Representative Matters - Intellectual Property

Intellectual Property

Representative Matters

Patent Litigation (including ITC Proceedings)

  • Won summary judgment of noninfringement of nine JVC Kenwood optical disc patents for client Nero, based on patent exhaustion and end user licenses containing express releases, including successfully moving to strike JVC’s 96-page expert declaration as inconsistent with its infringement contentions. The decision was unanimously affirmed on appeal in a precedential opinion.
  • Won reversal by the Federal Circuit Court of Appeals of district court's denial of attorneys' fees, with a unanimous panel issuing a precedential opinion holding that the district court had abused its discretion.
  • Won summary judgment of noninfringement of both asserted patents and invalidity of one asserted patent as being anticipated by the prior art for client VIZIO in case accusing the video processing algorithms used by chipsets in VIZIO's televisions.
  • Won summary judgment of invalidity for client VIZIO, invalidating a patent on portable input-output computer systems based on inadequate written description and failure to claim what the inventor regarded as his invention.
  • Won summary judgment in favor of client VIZIO in a patent case asserting infringement of VIZIO’s tablet computers and smart televisions, invalidating all asserted claims of the Lochner Technologies patent for lack of adequate written description and failure to claim what the applicants regarded as their invention, in the U.S. District Court for the Central District of California.
  • Won a complete defense victory in the ITC for respondent VIZIO, preventing exclusion of VIZIO’s blu-ray players
  • Won summary judgment for defendant Roche invalidating three Stanford HIV test patents for obviousness, ending Stanford's multimillion dollar patent infringement suit, won the case on appeal to the Federal Circuit and before the en banc Court on rehearing, and won decisive victory in favor of Roche in the U.S. Supreme Court.
  • Won a complete defense victory for defendant Intrado in a trial over patent infringement and indemnity issues involving telecommunications patents and their application to the routing of wireless telephone calls.
  • Obtained favorable Markman ruling in the Eastern District of Texas for defendant VIZIO, resulting in judgment of noninfringement by VIZIO’s DVD and Blu-Ray players.
  • Won summary judgment of noninfringement for defendant Nike, defeating claims that Nike infringed a rival’s design patent with its AIR JORDAN XVII basketball shoes, and won the appeal to the Federal Circuit.
  • Defeated multimillion-dollar patent royalties claim and obtained compensation from plaintiff in excess of $1 million on behalf of defendant, a major software developer.
  • Won a defense victory for Genentech in multidistrict patent litigation over Columbia University’s recombinant DNA patent.  Columbia conceded the case on the eve of defendants’ summary judgment motion on obviousness-type double patenting, giving Genentech and the other defendants a broad covenant not to sue on the patent at issue.

Trademark Litigation

  • Won summary judgment of no willfulness for use of the trademarks Razor LED and Razor Thin by client, Defendant VIZIO, with its line of flat-panel televisions. As Plaintiff could not show VIZIO selected the marks willfully, to trade off the value of Plaintiff’s “Razor” and “Razr” marks, Plaintiff was barred from seeking disgorgement of VIZIO’s substantial profits. The case settled a week before trial with no payment by VIZIO and instead, Plaintiff buying VIZIO's Razor LED and Razor Thin marks.
  • Won a directed verdict for defendant Mattel at the close of the plaintiff’s case, in a trademark infringement trial involving Mattel’s Pearl Beach BARBIE doll line, and won the appeal to the Ninth Circuit.
  • Achieved a substantial payment for plaintiff K-Swiss, as well as a consent decree and worldwide permanent injunction, on the eve of a five-week jury trial against Payless ShoeSource for multiple counts of infringement of K-Swiss’ five-stripe and toe box trademarks and Classic trade dress.
  • Won a jury verdict of several million dollars, a permanent injunction and attorneys’ fees for plaintiff Mattel after a jury trial against a maker of toy cars who infringed Mattel’s HOT WHEELS trade dress.
  • Won a defense victory for defendant Nike in its landmark trademark case against Adidas over Nike's right to use two stripes on athletic apparel; Adidas filed a broad “covenant not to sue” releasing Nike from all past trademark claims and its own infringement counterclaims and committing not to sue Nike over any two-striped athletic apparel or shoes throughout the United States.
  • Achieved a permanent injunction and damages for Red Bull against the maker and distributor of Arctic Bull energy drinks in a dispute over use of a mark confusingly similar to the RED BULL mark and trade dress.
  • Achieved a permanent injunction and damages for SHFL entertainment, against a distributor of games infringing SHFL’s THREE CARD POKER, CASINO WARS and PAIR PLUS trademarks and THREE CARD POKER and CASINO WARS copyrighted layouts.

Copyright Litigation

  • Won unanimous defense verdict for DIC Animation City, Hallmark, United Feature Syndicate, Mattel and Live Film and Mediaworks, Inc. in a several week jury trial over copyright infringement claims by the widow of a famous screenwriter, upheld on appeal to the Ninth Circuit.
  • Won summary judgment for defendants the Disney Channel, Warner Home Video and others in a copyright infringement suit over shows and products derived from children’s animated television programs.
  • Won summary judgments in defendant Mattel’s favor in both federal and state court suits when American First Run Studios accused Mattel of infringing its “Tarzan” copyrights and other rights with Mattel’s Tarzan action figures, and won the appeals of both judgments in the Ninth Circuit and California Court of Appeals, respectively.
  • Won cross-border actions in the U.S. and Germany against Greiner & Hausser, a German toy company that sought to rescind its assignment of copyrights and patent rights in the Bild Lilli doll used in the creation of Mattel’s BARBIE line.
  • Won summary judgment of noninfringement and $500,000 in sanctions, upheld on the merits by the Ninth Circuit, when Mattel was targeted in a frivolous copyright infringement suit in which the plaintiff sought $2 billion for alleged infringement of its fashion doll copyright by certain Mattel BARBIE dolls.
  • Won reversal of a preliminary injunction on appeal for defendant Kaiser Permanente, after taking over a case in which the company had been preliminarily enjoined from using its library of advertising and marketing photographs on the ground that these works (already paid for by Kaiser) were owned by the photographers; after the Ninth Circuit reversed the injunction the case settled.

Trade Secret and Unfair Business Practices Litigation

  • Won a three month jury trial for CalComp involving computer protocol in high-speed color printers, obtaining a directed verdict on multimillion dollar trade secret and fraud claims and resolving the small remaining contract claim for a partial offset of CalComp’s cost recovery from plaintiff.
  • Won substantial compensatory and punitive damages for plaintiff Osterloh & Durham Insurance after a two-month trial over theft of trade secrets, conversion and interference with business relationships.
  • Won a unanimous jury verdict awarding several million dollars in compensatory and punitive damages to plaintiff Hathaway Dinwiddie Construction Company after a three-month jury trial involving fraud, contract and unfair business practice claims, upheld by the Ninth Circuit.
  • Won a quick dismissal for Disney of a case under the California Unfair Practices Act over Disney’s alleged failure to warn children of the dangers of smoking in its G-rated animated films (spanning some 40 years) in which animated characters were shown smoking, and avoided a class action, despite the success of such suits against other companies.
  • Won summary judgment for Mattel in a suit for alleged monopolization of the fashion doll market under the Sherman Act and California Cartwright Act.
  • Successfully defended Fleishman Hillard over public disclosure issues in a high profile food contamination suit against Jack in the Box, arising out of Fleishman Hillard’s role as public relations advisor to the company after several patrons were infected with E. coli bacteria following their consumption of meals at Jack in the Box.

Appellate Practice

  • Won affirmance in the Federal Circuit of a summary judgment of patent noninfringement on behalf of Nike, after extensive oral argument on the impact of certain drafting conventions in design patent cases.
  • Won affirmance of defense judgment in favor of Roche and denial of rehearing before the en banc Federal Circuit and the United States Supreme Court in a patent infringement and ownership dispute against Stanford University.
  • Won affirmance by the Ninth Circuit of defense verdict in favor of Mattel, in an appeal from a trademark trial involving reverse confusion.
  • Won reversal and remand for Abbott Laboratories in a patent case taken over post-trial, with the Federal Circuit affirming a post-judgment ruling setting aside willfulness, vacating an injunction prohibiting Abbott from selling its HCV genotyping products, and reversing and remanding for a new trial on invalidity.
  • Won affirmance of summary judgment by the Ninth Circuit in favor of Mattel, in a copyright action over alleged infringement by Mattel's TARZAN dolls.
  • Won reversal by the Ninth Circuit of a preliminary injunction entered against Kaiser Permanente in a copyright infringement suit taken over by the firm.
  • Won affirmance on the merits by the Ninth Circuit of Rule 11 sanctions award against opponent who filed a frivolous copyright infringement suit over Mattel's BARBIE dolls.

Life Sciences

  • Won summary judgment for defendant Roche, invalidating three Stanford HIV test patents for obviousness, won the case on appeal to the Federal Circuit and before the en banc Court on rehearing, and won decisive victory in favor of Roche in the U.S. Supreme Court.
  • Won partial summary judgment for defendant Monsanto in a patent infringement case over bovine growth hormone, eliminating half of the products at issue; case settled on the eve of trial.
  • Won post-trial for defendant Abbott Laboratories in a patent infringement case lost at trial by another firm, convincing the district judge to set aside the jury's verdict of willfulness and convincing the Federal Circuit to uphold that ruling, vacate an injunction prohibiting the sale of Abbott's HCV genotyping products and reverse and remand the case for a new trial on an invalidity issue; settlement followed.
  • Won a defense victory for Genentech in multidistrict patent litigation over Columbia University's recombinant DNA patent, obtaining a broad covenant not to sue on the patent at issue.
  • Achieved substantial settlement for plaintiff Sonique Surgical Systems in dispute over licensing of ultrasonic liposuction patents.
  • Represented a major pharmaceutical company in a Paragraph IV litigation under the Hatch-Waxman Act against six companies, all competing for the ability to manufacture the generic version of the client's branded product.  Protected the client’s highly profitable revenue stream generated by the branded product and obtained a favorable settlement with all six generic manufacturers.
  • Advised a major pharmaceutical company desiring to manufacture a generic product on issues relating to the Paragraph IV letter and the timing and filing of the Abbreviated New Drug Application under the Hatch-Waxman Act.
  • Conducted confidential analysis for investment firm seeking to invest in pharmaceutical companies.  Advised on the timing and effects of revenue streams taking into account various facets including FDA approvals, the Hatch-Waxman Act, pending and possible litigations, capitalization, strength of patents and market pressures.