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

Co-Author, “Federal Circuit Patent Law,” Patent Resources Group (2013-2016).

Speaker, Patent Resources Group Advanced Courses: Federal Circuit Law, Tampa, FL (Apr. 2016).

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

Nutrishop, Inc.
Catherine 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. She has directed all of the company’s intellectual property efforts, including its extensive licensing program and brand enforcement efforts.

MonkeySports, Inc.
Catherine 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.  She 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 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. She 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

Catherine 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.

Catherine 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, "Trademark Year In Review,“ 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

She 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

Representative Matters

Nutrishop, Inc.
Catherine 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. She has directed all of the company’s intellectual property efforts, including its extensive licensing program and brand enforcement efforts.

MonkeySports, Inc.
Catherine 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.  She 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 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. She 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

Catherine 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.

Catherine 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, "Trademark Year In Review,“ 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

She 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

Representative Litigation Matters
Articles
Speeches

Representative Litigation Matters

Lynda acted for parties involved in the following cases, amongst others:

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Articles

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Speeches

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

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

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

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

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

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

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

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

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

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

• Speaker, "Weekly Appellate Report Podcast," Daily Journal (June 2016)
• Speaker, “Patent Local Rules,” Howard T. Markey Inn of Court (November 2015)
• Panel member, “Inter Partes Review Strategy and Practice,” Howard T. Markey Inn of Court (October 2014)
• Moderator, "Design Patent Litigation - The Next Frontier," AIPLA Patent Litigation Committee Online Education Subcommittee sponsored event

Mincheol has given numerous lectures and seminars on various topics of intellectual property law and practice to government agencies, companies, legal and business organizations, and schools.

“Intellectual Property Q&As for Startups” at 2016 TekOne in Los Angeles (May 21, 2016)

“Winning Patents” presented at Cha Biotech Group, Korea (July 7, 2015)

“Legal Strategies for Startups: Dos and Do-Nots” presented at 2015 Global Startup Springboard in Los Angeles (May 16, 2015)

“Patenting Software Inventions in Korea and the US” panel discussion at AIPPI APC Road Show, Seoul, Korea (December 1, 2014)

Hosted “KIAT Intellectual Property and Technology Commercialization Seminar”, Irvine and San Diego, CA (September 29 - October 2, 2014)

“Intellectual Property Issues for Technology Start-ups” presented at TekOne 2014, Los Angeles (May 30, 2014)

“Intellectual Property & Doing Business in the United States” presented at International Entrepreneurship Training Programs, Plug & Play Tech Center, Sunnyvale, CA (June 10 and November 26, 2013) 

“Attorney Client Privilege in US IP Practice” presented at UBIC Korea, Seoul, Korea (November 19, 2013) 

“An International Perspective on Attorney-Client Privilege” presented at AIPPI APC Road Show, Seoul, Korea (November 12, 2013)

“Reinvent Your Inventions” presented at Samsung Electronics Mobile Division, Suwon, Korea (September 30, 2013)

“Winning Patent Claims” presented at KIAT Tech Commercialization Training Program, Von Liebig Entrepreneurism Center, University of California, San Diego, CA (September 9, 2013)

“Discovery & Attorney-Client Privilege in US Litigation” presented at the Reception for Gyeonggi Central Bar Association, Irvine, CA (July 26, 2013) 

“Winning Patent Claims” presented at Joint LL.M. Program of Seoul National University & Santa Clara University School of Law, Santa Clara, CA (May 9, 2013)

“Discovery in US Patent Litigation” presented for Korean IP practitioners organized by EZPEX, Seoul, Korea (February 14, 2013) 

“Trademark Implications of Meta Tags and Keywords” AIPPI World Congress (October 22, 2013)

“Patent Claims Asserted in Apple v. Samsung” presented at KIAT Tech Commercialization Training Program, Von Liebig Entrepreneurism Center, UCSD, San Diego, CA (September 11, 2012) 

“US Trademark Law and Practice for Korean Clients and Practitioners” presented at the Korean Patent Attorneys Association, Seoul, Korea (March 24, 2011)

“Commonly Under-Appreciated Aspects of US IP Laws and Practice” presented at the Knobbe Reception for Korean IP Professionals, Washington DC, (January 27, 2011)

“Handling US Patent Infringement Claims and Clearance Issues” presented at the Korean Intellectual Property Office, Daejon, Korea (October 28, 2010)

“IP Due Diligence” presented at Seoul National University School of Law, Seoul, Korea (October 23, 2010)

“Intellectual Property Due Diligence for Transactions on Pharmaceuticals and Biotechnology” presented for Korean pharmaceutical industry sponsored by KASAN IP and Law Firm (September 22, 2010)

“Career in Intellectual Property Law for Engineers and Scientists” presented at Korean American Scientists and Engineers Association (KSEA) Conference, Los Angeles, CA (May 15, 2010)

“US-Korea Bi-Country Intellectual Property Law Practice” presented at The US-Korea Law Forum, University of California School of Law, Irvine (February 3, 2010)

“Invention Capital” presented at Korea Institute for Advancement of Technology (KIAT), Seoul, Korea (October 23, 2009)

“Winning Patent Claims – Strategy and Drafting” presented at Hyundai Motor Research Center, Hwaseong, Korea (July 29, 2009)

“US Claim Construction – Rules and Practice” presented at Korea Electronics Association (KEA), Seoul, Korea (July 9, 2009)

“Handling Patent and Trademark Issues for Entering the US Market” presented at the KOTRA & Knobbe Martens CES Reception, Las Vegas, NV (January 6, 2009)

“Securing Intellectual Property Rights” presented at Orange County Korean American Bar Association (OC KABA) 2008 Community Law School, Garden Grove, CA (May 3, 2008)

“Strategy for Maximizing Values of US Patents” presented for Technology Transfer Officer Training Program, Korea Research Council for Industrial Science & Technology (KOCI), Seoul, Korea (September 18, 2007)

“Considerations for Technology Transfer to the United States for Korean Research Institutes” presented at Korean Techno Cluster Program, Global Connect, San Diego, CA (November 15, 2007) 

“KSR v. Teleflex, Post-KSR Strategies” presented at Yonsei University Graduate School of Law (September 10, 2007)

“USPTO’s Recent Rule Changes” presented at Korean Intellectual Property Office, Daejon, Korea (September 12, 2007) 

“KSR v. Teleflex, Post-KSR Strategies” presented at Seoul National University-Berkeley Center for Law and Technology Korean Summer Institute (July 18, 2007)

“Primer on US Patents, Trademarks and Copyrights” presented for NHN Corp., Silicon Valley (April 17, 2007)

“Thoughts on Patent Claims and Specification for Strong US Patents” presented at NHN Corporation, Seongnam, Korea (January 22, 2007)

“Successful Commercial Exploitation of R&D Results in the United States” presented at Korea Research Council for Industrial Science & Technology (KOCI), Seoul, Korea (January 24, 2007)

“Basics of Intellectual Property Law” presented at Orange County Korean American Bar Association (OC KABA) 2006 Community Law School, Anaheim, CA (April 29, 2006)

“Considerations for Commercial Exploitation of R&D Results in the United States” presented at Korean Techno Cluster Program, Global Connect, San Diego, CA (April 25, 2006)

“Extraterritorial Activities and Patent Infringement NTP Inc. v. Research In Motion Ltd.” presented at Korean Patent Attorneys Association, Seoul, Korea (December 15, 2005)

“Defending Against a Charge of US Patent Infringement” presented at Korean Patent Attorneys Association, Seoul, Korea (December 2004)

“Maximizing Patent Protection In the United States” presented at Korean Patent Attorneys Association, (August 14, 2003)

“Reduce Risks Involving Patents for Your Business Partnership” presented at InterBiz Bio-Partnering & Investment Forum 2002, Seoul National University, Seoul, Korea (July 9, 2002)

“Building Effective US Patent Portfolio in University Setting” presented at POSTECH (July 11, 2002)

“Intellectual Property Protection in Korea” presented at Knobbe Martens IP Abroad Seminar, Santa Monica, CA (June 8, 2001)

“Enforcement of Intellectual Property Rights in Korea” presented at Whittier Law School, Costa Mesa, CA (March 17, 2000)

• 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.

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

• "Appellate Strategies for Special Circumstances at the Federal Circuit: Mandamus, Stays and Expedited Appeals", Federal Circuit Bench and Bar Conference, Nashville, Tennessee (June 23, 2016).
• "Emerging Trends in Patent Litigation," USC Gould School of Law 2016 Intellectual Property Institute, Los Angeles, California (February 9, 2016).
• “Recent Supreme Court Patent Case Law Update,” presented at the Intellectual Property Owners Association (IPO) 42nd 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).

Wilson, J., Bhargava V., et al., “A Wireless Sensor Network and Incident Command Interface for Urban Firefighting,” Proc. 2007 4th Ann. Int’l Conf. on Mobile & Ubiquitous Sys.: Computing, Networking & Services, Philadelphia, PA, Aug. 6-10, 2007.

Articles

Trade Secret Bill Boosts Protection, EE Times (April 28, 2016) (author)

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

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

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

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

Speeches & Seminars

"Intro to IP: Basics of Patents, Trademarks and Trade Secrets", Presenter at Knobbe Martens Seminar, hosted in San Diego (July 28, 2016)

"The Current State of Trade Secret Law and How the New Federal Statute Will Shape the Landscape," Presenter at a San Diego Intellectual Property Law Association meeting (May 19, 2016)

"Recent Trends in Obviousness," Moderator of the ACC-SD Intellectual Property Roundtable (October 15, 2013)

"Developing Your Initial Patent Litigation Case Strategy," Presenter at Knobbe Martens' IP Impact 2011 Seminar hosted in San Diego (August 15, 2011)

"Recent Developments in US Patent Law and Practice," Presenter at the TECH IP 2011 Seminar in Auckland, Sidney and Melbourne (March 14-17, 2011)

"CPA Expert Witnesses - What Attorneys Expect," Presenter at the CalCPA seminar (July 22, 2010)

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

"ebayv. MercExchange and Other Developments in the Supreme Court,” Presenter and moderator of ACCA’s IP Practice Group Roundtable (June 2006)

“How To Present a Successful Appeal to the Federal Circuit," Presenter at the 2006 Joint OCPLA/SDIPLA Meeting, La Costa Resort and Spa (March 24-26, 2006)

“Claim Construction in Light of Phillips and Other Developments at the Federal Circuit,” Presenter and moderator of ACCA’s IP Practice Group Roundtable (March 2006)

Representative Matters

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Representative Matters

Hygia Health Services v. Masimo Corporation (N.D. Ala 2009).  Represented Masimo in declaratory judgment case involving patent, trademark, and unfair competition disputes relating to reprocessing of Masimo’s original medical products.  Obtained favorable settlement and permanent injunction.

Stewart Land Group LLC v. First American Title Insurance Company (2:08-cv-00476-DB) (2008).  Defended First American Title in patent infringement, breach of contract and misappropriation of trade secrets case relating to orthorectified aerial survey images.  Obtained dismissal.

Ingersoll Machine Tools v. CG Tech (3:06-cv-50212) (N.D. Ill 2007).  Defended CG Tech in dispute involving claims of federal unfair competition, Copyright infringement, misappropriation of trade secret, deceptive trade practices and civil conspiracy relating to machine tool simulation software.  Case dismissed with prejudice.

Credit Management Services v. Fisher & Paykel Financial Services, (ICDR Arbitration 2007).  ICDR arbitration in San Francisco. Defended Fisher & Paykel Financial Services in intellectual property dispute regarding credit management software.  Obtained a dismissal of the entire arbitration.

HLP v. PetArk, (CV-05-0893) (C. D. Cal 2006).  Represented Plaintiff in Copyright Infringement and Unfair Competition case relating to pet shelter and pet adoption management software (including payment processing), and related internet systems.  Obtained preliminary injunction and subsequent favorable settlement.

Intelligent Computer Solutions, Inc. v. Voom Technologies, Inc., (CV-05-5168) (C. D. Cal 2005).  Represented defendant in patent infringement action on patent directed to forensic computer storage duplication.  Obtained favorable claim construction and tentative ruling of no infringement on motion for summary judgment.  Case settled.

IP3 Networks, Inc. v. Nomadix, Inc., (04-CV-1485) (S.D. Cal 2004).  Represented patent owner in declaratory judgment action on patents directed to software and systems for hosting Internet hot spots. Achieved favorable settlement.

Nellcor Puritan Bennett, Inc. v. Masimo Corp., 300 F.Supp.2d 923 (C.D. Cal. 2004).  Established that medical device client did not infringe signal-processing patent on pulse oximeters.

Mallinckrodt, Inc. v. Masimo Corp., 254 F.Supp.2d 1140, 292 F.Supp.2d 1201, and 293 F.Supp.2d 1102 (C.D. Cal. 2003).  Represented Masimo in patent infringement case related to digital signal processing in medical devices.  Jury found that Masimo had not infringed one patent and found that opposing side infringed four of Masimo’s patents, and awarded $134.5M damages in favor of Masimo.  Certain other patents asserted against Masimo were dismissed on summary judgment.

Lemelson Medical, Education & Research Foundation vs. RF Micro Devices et al. (CV-01-1440-PHX-ROS (D. Az, 2001).  Defended RF Micro Devices in patent infringement case involving multiple patents in the area of machine vision and bar codes.  Obtained favorable settlement.

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

Faroudja Laboratories v. Dwin Electronics, Inc., 76 F.Supp.2d 999 (N.D. Cal 1999).  Represented Plaintiff in patent infringement suit relating to video processing. Obtained favorable claim construction ruling and defeated defendants summary judgment motion of non-infringement.

Operator Services Company v. Gail F. Stradley et al., (Case No. 97-560252) (Tex. 1997).  Defended telecommunications company and employee accused of misappropriation of trade secrets. Obtained Summary Judgment against plaintiff, resulting in dismissal of all claims and a judgment of costs against plaintiff.

Meade Instruments Corporation v. Merlin Controls Corporation, (C.V. 94-407) (D. Col. 1994).  Represented manufacturer of telescopes regarding software control systems for telescopes, in action for misappropriation of trade secrets and related claims. Obtained temporary restraining order and stipulated permanent injunction.

Global Gaming Technology v. Trump Plaza Funding et al., (C.V. 94-2021) (D. New Jersey 1994) and IGT North America et al v. Global Gaming Technology (CV-S-94-00601-HDM) (D. Nev. 1994).  Defended slot machine manufacturer accused of infringing patent relating to slot machine computer control. Succeeded in obtaining stay of original suit brought against casino customers of manufacturers in favor or later filed action brought by manufacturers in Nevada. Case dismissed against client with no finding of infringement.

Abbott Laboratories v. Pacific Biotech Inc., 19 U.S.P.Q. 2d 1678 (S.D. Cal. 1991).  Established no patent infringement by manufacturer Pacific Biotech of immuno-assay test kits.

Atari Games Corp. v. Nintendo of America, Inc., (C.V. 88-4905 FMS) (N.D. Cal.).  Represented video game manufacturer accused of infringing patents and copyrights in hardware and software used to lock out unlicensed video games. Obtained voluntary dismissal of one patent infringement claim, and participated in three-week jury trial on remaining patent.

Articles, Speeches & Seminars

“Amendments to the Federal Rules of Civil Procedure” New Matter, Fall Quarter 1991, Co-Author

“Common Sense, Simplicity and Experimental Use Negation of the Public Use and On Sale Bars to Patentability,” 29 John Marshall L. Rev. 1, 1995, Co-Author

“Copyright or Patent Protection for Your Computer Software?” Orange County Business Journal, December 20, 1993

“Protection of Computer Software,” Orange County Business Forum, September 2, 1994

“Litigating the High-Tech Case In The High-Tech Courtroom: The Y2K Litigation Frontier,” Nevada Lawyer, May 1999, Co-Author

Representative Matters
Articles
Speeches & Seminars

Representative Matters

• CardiAQ Valve Technologies v. Neovasc (D. Mass 2016)  Tried trade secret misappropriation case relating to medical device technology, resulting in $70M jury verdict.  Plaintiff designed transcatheter mitral valve replacement device that was first ever to be placed in humans. Plaintiff hired Defendant to help assemble prototypes under an NDA. Defendant's lead engineer began designing a directly competing device while working on Plaintiff's prototypes, but decided not to tell Plaintiff as their relationship continued for six more months, during which Plaintiff shared numerous confidential designs. 
• 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)
• "What In-House Counsel and Internal Business Units Need to Know About IP Law," Association of Corporate Counsel (ACC) - Southern California In-House Counsel Conference, Anaheim, CA (January 27, 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).