REPRESENTATIVE EXPERIENCE
IP Litigation
Represented the regents of a public research university in a willful direct and indirect infringement of the method claims of a U.S. patent that claims a method for encoding data to be written to a magnetic disk in an HDD that substantially increases the accuracy with which the data are subsequently read off of those magnetic disks, thereby allowing for increased data density.
Acted for a manufacturer of quartz surfaces in appealing the decisions of the Australian Trade Marks Office to the Federal Court of Australia. Successfully defended two trade mark oppositions and a cancellation action filed by a competitor.
Advised an Australian company that manufactures chemicals used in water treatment (particularly mining) in relation to Patent Oppositions in the Australian Patents Office, and patent invalidity and patent infringement proceedings in the Federal and High Court. Acted on various proceedings involving innovation and standard patents and patents of addition.
Represented the venture behind the creative team of a concept store in the defense of their trademarks against a pottery and culinary art store owning a similar trademark and a German company owning a similar trademark in approaching services.
Defended an online travel provider in a patent infringement suit involving travel services software systems. Obtained partial summary judgment of patent invalidity and non-infringement, final summary judgment of patent ineligibility, exceptional case order, and fee award. Affirmed on appeal.
Represented an online native advertising platform in a lawsuit brought by a competitor seeking to shut down the platform. The matter was important not just for our client’s ability to continue operating, but for all Internet service providers which are protected by the federal grant of immunity for user-generated content under the Communications Decency Act. After expedited discovery, defeated a preliminary injunction motion in New Jersey federal court.
Defended a vacuum robot supplier and a vacuum robot designer/manufacturer against patent infringement claims by a competitor covering robotic vacuum cleaner technology. While developing excellent non-infringement and invalidity arguments against plaintiff during litigation, we also countersued in China and the United States with our own patents. After six months of intense litigation, obtained a very favorable settlement for our clients, as the settlement terms of the two previously settled respondents were far more limiting than our clients and even banned from entering the U.S. market.
Assisted a German company in litigation in relation to numerous patents acquired by our client, further to the assignor of such patents acting in bad faith and having assigned its patents twice to two subsequent assignees.
Represented a manufacturer of industrial material in the aftermath of the termination of a distribution agreement in France and infringement litigation further to the continued unauthorized use of its trademark by a former licensee.
Represented a pesticide manufacturer in pursuit of a Fifth Amendment taking claim associated with an EPA action.
Defended the creator of a unique, shaped bottle for tequila, and a U.S. liquor importer, against trade dress infringement allegations brought by the owner of a similar bottle for tequila.
Represented a private university in Pennsylvania in a matter before the U.S District Court for the Northern District of California for willful direct and indirect infringement of the method claims of two U.S. patents. Previously enforced the patents against a technology and semiconductor group and obtained a US$1.17 billion verdict in our client’s favor, one of the largest verdicts in the United States in 2012 as reported by The National Law Journal and one of the largest ever in a patent case.
Represented a leading environmental services company in a federal court action before the U.S. District Court for the Eastern District of Washington against former client employees and their new competing business. Our client alleged claims under the Defend Trade Secrets Act, breach of contract, breach of duty of loyalty, and unjust enrichment. Obtained preliminary and permanent injunctions and a confidential settlement prohibiting further unfair competition and prohibiting the use and obtaining the return of all trade secrets at issue in the case.
Represented an internationally renowned German art gallery regarding an alleged art photograph infringement. The litigation presented interesting issues in relation to the international locations of the different parties involved and the specific protection of photographic works by the French Intellectual Property Law.
Represented a not-for-profit corporation formed to manage intellectual property developed at a state university in district court litigation asserting a patent directed to the efficient use of network bandwidth over the Internet.
Represented a state university and successfully obtained summary judgment of contract breach, which resulted in a favorable settlement to the client on the eve of trial.
Defended a footwear company in a federal court action before the U.S. District Court for the Western District of Washington. Plaintiffs objected to our client's name for a shoe, and sued for violation of the Washington Publicity Rights Act, false designation of origin in violation of the Lanham Act, violation of the Washington Consumer Protection Act, and unjust enrichment. Prevailed on summary judgment, arguing that all claims were barred by the applicable statutes of limitations and laches due to plaintiffs’ knowing delay in asserting their claims.
Developed a strategy for responding to discovery demands in a suspected IP theft dispute to reach a favorable settlement on behalf of a software company.
Represented a developer of cybersecurity and anti-malware software as plaintiff in an unfair competition/commercial disparagement claim before the U.S. District Court for the Northern District of California. Claims alleged false advertising under the Lanham Act by a competitor that blocked and disabled consumers' ability to download client's software product.
Represented a biopharmaceutical company focused on RNA interference therapeutics in seeking declaratory judgment of non-infringement of five patents by client's treatment for polyneuropathy in people with hereditary transthyretin-mediated amyloidosis.
Defended an award-winning developer of software applications for enhancing cybersecurity defense protocols for the finance, banking, retail, and higher education industries in a patent infringement action.
Acted as counsel for a Taiwanese electronics company in defense against various Trademark Opposition Applications that an international data management company filed with the TTAB against our client for its use of a mark in connection with its data storage, management, and recovery services. Assisted client with defending against applications and resolved this matter successfully for the client, with its marks issued in the United States, Europe, and Taiwan.
Advised a jewelry firm on a trademark dispute.
Represented an American lifestyle retailer in opposing a story-driven fashion attraction's trademark applications for a term. For more than 20 years, our client has used a similar mark and also owns many complementary marks for personal care and related products. The attraction applied to register its term with overlapping goods and services to those of our client.
Defended a global online retailer against alleged infringement of three patents related to our client’s X-ray video annotation service. Defeated preliminary injunction and obtained a stay of the case pending proceedings to invalidate the patent before the U.S. Patent Office.
Handled the IP portfolio of patents and trademarks for a leader in presentation technology.
Advised a manufacturer of child-safety products in relation to patent infringement actions and cancellation proceedings against several competitors' patents/E.U. patents concerning child-restraint systems.
Acted on behalf of a wholesale company in respect of design and trademark protection strategies, IP portfolio management, and in a Supreme Court proceeding against Euromark Limited.
Represented a leading Scandinavian workwear brand in a high-profile trademark dispute against an Italian luxury fashion label in the U.S. District Court for the Northern District of Illinois involving our client’s iconic stripe mark.
Provided counsel regarding the trademark portfolio for a “fast-casual” concept for a famous restaurant franchisor/operator. Provided clearance and counseling related to use and registration of the new marks and logos to be used in the expansion of this concept.
Advised the European division of a South Korean automaker on unexhausted trademark rights to stop grey market imports from various Balkan countries into the European Economic Area.
Served as counsel for a leading yogurt brand in its global expansion and as primary U.S. and global trademark and copyright counsel for more than 10 years. Obtained multiple wins for the client globally by ensuring no infringement of its valuable brand.
Defended client’s trademark registration in a cancellation proceeding that resulted in maintaining the registration of our client’s mark and abandonment of the petitioner’s application. Settled during discovery period pursuant to confidential settlement agreement.
Represented opponent in opposition and opposition appeal proceedings against a European patent in the field of cryptography and security chip technology.
Represented a fashion accessories company in its enforcement and protection of the overall look of its iconic bag.
Advised a microscope manufacturer in relation to various trademark licensing issues.
Prepared trademark assignment and license agreements distributing assets and use of long-held trademarks of a nonprofit trade association for the magazine media industry as the organization stripped down its operations.
Represented a supermarket chain in its declaratory judgment lawsuit for non-infringement of defendant’s trademark.
Advised global sporting goods brands on E.U. and U.K. trademark, design, and copyright matters, including litigation and enforcement at the U.K. IPEC and U.K. High Court, EUIPO Boards of Appeal, EU General Court, and Court of Justice.
Represented a designer of sporting gear and equipment in patent infringement (preliminary injunction) and invalidity proceedings concerning a new helmet technology that is designed to protect from oblique impacts.
Advised a leading and iconic Australian swimwear and lifestyle brand in copyright infringement proceedings which were issued in Australia, Canada, and France regarding third parties that allegedly infringed our client's fabric prints.
Achieved a willful patent infringement verdict for a global provider of wireless technology products and solutions in a five-day jury trial. The jury awarded our client a royalty amounting to 99% of the requested damages; the court enhanced damages by 30% based on a willfulness finding.
Advised a motorsports parts supplier in trademark infringement and cancellation proceedings before the Deutsche Patent- und Markenamt and European Union Intellectual Property Office concerning a bad-faith application.
Served as counsel for a group of building products companies in a Lanham Act and trade secret dispute involving chemical fire retardants. A competitor alleged that our client wrongfully acquired trade secret formula for, and application of, fire retardant chemical for cedar shingles. The inventor of the alleged secret formula had previously applied for a patent disclosing a fire retardant formula. Our client argued that the formula had been legally acquired from the inventor and was generally known to practitioners in the field.
Maintained the trademark portfolio for a global nonprofit organization. Successfully challenged the unauthorized use of the client’s mark by an organization that separated from the client.
Represented a manufacturer of safety razors and personal care products in defending the exclusivity of its famous billion-dollar brand. The matter resolved favorably for our client and petitioner abandoned its application to register a competing mark.
Represented a state university in a US$500 million dispute before the U.S. District Court for the District of Oregon and the Trademark Trial and Appeal Board involving the intellectual property related to a suite of early-language learning assessments. Research related to these educational tools was funded by federal and state grant funds, including the No Child Left Behind Act. The dispute lasted more than six years and was resolved with a favorable settlement in August 2018.
Advised the owner of a trademark for beer in suing a competitor for trademark infringement; defendant successfully filed a cross-claim to cancel our client's trademark. Filed an appeal to the Full Federal Court.
Defended an American public broadcasting group against claims that our client owed US$19 million in allegedly unpaid royalties for an animated public TV series based on children's books by a well-known author. After trial, the court entered judgment in 2018 of no actual damages and US$100 in nominal damages.
Defended a global integrated entertainment and media company promoting American professional wrestling against claims of patent infringement made by non-practicing entities. Resolved these and other matters with favorable settlements, often by enforcing a third party to defend and indemnify.
Represented one of the largest software companies in the United States solely focused on providing integrated and technology services to the public section in a dispute over a domain name that was confusingly similar to client’s trademark registration. Defendant failed to use the domain name in connection with the bona fide offering of goods and services, instead using it to solicit personal information through a website that encouraged users to upload documents for payment to local government. Received a favorable decision at the forum; the domain name was transferred to our client.
Represented opponent in opposition and opposition appeal proceedings against a European patent in the field of dental technology. The patent was revoked by the Board of Appeal of the European Patent Office.
Counselled a client in a strategic campaign to prevent its customers from patent assertions by bringing, on a regular basis, oppositions against European patents of a non-practicing entity that threatened client's customers.
Advised a Sweden-based global medical devices manufacturer on IP enforcement issues in the United Kingdom and Europe, including enforcing its design rights against competitors with respect to a range of successful wound care products. Also advised the client on a trademark dispute with a U.K. manufacturer of parallel imported wound care products.
