Intellectual Property

Attorneys in the firm have handled the following representative matters:

Intellectual Property Counseling

  • Ongoing representation of Varian Medical Systems, Inc., a Fortune 1000 multinational developer and manufacturer of medical devices and software for cancer treatment, in trademark matters and other selected intellectual property issues
  • Ongoing representation of Kat Von D Beauty, Bite Beauty, Fenty Beauty by Rihanna, Marc Jacobs Beauty, Ole Henriksen of Denmark and parent company Kendo Brands in all aspects of intellectual property development and enforcement matters
  • Ongoing representation of Magpul Industries Corp., a leading supplier of accessories for firearms for military and recreational applications, in all aspects of intellectual property development and anti-counterfeiting matters
  • Ongoing representation of Method Products and its parent company Ecover, maker of environmentally conscious cleaning products, in all aspects of intellectual property development and enforcement matters
  • Advised Method Products on successful multi-platform social media marketing strategy (www.votedaisy.com)
  • Ongoing representation of OLLY PBC, a leading maker of vitamin, supplement and nutrition products,  in all aspects of intellectual property development and enforcement matters including the successful prosecution of the company’s application for trade dress protection of its unique bottle shape
  • Ongoing representation of San Diego Gas & Electric, Southern California Gas, US Gas & Power and parent company Sempra Energy, a Fortune 500 energy services company, in U.S. trademark clearance and prosecution matters
  • Ongoing representation of Varex Imaging, the world’s largest independent supplier of medical X-ray tubes and image processing solutions, in relation to the company’s trademark matters and other selected intellectual property issues
  • Representation of Fortune 500 consumer products company for all U.S. trademark clearance
  • Advised various ISPs, social media and other Internet intermediaries with liability issues  (copyright and trademark infringement, defamation, privacy, etc.)  relating to third party content in Europe and in the US
  • Filed several trademarks in France, Europe (CTM) and the US for different start-ups and larger companies in the tech and media industry, and assisted with the enforcement of these trademarks
  • Advised a major US-based company in the sportswear industry in relation to the sale of infringing products on major French and US-based online auction websites
  • Advised an Italian telecom company in relation to their planned advertising campaign (false advertising and privacy)
  • Trademark and IP counsel to Cedar Ridge Apple Ranch, LLC, producer and seller of the Indigeny Reserve line of alcoholic and nonalcoholic beverages
  • Advisor to an up-and-coming cosmetics and skincare company in the launch of its website, including incorporation of all levels of social media promotions and guest blogging activities
  • IP counsel to Limay Ventures, LLC, owner of the U.S. rights to the trademark La Bodeguita del Medio and the U.S. restaurant by that name, on, among other matters, issues arising from the ownership of the mark and its similarities to another trademark as affected by current U.S. embargoes
  • Trademark and IP counsel to Stemple Creek Ranch, a California-based cattle ranch producing organic grass-fed beef and lamb
  • Counsel to Passport Resorts, owner of a collection of high-end hotels and restaurants in IP matters arising in relation to its hotel and restaurant properties
  • Advisor to a well-known consumer products company on intellectual property issues related to the launch of its second and third worldwide company brands
  • Counsel to the largest online distributor of Nigerian entertainment content in U.S. trademark matters, copyright enforcement and Uniform Domain-Name Dispute-Resolution Policy proceedings
  • Representation of AReflectionOf, Inc. (aka The New Hive), a creator of the blank canvas for the web – a radically simple DIY self-publishing toolkit, with regard to its intellectual property matters
  • Counsel to an online start-up company with regard to brand selection and protection for its training programs and courses
  • Advisor to a start-up food company with regard to brand selection and protection for its food products for kids
  • Management of domestic and international trademark prosecution matters, including counseling, USPTO filings, management of local counsel, watch service monitoring, and content and trademark licensing, for Incase Designs Corp., a developer of personal electronics accessories
  • Counsel to venture-backed start-ups, RockYou, Xignite, Inc., and Glassdoor, Inc., in all U.S. and international trademark prosecution matters

Intellectual Property Enforcement

    • Development and implementation of comprehensive anti-counterfeiting program for Kat Von D Beauty including policing of online markets and customs enforcement
    • Counsel to major international personal electronics brand in relation to anti-counterfeiting efforts and enforcement of trademark rights in the United States
    • Represented Samsung in federal trademark infringement investigation and enforcement efforts
    • Represented Oracle USA, Inc., et al. in copyright litigation matter, in the United States District Court for the Northern District of California
    • Represented Ascential Software Corporation in employment, trade secret misappropriation and copyright infringement dispute in the United States District Court for the Northern District of California
    • Advised several US- and EU-based companies on the enforcement of their rights at the borders. Set up various IP infringement and gray market cross-border strategies, and filed various domestic and EU-wide requests for intervention with French customs
    • Assisted a US-based company in the catering industry with a DMCA claim; obtained a TRO and favorable settlement
    • Represented a large French company in the cosmetic industry against a large US-based online auction website before the Paris Court regarding the sale of infringing products on the website
    • Represented a US pharmaceutical company and its French subsidiary before the International Chamber of Commerce and obtained a favorable settlement in a patent infringement matter involving the interpretation of a patent licensing agreement
    • Represented a US-based company in the computer technology industry before several courts in France and obtained favorable judgments in various copyright, design and trademark infringement matters
    • Represented a French haute couture company and obtained several favorable judgments relating to the infringement of their copyrights, trademarks and designs
    • Obtained several favorable judgments for a well-known Italian designer in relation to the infringement of his designs
    • Obtained a favorable judgment for a well-known Italian soccer player against a major French newspaper in a defamation matter
    • Orsetti Seed Co., Inc. v. Halley Vick and Applied Genetics (Cal. Sup. Ct.). As lead counsel, obtained consent judgment against defendants in tomato breeding trade secret action.
    • Exoxemis v. Advanced Polymer Systems, Inc. (E.D. Ark.). As lead counsel, represented defendant in a trademark infringement action involving the “EXACT” trademark.
    • In re Thomas M. and Anna Valentine (N.D. Cal.). As lead counsel, represented Orsetti Seed Company in bankruptcy proceedings involving lettuce breeder.
    • Hewlett-Packard Co. v. Supreme Office Products (C.D. Cal.). As lead counsel, obtained temporary restraining order, preliminary injunction and consent decree in trademark counterfeiting action involving toner cartridges.
    • Hewlett-Packard Co. v. Rapid Office Products (M.D. Fla.). As lead counsel, obtained preliminary injunction, seizure order and consent decree in trademark counterfeiting action involving toner cartridges.
    • Chain Reactions Inc. v. OMNI Technology, Inc. (E.D. Cal.). As lead counsel, represented plaintiff in a breach of contract action involving planar loudspeaker technology.
    • Iris Medical Instruments v. International Remote Imaging Systems, Inc. (N.D. Cal.). As lead counsel, represented defendant in a trademark infringement action involving the “IRIS” trademark.
    • Solitec, Inc. v. Gerike and Zaferes (Cal.Sup.Ct.). Represented plaintiff in a breach of contract action involving semiconductor fabrication equipment.
    • SyQuest v. MicroStorage and Omron (N.D. Cal.). Represented Japanese defendants in action involving alleged misappropriation of disk drive trade secrets.
    • Hexcel Corp. v. TRE (N.D. Cal.). Represented manufacturer of metal honeycomb aircraft materials in trade secret misappropriation and antitrust action.
    • Golden Harvest Limited v. Dai Chung Video et al. (N.D. Cal.). As lead counsel, represented Chinese video retailers in defense of copyright infringement action.
    • Guangorena v. Nagy and Hansen (Cal.Sup.Ct.). Won jury verdict and $200,000 judgment after trial of trade secret misappropriation and breach of contract action involving sailboat winches.
    • Port of Stockton v. Industrial Service Corp. (Cal.Sup.Ct.). Won jury verdict that the client’s commercial lease had been renewed after trial of a lease renewal dispute for industrial waste processing company.
    • Spectravest v. Lerner Stores (N.D. Cal.). As lead counsel, obtained preliminary injunction in copyright infringement action involving printed sweatshirt designs.
    • Counsel to a well-known California winery in relation to claims against a former employee for trade dress infringement, trademark infringement and passing off, copyright infringement, theft of trade secrets, and breach of contract
    • Counsel for oversight and management of all online intellectual property enforcement efforts for a popular children’s entertainment franchise and a well-known fashion and lifestyle brand
    • Representation of a major technology company (smartphones and other products) with regard to online anti-counterfeiting efforts on various e-market websites
    • Representation of an internationally recognized dog trainer in a trademark infringement and right of publicity action
    • Representation of a Marin-based art gallery with regard to protection and enforcement of its intellectual property rights
    • Management of domestic and international trademark enforcement matters, including counseling, watch service monitoring, web monitoring, investigation, cease and desist demands, TTAB proceedings, litigation, and settlement negotiation, for Incase Designs Corp., a developer of personal electronics accessories
    • Co-counsel/trademark subject matter specialists with regard to geographical descriptiveness claims on behalf of a well-known California winery in a Trademark Trial and Appeal Board (TTAB) cancellation action
    • Representation in trademark prosecution and enforcement matters for a large multinational consulting and technology services firm
    • Representation of Testarossa Vineyards, LLC, a California producer of award-winning Chardonnays and Pinot Noirs, in an action for trademark infringement against an Italian winery and its U.S. importers

Patent Litigation

  • Corning Glass Works v. United States (Court of Claims). Represented the United States in patent infringement action involving four optical fiber patents.
  • Brenner & Koslow v. United States (Court of Claims). As lead counsel, successfully represented the United States in patent infringement action involving two bar coding and sorting patents.
  • Casler v. United States (Court of Claims). As lead counsel, obtained non-infringement judgment for the United States after two-week trial in patent infringement action involving electrical connectors.
  • Transamerica Corp. v. Transamerican Motors (D.Colo.). As lead counsel, obtained settlement that the client found favorable in trademark infringement dispute.
  • Magee Plastics v. Weber Aircraft (C.D. Cal.). As lead counsel, successfully represented patent owner in patent infringement dispute involving molded plastic armrests.
  • Beatty v. Safety Line, Inc. (N.D. Cal.). As lead counsel, obtained summary judgment for accused infringer in patent infringement action involving electrical connectors.
  • Digital Equipment Corp. v. System Industries (D.Mass.). Represented accused infringer in action involving four computer architecture patents.
  • Gould and Patlex v. NEC (N.D. Cal.). Represented patent owner in action involving three laser patents.
  • Gardco Manufacturing v. Herst Lighting (N.D. Cal.; 820 F.2d 1209). Represented plaintiff in declaratory judgment trial involving lighting fixture patents.
  • Industri AB Thule v. Yakima Products, Inc. (N.D. Cal.). As lead counsel, successfully opposed preliminary injunction motion in patent infringement action involving roofrack designs.
  • Soudronic v. Fael (E.D. Cal.). Represented patent owner in patent infringement action involving two can welding machine patents.
  • Marsh-McBirney v. Montedoro-Whitney (C.D. Cal.). Represented accused infringer in patent infringement action involving fluid flowmeters.
  • Applied Materials v. Gemini (N.D. Cal.). Represented defendant in a patent infringement action involving four epitaxial reactor patents.
  • Baer v. Bio-Rad Laboratories, Inc. (D.Mass.). As lead counsel, settled patent infringement action involving scanning laser microscopes.
  • Bush Industries v. O’Sullivan Industries (D.Del.; 772 F.Supp. 1442). As lead counsel, obtained summary judgment invalidating six patents for ready-to-assemble furniture designs.
  • Video Processing Technology v. For-A Company, Ltd. (N.D. Cal. and D.Mass). Represented plaintiff in action involving six video processing patents.
  • Miles, Inc. v. Green Cross Corp. (N.D. Cal.). Represented Miles in action involving two immune serum globulin patents.
  • Chase/Durus Industries v. Frommelt Industries (D.Iowa; 806 F.Supp. 1381). As lead counsel, obtained contempt judgment after trial for violation of injunction relating to a rotationally molded door patent.
  • Genprobe v. Microprobe (N.D. Cal.). Represented Microprobe in patent infringement action involving two ribosomal RNA hybridization assay patents.
  • Octalinear v. Cyberdyne (C.D. Cal.). As lead counsel, helped settle software patent dispute.
  • Brookstone Co., Inc. v. Restoration Hardware, Inc. (N.D. Cal.). As lead counsel, helped settle patent dispute involving a fan design.
  • Daniel Huang v. GC Technology, LLC d/b/a/ Phonesuit, Hali-Power Inc. and Case-Ari, LLC, d/b/a Case-Mate (C.D. Cal.) and Hali-Power, Inc. v. mStation Corporation, a/k/a mStation Inc. (N.D. N.Y.). As lead counsel, successfully enforced design patent rights for smartphone battery case manufacturer.
  • Epicenter, Inc. v. Aten Technology, Inc., Kontron America, Inc., Rose Electronics, Austin Hughes Solutions, Inc. (C.D. Cal.). Lead counsel for Austin Hughes in KVM (keyboardvideo- mouse) switch patent dispute.
  • Chromavision Medical Systems, Inc. (Clarient, Inc.) v. Applied Imaging Corp. (S.D. Cal.). As lead counsel, helped settle patent dispute involving automated technology for detecting cancer cells in tissue samples.
  • Reebok v. HYI (C.D. Cal). As lead counsel, helped settle patent dispute involving athletic shoe designs.
  • Nike v. Wal-Mart and HYI (E.D. Va.). Represented Wal-Mart and HYI at trial in patent dispute involving athletic shoe designs.
  • PharmaStem v. StemCyte (D.Del). As lead counsel, helped settle patent dispute involving preservation of fetal umbilical cord tissue.
  • StarSight, Inc. v. United Video, Inc. (D.Okla). Represented StarSight, Inc. in patent trial involving automated television programming guide.
  • Elsener v. Shin interference (USPTO). As lead interference counsel, helped settle interference for Tecan Trading Co., AG against Applera Corporation involving thermocycler technology.
  • Kloss v. Filiberti interference (USPTO). As lead interference counsel, helped settle interference for Spintek Gaming Technologies, Inc. against Bally Gaming involving coinweighing slot-machine hopper technology.
  • Leonard v. Cosman interference (USPTO). As lead interference counsel, obtained judgment of priority for the NIH in interleukin-2 receptor interference against Immunex.
  • Haseltine v. Wong-Staal interference (USPTO). As lead interference counsel, helped settle interference for the NIH against Dana Farber Cancer Institute involving isolation of the tat gene from the HIV virus.
  • Pastan v. Murphy interference (USPTO). As lead interference counsel, helped settle interference for the NIH against Seragen involving hybrid pseudomonas exotoxin molecules.
  • Alizon v. Chang interference (USPTO). Lead interference counsel for the NIH in recombinant HIV interference against Institut Pasteur.
  • Texas Instruments v. Hyundai Electronics, Inc. (N.D. Tex.). Represented accused infringer in patent action involving computer protocol and DRAM patents.
  • NEC v. Hyundai Electronics, Inc. (E.D. Va.). Represented accused infringer in patent action involving more than twenty DRAM and SRAM patents.
  • SGS Thomson Microelectronics v. Hyundai Electronics, Inc. (ITC and N.D. Tex.). Represented accused infringer in patent infringement action involving eight DRAM and SRAM patents.
  • In re Power Saving Integrated Circuits and Products Containing Same (ITC). Represented respondent ICS (Integrated Circuit Systems) in patent action against Cypress Semiconductor involving power-down circuits.
  • In re Certain Display Controllers (ITC and N.D. Cal.). As lead counsel, obtained a settlement that the client found favorable for respondent SmartASIC, Inc. in patent infringement action against Genesis Microchip, Inc. after purchasing key prior art patent and threatening a countersuit.
  • Goodchild v. Cohen interference (USPTO). As lead interference counsel, obtained judgment of priority for the NIH in interference against Hybridon involving phosphorothioate modified antisense compounds.
  • University of California v. Alza interference (USPTO). As lead interference counsel, obtained judgment of priority for the University of California in interference against Alza involving targeted therapeutic liposomes.
  • In the Matter of Certain Silicon Microphone Packages and Products Containing the Same (ITC; Knowles Electronics, Inc. v. MEMS Technology Berhad). As lead counsel, represented Memstech in a patent dispute involving packaging for silicon microphones.
  • Telemac Cellular Corp. v. Topp Telecom, Inc. (N.D. Cal. and U.S. Court of Appeals for the Federal Circuit; 247 F.2d 1316). As lead counsel, represented Telemac in a patent infringement action involving handset-based, prepaid wireless technology.
  • Telemac Corp. v. Phonetec LP (N.D. Cal.). As lead counsel, represented Telemac in a patent infringement action involving handset-based, prepaid wireless technology.
  • Telemac Corp. v. Teledigital, Inc. (N.D. Cal.). As lead counsel, successfully represented Telemac in a patent infringement action involving handset-based, prepaid wireless technology.
  • Telemac Corp. v. US/Intelicom, Inc. (N.D. Cal.; 185 F.Supp.2d 1084). As lead counsel, obtained a $7.4 million patent infringement judgment after trial in a case involving handset-based, prepaid wireless technology.
  • Luciw v. Chang interference (USPTO). As lead interference counsel, obtained judgment of priority for the National Institutes of Health (NIH) in a patent interference against Novartis/Chiron involving first-generation recombinant HIV hybridization assays developed by the Gallo laboratory.
  • Flexsys Americas LP v. Korea Kumho Petrochemical Co., Ltd., Kumho Tire Co., Inc., Kumho Tire USA, Inc. and Sinorgchem Co., Shandong (N.D. Ohio). As lead counsel for Kumho defendants, obtained summary judgment determination of non-infringement regarding tire antidegradant patents.
  • In the Matter of Certain Rubber Antidegradants II (ITC; Flexsys v. Sinorgchem and Korea Kumho Petrochemical Co.). As lead counsel, successfully obtained summary determination for Kumho in follow-on ITC tire antidegradant patent dispute.
  • In the Matter of Certain Rubber Antidegradants I (ITC; Flexsys v. Sinorgchem and Korea Kumho Petrochemical Co.). As lead counsel for Kumho, obtained dismissal after trial of ITC investigation involving tire antidegradant patents.
  • Aspex Eyewear, Inc. and Contour Optik, Inc. v. Zenni Optical LLC, (U.S. Court of Appeals for the Federal Circuit; 713 F.3d 1377). As lead counsel for Zenni, obtained affirmance of summary judgment on the basis of collateral estoppel for patents directed to magnetically attachable clip-on eyewear.