Photoclinometry." Jankowski, D G and S W Squyres, J. Geophys. Res. 96(E4), 20907–20922 (1991).

“On the Obliquity and Tidal Heating of Triton,” D G Jankowski, C F Chyba, P D Nicholson, Icarus 80, 211–219 (1989).

“Tidal Evolution in the Neptune-Triton System,” C F Chyba, D G Jankowski, P D Nicholson, Astronomy and Astrophysics 219, L23–L26 (1989).

“Solid-State Ice Volcanism on the Satellites of Uranus,” D G Jankowski and S. W. Squyres, Science 9, Vol. 241. 1322–1325 (1988).

“Diffusion-recombination phenomena from paired initial conditions,” D G Jankowski, Phys. Rev. A 33, 4415–4418 (1986).

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

Representative Matters for Plaintiff/Patent Holders

Masimo Corp. v. Philips Electronics North America Corp. and Philips Medizin Systeme Boblingen GmbH. (D. Del. 2014). Represented medical-device maker Masimo 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.

Toshiba Corporation v. Wistron Corporation (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. 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.

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).

Representative Matters for Defendants/Accused Infringers

Bierman v. Toshiba Corp. (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. (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 (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. (S.D. Cal. 2009) and (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.

In the Matter of CERTAIN POINT OF SALE TERMINALS AND COMPONENT PARTS THEREOF (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.

Articles

"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)

"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).

"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)

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

"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)

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

"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)

“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)

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)

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

“Alice’s Effect on US Patent Litigation,” IIPLA Annual Conference, Dubai, UAE (January 2015).

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

“Intellectual Property Seminar for Executives and IP Managers," Tokyo, Japan (November 2013)

“eDiscovery and IP Litigation," Seoul, South Korea (November 2013)

"Strategies to Handle U.S. Litigations," 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," Tokyo, Japan (April 2013)

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

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

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

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

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

Articles

"Inter Partes Review and Post-Grant Review: New Options Under the America Invents Act to Challenge Patent Validity", Orange County Business Journal (September 2012)

“Fair Conditions,” Establishing Present, Advancements in Intellectual Property Law, Supplement to the Los Angeles Daily Journal (April 1997), co-author

Ashton-Tate 'Out-Foxed' by Copyright Application Form,” California Republic, (February 1991)

“How to Handle Representations and Warranties in Transactions Involving Intellectual Property Law,” Vol. VII, No. 4, California's Continuing Education of the Bar Business Law Practitioner (Fall 1992)

“An Introduction to Computer Law,” Vol. 3, No. 1, California's Continuing Education of the Bar Business Law Practitioner (Winter 1988)

“A Model Trade Secret License Agreement: An Example from the Biotechnology Industry,” Vol. 3, No. 4, California's Continuing Education of the Bar Business Law Practitioner (Fall 1988)

“Strategic Alliances: Trade Secret Protection in Joint Ventures and Partnerships,” Vol. 2, No. 1, California's Continuing Education of the Bar Business Law Practitioner (Winter 1987)

“How to Protect Your Client's Trademark,” Vol. 2, No. 2 , California's Continuing Education of the Bar Business Law Practitioner (Spring 1987)

“A Checklist for Protecting Trademarks in the Healthcare Industry,” Vol. 2, No. 2, California's Continuing Education of the Bar Business Law Practitioner, (Spring 1987)

“A Trade Secrets Checklist for Hiring Employees from Competitors,” Vol. 1, No. 2, California's Continuing Education of the Bar Business Law Practitioner (Spring 1986)

Speeches & Seminars

Co-Moderator, “Tech transfer: JV or licensing”, IBA World Life Sciences Conference, Philadelphia, PA (June 2015)

Moderator, “What are the emerging life sciences business models and what will they be in five and ten years from now?", IBA World Life Sciences Conference, San Diego, CA (June 2014)

Panelist, "Learn How to Protect Your Intellectual Property", NVTC Small Business and Entrepreneur Committee, Fairfax, VA (March 2014)

Moderator, “Why Didn’t Someone Tell Me That?”, International Bar Association Annual Conference, Boston (October 2013)

Co-Moderator, "What are the emerging life sciences business models and what will they look like in five years and ten years from now?", IBA World Life Science Conference, Dallas, TX (May 2013)

Co-Moderator, "Tech transfer tactics: Licensing in the academic and commercial realms," IBA World Life Science Conference, Dallas, TX (May 2013)

Facilitator, "Intellectual property, e-commerce and privacy", International Bar Association Conference, Dublin, Ireland (October 2012)

Panelist, "Patenting the Unpatentable: Claim Drafting After Prometheus" and "Procedures, Pitfalls and Costs: Best Practices for Securing Foreign Patent Protection", Firm-hosted IP Impact Seminar, McClean, Virginia (May 2012)

Moderator, “Patent Reform: New Sheriff in Town”, OCBA Corporate Counsel Section (April 2012)

Presenter, "Patent Reform (AIA): What You Need to Know", IP Impact 2011: Innovative Intellectual Property Strategies for Emerging Technology Companies, McClean, Virginia (September 2011)

Presenter, "Patent Reform: What You Need to Know" and "Preparing Your IP Portfolio for Investment, Acquisition, and/or Litigation Events", IP Impact 2011: Innovative Intellectual Property Strategies for Technology and Life Science Companies, Research Triangle Park, North Carolina (September 2011)

Presenter, "Recent USPTO Programs", IP Impact 2010: Innovative Intellectual Property Strategies for Emerging Technology Companies, Research Triangle Park (September 2010)

Presenter, "Recently introduced USPTO pilot programs and initiatives that you can utilize to improve the quality of your IP portfolio", IP Impact 2010: Innovative Intellectual Property Strategies for Emerging Technology Companies, Silicon Valley, California (July 2010)

Moderator and Presenter, “User Generated Content on the Internet – Its Business Case, IP Rights, Litigation, and Relevant Statutes”, IBA all-day session, Madrid, Spain (October 2009)

Presenter, "Innovative IP Strategies for Emerging Companies”, Firm-hosted IP Impact Seminar, Research Triangle (Chapel Hill), NC (September 2009)

Moderator, “Licensing Practices:  What Has the U.S. Supreme Court Done to your Agreements?”, USC Gould School of Law, IP Institute (March 2009)

Moderator and Presenter, “Thinking Outside the Box – Creative Defenses to IP Infringement Actions”, IBA all day session, Buenos Aires, Argentina (Fall 2008)

Moderator and Presenter, “Real IP in a Virtual World – Issues Arising Out of Virtual Characters and Scenes in On-Line Video Games,” IBA all day session, Singapore (Fall 2007)

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 spoken extensively in the field of trademark and copyright law, including:

·         Speaker, “Intellectual Property & Technology Law Section Seminar”, Orange County Bar Association, Newport Beach, CA     (February 2016)

·         Panelist, “Washington in the West 2016”, Los Angeles Intellectual Property Law Association (LAIPLA), Los Angeles, CA (January 2016)

·         Moderator, “INTA - USPTO Roundtable: Orange County”, Knobbe Martens, Irvine, CA (May 2014)

·         Moderator, “INTA - USPTO Roundtable: Los Angeles”, Knobbe Martens, Los Angeles, CA (May 2014)

·         Panelist, Knobbe Martens IP Impact -- Trademark Seminar, Menlo Park, CA (July 2013)

·         Presenter, “Clearing Marks in the U.S.: What European Practitioners Need to Know”, Taylor Wessing Brand Forum, London,     England (March 2013)

·         Co-Speaker, “Intellectual Property Protection in the Field of Cosmetics and Personal Care Products”, Society of Cosmetic       Chemists (SCC), Los Angeles, CA (March 2013)

·         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 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. On appeal, the Ninth Circuit reinstated the award.

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.  The Ninth Circuit affirmed the judgment. 

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 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:

War Games: Recent IP Litigation, Association of Corporate Counsel (ACC) (2015)

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, Association of Corporate Counsel (ACC) (2015)

The Intersection of False Advertising Claims and the FDCA, Association of 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, Association of Corporate Counsel (ACC) (2013)

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

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

Navigating the Murky Waters of the New Top Level Domain Name Launch, Association of Corporate Counsel (ACC) (2012)

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

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

Keywords and Trademarks, Association of Corporate Counsel (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:

When the cost of default is $1.2 million, World Trademark Review, February 2016

Alert: California and the EU’s Changing Privacy Laws, December 2015

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

Masimo Corp. v. Philips Electronics (D. Del.): successfully represented plaintiff patent holder in obtaining $466 million jury verdict in patent case involving medical device software and obtaining judgment that plaintiff did not infringe competitor patent.

TiVo v. EchoStar Corp. (E.D. Tex.): in one of the first patent cases to go to trial in the Eastern District of Texas, successfully obtained over $74 million jury verdict for plaintiff patent holder on patent for DVR technology.

Instradent USA, Inc. v. Nobel Biocare Services (Pat. Trial & Appeal Bd.): successfully defended a pioneering medical device patent for dental implants by defeating institution of an IPR petition brought by a competitor that was filed after the patent had been found infringed in a co-pending ITC action.

Kinetic Technologies v. Skyworks Solution (Pat. Trial & Appeal Bd.): successfully defended patent owner by protecting all claims in all challenged patents relating to integrated circuits by defeating three separate IPR petitions.

Broadnet Teleservices v. Shoutpoint and Victory Solutions (D. Colo. & Pat. Trial & Appeal Bd.): successfully represented defendants in patent case relating to teleconferencing technology, case settled soon after defendants filed two CBM petitions challenging the asserted patents in the Patent Office.

Nobel Biocare v. Materialise Dental (C.D. Cal.): successfully represented defendant in obtaining early summary judgment of non-infringement in patent case involving dental implant software.

Affinity Labs of Texas v. Alpine Electronics et al. (E.D. Tex.): successfully represented defendant in patent case involving automobile GPS navigation units; case settled favorably before trial.

Treasure Garden v. Lancer and Loader et al. (C.D. Cal.): successfully represented plaintiff patent holder in obtaining permanent injunction against national retailer and supplier.

Articles and Speeches

Speaker, Patent Resources Group Advanced Courses: Federal Circuit Law, Santa Ana Pueblo, NM (Oct. 2015).

Speaker, Patent Resources Group Advanced Courses: Federal Circuit Law, Orlando, FL (Apr. 2015).

Armond, Summers, “Recent Trends in Damages and Injunctive Relief in Patent Cases – Overview of the Apple v. Samsung Litigation,”  Tokyo Conference Centre Shinagawa, Tokyo (Apr. 2013).

Armond, Adolphs, Caltech in Orange County Lecture Series: “The Final Frontier: Understanding the Human Brain,” Irvine, CA (Apr. 2013).

Armond, Milkovich; Caltech in Orange County Lecture Series: “Mars Science Laboratory: Recent Activities of the Curiosity Rover,” Irvine, CA (Oct. 2012).

Armond, Schneider; Caltech in Orange County Lecture Series: “The Science of Climate: Facts, Physics, Forecasts,” Irvine, CA (May 2012).

Panelist, "I Didn't Do It: Exploring the Landscape of Divided Infringement in Patent Enforcement," UC Berkeley School of Law, Berkeley, CA (Feb. 2012).

Speaker, Special Session for the Presentation of the Portrait of Circuit Judge Richard Linn, United States Court of Appeals for the Federal Circuit, Washington D.C., 652 F.3d i (June 10, 2011).

Panelist, "Perspectives on KSR, MedImmune, Seagate, and McKesson," UC Berkeley School of Law, Berkeley, CA (Feb. 2009)

Panelist, "Medmmune and SanDisk: Seeking a License Without Getting a Lawsuit,” Fourth Annual Federal Circuit Roundtable Discussion, Chicago-Kent School of Law, Chicago (Sept. 2007).

Author, Introducing the Defense of Independent Invention to Motions for Preliminary Injunctions in Patent Infringement Lawsuits, 91 Cal. L. Rev. 117 (2003).

Author, State Internet Regulation and the Dormant Commerce Clause, 17 Berkeley Tech. L.J. 379 (2002).

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

Representative Matters for Plaintiff/Patent Holders

Masimo Corp. v. Philips Electronics North America Corp. and Philips Medizin Systeme Boblingen GmbH. (D. Del. 2014). Represented medical-device maker Masimo 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.

Toshiba Corporation v. Wistron Corporation (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. 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.

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).

Representative Matters for Defendants/Accused Infringers

Bierman v. Toshiba Corp. (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. (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 (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. (S.D. Cal. 2009) and (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.

In the Matter of CERTAIN POINT OF SALE TERMINALS AND COMPONENT PARTS THEREOF (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.

Articles

"The U.S. Supreme Court on Induced Infringement and Its Impact on Patent Strategy," Journal of the Japanese Group of the International Association for the Protection of Intellectual Property (AIPPI), Vol. 61 No. 2 (February 2016)

"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)

"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).

"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)

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

"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)

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

"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)

“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)

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)

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

“Alice’s Effect on US Patent Litigation,” IIPLA Annual Conference, Dubai, UAE (January 2015).

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

“Intellectual Property Seminar for Executives and IP Managers," Tokyo, Japan (November 2013)

“eDiscovery and IP Litigation," Seoul, South Korea (November 2013)

"Strategies to Handle U.S. Litigations," 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," Tokyo, Japan (April 2013)

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

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

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

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

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

Inter Partes Review Proceedings

Kinetic Technologies, Inc. v. Skyworks Solutions, Inc., Case IPR2014-00529 (2014).  Successfully convinced the Patent Trial and Appeals Board to not institute the Inter Partes Review proceeding.

Kinetic Technologies, Inc. v. Skyworks Solutions, Inc., Case IPR2014-00530 (2014).  Successfully convinced the Patent Trial and Appeals Board to not institute the Inter Partes Review proceeding.

Kinetic Technologies, Inc. v. Skyworks Solutions, Inc., Case IPR2014-00690 (2014).  Successfully prevailed in validating all challenged claims.

Canon Inc. v. Intellectual Ventures I LLC, Case IPR2014-00536 (2014).  Successfully convinced the Patent Trial and Appeals Board to not institute the Inter Partes Review proceeding.

Canon Inc. v. Intellectual Ventures I LLC, Case IPR2014-00537 (2014).  Successfully convinced the Patent Trial and Appeals Board to not institute the Inter Partes Review proceeding.

Canon Inc. v. Intellectual Ventures I LLC, Case IPR2014-00757 (2014).  Successfully prevailed in validating all challenged claims.

Google Inc. v. Intellectual Ventures II LLC, Case IPR2014-00787 (2014).  Successfully prevailed in validating certain challenged claims.

Canon Inc. v. Intellectual Ventures I LLC, Case IPR2014-00952 (2014).  Successfully convinced the Patent Trial and Appeals Board to not institute the Inter Partes Review proceeding.

International Business Machines Corp. v. Intellectual Ventures I LLC, Case IPR2014-01516 (2014).  Successfully convinced the Patent Trial and Appeals Board to not institute the Inter Partes Review proceeding.

International Business Machines Corp. v. Intellectual Ventures I LLC, Case IPR2014-00587 (2014).  Successfully prevailed in validating all challenged claims.

Great West Casualty Company, BITCO General Insurance Corporation, and BITCO National Insurance Company v. Intellectual Ventures II LLC, Case IPR2015-01706 (2016). Successfully convinced the Patent Trial and Appeals Board to not institute the Inter Partes Review proceeding for certain claims.

Great West Casualty Company, BITCO General Insurance Corporation, and BITCO National Insurance Company v. Intellectual Ventures II LLC, Case IPR2015-01706 (2016). Successfully convinced the Patent Trial and Appeals Board to not institute the Inter Partes Review proceeding for certain claims.

Covered Business Method Proceedings

Speeches and Seminars

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.

"Alice-Proofing Patent Claims Under Section 101,"Telecommunication and Software Patent Practice Update, New Jersey Intellectual Property Law Association, Iselin, New Jersey.

“Post Grant Procedures & Strategies,” Orange County Patent Law Association, Irvine, California.

"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.

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

“Trends in U.S. Patent Litigation,” US Patent Litigation Seminar, Osaka & Tokyo, Japan (February 2 & 4, 2016)

“Trends and Advanced Strategies in U.S. Patent Prosecution,” U.S. Patent Prosecution Seminar, Osaka & Tokyo, Japan (February 1 & 3, 2016)

"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). 

Cases For Plaintiff

AutoAlert, Inc. v. DealerSocket Inc., 13-cv-00657 (C.D. Cal. 2013).  Counsel for plaintiff and patent owner AutoAlert in a patent infringement suit involving systems and methods for assessing and managing automotive financial transactions. Obtained settlement of the case on a confidential basis prior to trial.

AutoAlert, Inc. v. Dominion Dealer Solutions, LLC, et al., 12-cv-01161 (C.D. Cal. 2012).  Counsel for plaintiff and patent owner AutoAlert in a patent infringement suit involving systems and methods for assessing and managing automotive financial transactions. Obtained settlement of the case on a confidential basis prior to trial.

Schindler Elevator Corp. v. Otis Elevator Co., 06-cv-5377 (S.D.N.Y. 2011).  Trial counsel for plaintiff and patent owner Schindler in 3 week jury trial in which jury answered all 33 questions on the verdict form in Schindler’s favor and Court entered permanent injunction against Otis.  Previously represented Schindler in an appeal overturning an erroneous claim construction and obtained reversal of noninfringement ruling.  See 593 F.3d 1275 (Fed. Cir. 2010).  After remand, successfully defeated Otis’s renewed motion for summary judgment of noninfringement, along with all other related motions.  See 2010 U.S. Dist. LEXIS 110313 (S.D.N.Y. Oct. 6, 2010).

MarketLinx, Inc. v. Industry Access, Inc. and Instanet Solutions, 11-cv-00562 (D. Del. 2011).  Counsel for plaintiff and patent owner MarketLinx in patent infringement suit involving a computer system for performing real estate transactions over a computer network.  Obtained settlement of the case on a confidential basis prior to trial.

2-Way Computing, Inc. v. Sprint Nextel Corp. et al., 11-cv-00012 (D. Nev. 2011).  Counsel for plaintiff and patent owner 2-Way Computing in a patent infringement suit involving two-way audio communications over a computer network. The case settled on a confidential basis prior to trial.

Cases For Defendant

Dominion Dealer Solutions, LLC. v. AutoAlert, Inc. (IPR2013-00220; IPR2013-00222; IPR2013-00223; IPR2013-00224; IPR2013-00225).  Counsel for patent owner AutoAlert in five inter partes review proceedings challenging patentability of AutoAlert’s patents involving systems and methods for assessing and managing automotive financial transactions.  Successfully opposed petitions for inter partes review, resulting in PTAB denials of all five petitions and decisions declining to institute trial.

Uniloc Luxembourg S.A., et al. v. Rosetta Stone Ltd., 12-cv-00230 (E.D. Tex. 2012).  Counsel for defendant Rosetta Stone in patent infringement action relating to method and system for prevention of piracy of a given software via a communications network.  Obtained settlement of the case on a confidential basis prior to trial.

Computer Software Protection LLC v. Autodesk, Inc., 12-cv-00451 (D. Del. 2012).  Counsel for defendant Computer Software Protection in patent infringement action relating to system for controlling use of licensed software.  Obtained settlement of the case on a confidential basis prior to trial.

Industry Access, Inc. v. CoreLogic, Inc. et al., 11-cv-00473 (C.D. Cal. 2011). Counsel for defendant CoreLogic in patent infringement suit involving a computer system and method for network interchange of data and information related to real estate transactions.  Obtained settlement of the case on a confidential basis prior to trial.

SkyHawke Technologies, LLC v. Deca International Corp., 10-cv-00708 (S.D. Miss. 2010).  Counsel for defendant Deca in patent infringement action relating to personal DGPS golf course cartographer and navigator.  Successfully obtained a stay of the case pending inter partes and ex parte reexaminations of the patents-in-suit.  The case is currently stayed.

Toshiba Corporation v. Wistron Corporation, Investigation No. 337-TA-705 (U.S. I.T.C. 2010).   Counsel for defendant 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. 2:07-cv-222 (E.D. Tex. 2008).  Counsel for defendant 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.  See 628 F. Supp. 2d 703, 712 (E.D.Tex. 2008).  Obtained settlement of the case on a confidential basis prior to trial.

Camp Scandinavia AB v. Trulife, Inc. 5:07-cv-14925 (E.D. Mich. 2007).  Counsel for plaintiff and patent owner Trulife in patent infringement lawsuit involving patent related to an ankle foot orthotic product.  Successfully defeated Plaintiff’s motions for summary judgment of infringement and validity.  See No. 07–14925, 2009 WL 3818187 (E.D. Mich. 2009).  Obtained settlement of the case on a confidential basis just before trial.

SynQor, Inc. v. Artesyn Technologies, Inc. et al. 2:07-cv-00497 (E.D. Tex. 2007).  Counsel for defendant Cherokee in patent infringement action asserted by SynQor against multiple defendants involving three patents related to bus convertors and non-isolated point of load convertors used in intermediate bus architectures.

Kathrein-Werke KG v. Radiacion Y Microondas S.A., et al. 1:07-cv-02921 (N.D. Ill. 2007).  Counsel for defendant RYMSA in patent infringement action relating to high-frequency phase shifter units having a pivotable tapping element.  Obtained denial of plaintiff’s motion for summary judgment of no inequitable conduct.  See 2011 U.S. Dist. LEXIS 113778 (N.D. Ill. 2011).  Obtained settlement of the case on a confidential basis prior to trial.

Articles, Speeches & Seminars

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

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 spoken extensively in the field of trademark and copyright law, including:

·         Speaker, “Intellectual Property & Technology Law Section Seminar”, Orange County Bar Association, Newport Beach, CA     (February 2016)

·         Panelist, “Washington in the West 2016”, Los Angeles Intellectual Property Law Association (LAIPLA), Los Angeles, CA (January 2016)

·         Moderator, “INTA - USPTO Roundtable: Orange County”, Knobbe Martens, Irvine, CA (May 2014)

·         Moderator, “INTA - USPTO Roundtable: Los Angeles”, Knobbe Martens, Los Angeles, CA (May 2014)

·         Panelist, Knobbe Martens IP Impact -- Trademark Seminar, Menlo Park, CA (July 2013)

·         Presenter, “Clearing Marks in the U.S.: What European Practitioners Need to Know”, Taylor Wessing Brand Forum, London,     England (March 2013)

·         Co-Speaker, “Intellectual Property Protection in the Field of Cosmetics and Personal Care Products”, Society of Cosmetic       Chemists (SCC), Los Angeles, CA (March 2013)

·         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

"Trademark Licensing: Social Media and Quality Control,"New York Law Journal, April 2016

"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

Teplitskiy, V., Contested Post-Grant Proceedings at the USPTO, Ryuka IP Seminar, April 8, 2016, Tokyo, Japan.

Altman, D., Lee, S., Teplitskiy, V., Important Developments in U.S. Patent Law and How They Affect MedTech Companies, Pinsent Masons Annual MedTech Seminar, February 26, 2015, Birmingham, United Kingdom.

Ron Schoenbaum & Christopher M. DiLeo, Medical Privacy – An Overview, Knobbe Martens Olson & Bear LLP, Mar. 29, 2016.

Christopher M. DiLeo, Preserving Patent Term in View of Pfizer v. Lee, Knobbe Martens Olson & Bear LLP, Feb. 19 and 26, 2016.

Christopher M. DiLeo, Invited Speaker, Intellectual Property Workshop, FAB Authority/Fashion Week SD, July 16, 2015. 

Christopher M. DiLeo, Guest Lecturer, Computer and Software Law, UCSD Extension, Mar. 10, 2015. 

Christopher M. DiLeo, Globalization and Direct Infringement, Knobbe Martens Olson & Bear LLP, Dec. 5 and 12, 2014.

Christopher M. DiLeo, How Much is Enough? Patent Pleading Sufficiency under Form 18, Knobbe Martens Olson & Bear LLP, May 24 and 31, 2013.

Christopher M. DiLeo, Making Sense of Therasense, Knobbe Martens Olson & Bear LLP, Mar. 2 and 9, 2012.

Kerry S. Taylor & Christopher M. DiLeo, A Closer Look at the America Invents Act, IP Professionals Connection, Dec. 8, 2011.

Christopher M. DiLeo, Case Reviews: Classen Immunotherapies, Inc. v. Biogen IDEC, No. 2006-1634,-1649 (Fed. Cir. Aug. 31, 2011) and Board of Trustees, Stanford Univ. v. Roche Molecular Sys., Inc., No. 09-1159 (U.S. June 6, 2011), Knobbe Martens Olson & Bear LLP, Sept. 30 and Oct. 7, 2011.

Kathleen R. Mekjian & Christopher M. DiLeo, Crowdsourcing and Patent Reform – Steps Toward a Participatory Examination Process, Int’l Bar Ass’n Convergence (Sept. 2011).

John M. Carson & Christopher M. DiLeo, Funai Electric Co. v Daewoo Electronics Corp., 2011 E.I.P.R. 126 (2011).

Paul A. Stewart, Christopher M. DiLeo, and Wendy K. Peterson, Are You Engaging in the Unauthorized Practice of Law in Other States?, Orange County Bar Ass'n (Feb. 2011).

Christopher M. DiLeo, Case Reviews: Visa Int’l Service Ass’n v. JSL Corp., 95 U.S.P.Q.2d 1571 (9th Cir 2010) and Shell Co. (Puerto Rico) Ltd. v. Los Frailes Service Station Inc., 95 U.S.P.Q.2d 1539 (1st Cir 2010), Knobbe Martens Olson & Bear LLP, Dec. 10 and 17, 2010.

Christopher DiLeo, Comment, Bazaar Transnational Drafting: An Analysis of the GNU General Public License Version Three Revision Process, 10 San Diego Int’l L.J. 193 (2008).

Christopher DiLeo& John Rieffel, Evolving Optimal Histogram Parameters for Object Recognition, 3837 Proc. Int’l Soc’y for Optical Engineering 194 (1999).

Representative Matters/Clients

Plaintiff Cases

Masimo Corp. v. Shenzhen Mindray Bio-Medical Tech. Co. Ltd. and Mindray DS USA: Currently representing Masimo in patent litigation in California involving numerous patents on pulse oximetry technology.

Select Comfort Corp. v. Gentherm, Inc.: Currently representing Gentherm in patent litigation in Minnesota involving patents directed to climate controlled beds.

Masimo Corp. v. Philips Electronics North America Corp et al.: Represented Masimo in a three-week jury trial involving multiple patents on pulse oximeter medical devices.  Obtained a $466 million verdict based on infringement of Masimo’s patents covering Masimo’s pioneering read-through-motion pulse oximetry technology.  The verdict is the largest IP verdict of 2014 through October.  Mr. Gurka had a primary role at trial of handling the defense against Philips’ counterclaim patent for which Philips sought $169 million in damages.  The jury rejected Philips’ infringement case on all theories and awarded zero damages.

Schindler Elevator Corp. and Inventio AG v. Otis Elevator Co.: Lead trial counsel for Schindler and Inventio involving Schindler’s patented Schindler ID^® elevator system.  After a two-week jury trial, the jury answered all 33 questions in Schindler’s favor.  Previously represented Schindler in a successful appeal overturning an erroneous claim construction and obtained reversal of noninfringement ruling. See 593 F.3d 1275 (Fed. Cir. 2010).  After remand, successfully defeated Otis’ renewed motion for summary judgment of noninfringement, along with all other related motions. See 2010 U.S. Dist. LEXIS 110313 (S.D.N.Y. Oct. 6, 2010).  On second appeal, Federal Circuit invalidated the patent for obviousness. No. 2011-1615 (Fed. Cir. 2012).

Advanced Thermal Sciences v. Applied Materials, Inc.: Trial counsel for plaintiff in two-week bench trial involving thermal heating and cooling of semiconductor equipment. Court ruled in favor of Advanced Thermal on all substantive issues. See 2010 WL 2015236 (C.D.Cal.)

Toshiba Corp. and Toshiba America Information Systems: Represented Toshiba in patent litigation in various jurisdictions, including an action before the U.S.I.T.C. against Wistron Corp. Recently obtained a consent summary judgment after favorable claim construction against a patent troll. See 2009 WL 2243126 (E.D. Tex. 2009).

Fisher & Paykel Appliances v. LG Electronics: Represented Fisher & Paykel in patent infringement suit in N.D. Illinois involving direct drive washing machines.

Kruse Technology Partnership v. General Motors, Isuzu, and Caterpillar: Represented plaintiff in patent litigation in C.D. California over diesel engine combustion technology.

Broadcom Corp. v. BroadVoice, Inc.: Represented Broadcom in trademark infringement suit and obtained settlement through litigation.

Mallinckrodt, Inc. v. Masimo Corp: Represented Masimo in a five and a half week jury trial involving multiple patents on pulse oximeter medical devices and obtained a $164 million damage award. Claim construction ruling at 254 F. Supp. 2d 1140; summary judgment rulings at 292 F. Supp. 2d 1201 (C.D. Cal. 2003); 300 F. Supp. 2d 923 (C.D. Cal. 2004).

Defense Cases

Flexera Software LLC: Currently representing Flexera in various intellectual property matters regarding their product lines, including advising Flexera on matters involving non-practicing entities asserting patents against Flexera customers.

SoftVault Systems, Inc. v. Dassault Systemes Solidworks, Corp.: Currently representing Dassault in patent litigation in the Northern District of California involving patents directed to computer systems.

Bascom Research LLC v. BroadVision, Inc.: Lead counsel for BroadVision in patent litigation suit involving multiple patents asserted against BroadVision’s ClearVale enterprise social networking suite.

Digitech Image Technologies, LLC v. General Imaging Company: Lead counsel for General Imaging in patent litigation suit involving a digital image processing system patent.

Credit Management Services v. Fisher & Paykel Financial Services, CDR arbitration proceeding filed in San Francisco: Represented Fisher & Paykel in challenging the jurisdiction of the arbitration panel and obtained a dismissal with prejudice of the entire arbitration.

Samsung Electronics/Samsung Telecommunications: Represented Samsung entities in patent litigation in Nevada (satellite receivers) and W.D. Texas (cell phones).

St. Clair Intellectual Property Consultants v. General Imaging Co.: Represented General Imaging in patent litigation in Delaware involving digital camera technology.

Articles, Speeches & Seminars

Annual supplement to Chapter 186, "Court of Appeals for the Federal Circuit" in 8 West's Federal Forms - National Courts (West Pub. 1995), contributor

Speaker 2004 LSI Conference in Seattle: Calculating & Proving Patent Damages