Following are a few examples of the Intellectual Property Litigation cases our lawyers have handled for clients in State and Federal Courts. 

Although we have broken this summary into three subcategories (Patents, Copyrights, Trade Secrets/Trademarks/Trade Names), these subcategories and examples are merely illustrative, and do not represent all of the types of Intellectual Property lawsuits we handle for our clients. 

Patents

Represented a high tech start-up company and its founder in a lawsuit disputing their victory in a bidding procedure leading to the right to license patent-pending wireless antenna technology the founder had co-invented.  We sued the licensor (a University) in a different forum for specific performance of the agreement to license, raising patent ownership/inventorship issues in the process.  After winning both a temporary restraining order and preliminary injunction, we were able to favorably resolve both consolidated cases for our clients.

Represented a manufacturer of patented aircraft fasteners as licensor/plaintiff in a license action involving issues of patent validity, misuse, inequitable conduct, etc., as well as collateral trademark and trade secret license issues.  After the licensee countersued for royalty recoupment, we won a summary adjudication of issues motion on the validity issue, and specific enforcement of the audit clauses in the license agreements, and were able to favorably resolve this matter for our client.  

Represented an oil drilling tool manufacturer in a patent license dispute filed by a former employee.  The patent issues primarily involved inventorship and misuse.  We were able to successfully resolve this case for our client.

Represented (as local counsel) a prominent manufacturer of non-stick shelf covering materials in a patent dispute regarding conflicting patents owned by our client and a competitor who claimed various aspects of the materials.  We were able to favorably resolve this matter for our client after the Markman ruling. 

Represented several start-up high technology companies in an analytic and advisory role when they were confronted with potential patent infringement issues in the areas of, e.g., wireless technology, medical equipment and testing patents, etc. 

Represented in an analytic and advisory role one of the largest privately-held telecommunications companies regarding patents purportedly applicable to the operation of its business.  Our role included monitoring pending patent litigation and PTO reexamination proceedings, and formulating joint litigation strategies with other potential litigants.

Copyrights

Represented one of the largest privately-held telecommunications companies, one of its officers and many of its subsidiaries in a copyright infringement action (outside of California, by pro hac vice admission) seeking $500 million based on alleged misappropriation of a copyrighted computer program used to generate telephone bills.  We won dismissal of most of the subsidiaries by motion for summary judgment, and limited potential damages by a summary adjudication of issues motion based on the “profits attributable to infringement” theory.  We were able to favorably resolve this litigation for our clients while our summary adjudication of issues motions attacking plaintiffs’ ownership of the program and asserting fraud on the copyright office were pending.        

Represented a large newspaper publisher in copyright infringement litigation involving a wine grape graphic, and were able to favorably resolve the action for our client.

Represented a Taiwanese trading company in a matter regarding the alleged copyright infringement of dress designs, and were able to favorably resolve the matter for our client.

Trade Secrets/Trademarks/Trade Names

Represented (outside of California, by pro hac vice admission) one of the largest privately-held telecommunications companies and some of its officers against a several hundred million dollar claim by a purported joint venturer, including claims for misappropriation and conversion of intellectual property including trade secrets.  We won summary adjudication of issues motions as to several claims, and were able to successfully resolve this action for our clients by mediation after extensive discovery while we had other summary adjudication of issues motions pending. 

Represented a national manufacturer of accounting systems in several actions against former distributors to stop misappropriation of trade secrets.  After obtaining preliminary injunctions, we were able to successfully resolve these actions for our client.

Represented a Korean conglomerate in trademark infringement/unfair competition litigation where the plaintiff clothier attempted to halt the grand opening of our client's first department store in the U.S., after the opening had already been extensively promoted.  We defeated plaintiff's application for a temporary restraining order and preliminary injunction in state court, then removed plaintiffs' action to federal court and filed a trademark infringement action in federal court.  We resolved the matter for our client by winning our own preliminary and permanent injunctions against plaintiff on the contested trademark.

Represented a Canadian clothing manufacturer in a $10 million lawsuit brought by a competitor alleging claims including misappropriation of trade secrets, unfair competition, etc. based on a license agreement with plaintiff’s former executives authorizing them to manufacture and sell clothing under our client’s name, which the competitor characterized as a joint venture to open competing clothing stores in the U.S.  After conducting extensive discovery, and winning a motion adjudicating that plaintiff's attorney-client and work product privileges had been waived, we were able to favorably resolve this matter for our client.