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).

Representative Matters

Medtronic PLC v. Masimo Corp. (IPR2016-00057) (2016). Represented Masimo in a pivotal IPR requested by Medtronic of Masimo’s U.S. Patent relating to medical signal processing. Obtained a denial to institute the IPR on the merits, preserving Masimo’s rights in this patent.

Medtronic PLC v. Masimo Corp. (IPR2016-00058) (2016). Represented Masimo in this second IPR requested by Medtronic PLC of Masimo’s U.S. Patent relating to medical signal processing. Obtained a denial to institute this IPR on the merits.

Gentherm Canada Ltd. v. IGB Automotive Ltd. (CV-11536-AJT-APP) (E.D. Mich 2016).  Represented Gentherm in patent litigation against its competitor IGB Automotive for infringement of Gentherm’s important U.S. Patents. After the litigation started, IGB pursued Inter Partes Review with the patent office of many of the patents-in-suit. Preserved an important patent portfolio for Gentherm.

Select Comfort Corporation v. Gentherm, Inc. (CV-2314) (D. Minn 2015). Represented Gentherm in Declaratory Judgment action attacking Gentherm’s important U.S. Patents. Obtained stipulation to dismiss all claims and counterclaims.

IGB Automotive Ltd. v. Gentherm GmbH (IPR2014-00667) (2015). Represented Gentherm in IPR requested by IGB of all six claims in Gentherm’s U.S. Patent which relates to climate control systems for automobile seats. Prevailed in showing that all six claims were patentable over the asserted prior art.

IGB Automotive Ltd. v. Gentherm GmbH  (IPR2014-00668) (2015). Represented Gentherm in IPR requested by IGB of claims in Gentherm’s U.S. Patent which relates to climate control systems for automobile seats.  The Board instituted IPR on all but one of the challenged claims.  The Board ultimately rejected IGB’s challenge as to seven of the claims, agreeing with Gentherm that the asserted prior art did not render the claims unpatentable.

Masimo Corp. v. Shenzhen Mindray Bio-Medical Tech. Co. Ltd. (12-cv-02206) (C.D. Cal. 2015). Successfully struck Mindray's tortious interference counterclaim, and obtained dismissal of numerous antitrust and inequitable conduct counterclaims.  Defeated numerous Mindray motions. 

IGB Automotive Ltd. v. Gentherm GmbH (IPR2014-00666) (2014). Represented Gentherm. IGB requested Inter Partes Review (“IPR”) of all twelve claims in Gentherm’s U.S. Patent which relates to climate control systems for automobile seats.  Obtained denial of review of many claims, showing that IGB had failed to show a reasonable likelihood of proving unpatentability.

IGB Automotive Ltd. v. Gentherm GmbH  (IPR2014-00663) (2014). Represented Gentherm in IPR requested by IGB of 17 claims in Gentherm’s U.S. Patent which relates to climate control systems for automobile seats.  Obtained denial to institute an IPR on any of the challenged claims.

IGB Automotive Ltd. v. Gentherm GmbH (IPR2014-00664) (2014). Represented Gentherm in IPR requested by IGB of 19 claims in Gentherm’s U.S. Patent which relates to climate control systems for automobile seats. Although the Board instituted review of eight of the challenged claims, Mr. Jensen prevailed in obtaining denial to institute IPR on the remaining eleven challenged claims.

Dominion Assets LLC v. Masimo Corporation and Cercacor Laboratories, Inc. (12-cv-02773-BLF, 2014 WL 2937058) (N.D. Cal 2014). Represented Masimo and Cercacor in patent infringement action brought by Dominion Assets for infringement of U.S. Patents relating to determination of blood analytes.  Obtained dismissal of case for lack of standing.

U.S. Ex. Rel Ruhe, Serwitz, and Catala v. Masimo Corporation (2:10-cv-08169-CJC-VBK, 977 F. Supp.2d 981) (C.D. Cal 2013). Defended Masimo in False Claim Act (Qui Tam)“whistleblower” case brought by former employees of Masimo. Obtained Summary Judgment in Masimo’s favor. Case affirmed on appeal. 

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 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)

Representative Matters

Victoria’s Secret Stores Brand Management, Inc. v. Urban Decay Cosmetics, 2:12-cv-00693-GLF-MRA (S.D. Ohio)

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 (C.D. Cal) 

Represented Plaintiff, Broadcom Corporation, in trademark infringement suit. Case settled favorably for client.

Illumina, Inc. v. Meridian Bioscience, Inc. (TTAB)

Represented Illumina in oppositions and cancellation actions against Meridian Bioscience's registrations and applications for the marks ILLUMIGENE and ILLUMIPRO. Received complete victory after full trial briefing and trial decision on the merits by the Trademark Trial and Appeal Board.

Illumina, Inc. v. Boston Scientific Neuromodulation Corporation (TTAB)

Represented Illumina in opposition proceeding relating to Boston Scientific's application for the mark ILLUMINA 3D. Case settled favorably for client. 

My Horse Player, Inc. (TTAB)

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.

Hurley International LLC v. Volta (TTAB).

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. Listed by Allen’s Trademark Digest as one of the top ten trademark cases before the TTAB that year.

Jose Remacle (TTAB)

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.

Speeches & Seminars

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

"What We've Got Here is a Failure to Communicate" – False Advertising in the Social Media Space, Association of Corporate Counsel (ACC) (2016)

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:

Amazon's clear labelling defeats MTM trademark claims, World Trademark Review, April 2016

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

Articles, Speeches & Seminars

• "Deep Machine Learning," Calit2 Igniting Technology, Irvine, CA (June 2016)
• "Can I Still Get a Patent on That? Best Practices for Protecting Innovations in the Software, High Technology and Biotech Industries," IP Impact 2013 Seminar, Palo Alto, CA (September 2013)
• "Latest IP Issues Affecting High-Tech Companies," IP Impact 2012 Seminar, Palo Alto, CA (September 2012)
• "How to Jump Start Your Company's Patent Program," IP Impact 2011 Seminar, Menlo Park, CA (September 2011)
• "Recent Supreme Court and Federal Circuit Decisions You Need to Know About," IP Impact 2010 Seminar, Menlo Park, CA (July 2010)
• "Patentable Subject Matter after Bilski," Orange County Patent Law Association (OCPLA) (2010)
• "Patent program management - How to effectively identify and assess inventions, avoid losing patent rights, and administer patent committees," IP Impact 2010 Seminar, Menlo Park, CA (July 2010)
• Author, "Protection of Computer Technology" chapter in CEB’s second edition of "Trade Secrets Practice in California"
• Lecturer at Orange Country Patent Law Association programs, and various seminars, on various topics involving patent and trade secret protection for computer technologies

Articles

Co-author, Drosophila XBP1 Expression Reporter Marks Cells under Endoplasmic Reticulum Stress and with High Protein Secretory Load, PLOS ONE, September 2013. 

Articles

Finding Certainty in Cert: An Empirical Analysis of the Factors Involved in Supreme Court Certiorari Decisions from 2001-2015, Villanova Law Review, Forthcoming (Adam Feldman and Alexander Kappner)