Intellectual Property

General Intellectual Property

A group of former athletes defending an appeal before the Ninth Circuit Court of Appeals by the NCAA from a trial that found that the NCAA could not deprive athletes of any compensation for their names, images, and likenesses.  O’Bannon v. NCAA, No. 09-CV-03329 (N.D. Cal.), Nos. 15-16601, 14-17068 (9th Cir.).

Leatherman Tool Group in a trademark and unfair competition appeal involving a punitive damages claim. Cooper Industries, Inc. v. Leatherman Tool Group, Inc., 121 S.Ct. 1678 (2001). See 2001 WL 43395 (brief) (U.S. Supreme Court).

Bertelsmann, A.G. in a case involving alleged copyright penalties and constitutional limits on the potential aggregation of statutory penalties. In re Napster, Inc. Copyright Litigation, 2006 WL 4122251 (N.D. Cal. Apr. 21, 2006) (U.S. District Court for the Northern District of California).

Life Fitness, a division of Brunswick, at trial and on appeal in an exercise treadmill patent and unfair competition dispute. Precor Inc. v. Life Fitness, a div. of Brunswick Corp., 13 Fed.Appx. 913 (Fed. Cir. 2001). See 2000 WL 34251125, 2000 WL 34251126 (briefs) (United States Court of Appeals for the Federal Circuit).

Review and negotiate license agreement with governmental institution.

ITT Corporation/Hartford Insurance in an analyses of the intellectual property, including copyright, and antitrust issues of a proposed business strategy.

The New York Times Company in a case presenting the question of copyright liability of electronic databases for reproduction of articles written by freelance authors. New York Times Co. v. Tasini, 533 U.S. 483 (2001). See 2000 WL 33979511, 2000 WL 33979513, 2001 WL 267401, 2001 WL 27573 (briefs) (U.S. Supreme Court).

The Digital Media Association (whose members include Amazon, AOL, Apple, Microsoft, Motorola, MTV Networks, Nokia, Pandora Media, Real Networks, Sony Connect, Yahoo! and YouTube) in a case presenting the lawfulness of copyright royalty rates for commercial webcasting services. Intercollegiate Broadcast System, Inc. v. Copyright Royalty Bd., 571 F.3d 69 (D.C. Cir. 2009); 574 F.3d 748 (D.C. Cir. 2009).

Patents

Represented a major consumer electronics company in ITC investigation and secured a no violation finding and termination in client's favor. Certain Audiovisual Components and Products Containing the Same, Inv. No. 337-TA-837.

Filed amicus brief for biotechnology trade organization supporting plaintiff in Supreme Court case concerning determination of venue for patent cases. TC Heartland LLC v. Kraft Foods Group Brands LLC, Case No. 16-341 (2017).

Filed amicus brief for biotechnology trade organization in Supreme Court case on constitutionality of portion of America Invents Act (AIA). Oil States Energy Services LLC v. Greene’s Energy Group LLC, Case No. 16-712 (2017).

Represented the Martin Luther King, Jr. Center for Nonviolent Social Change in defense of the Center's right to use intellectual property, including the writings and spoken words of Dr. Martin Luther King, Jr. Estate of Martin Luther King, Jr. v. Martin Luther King, Jr. Center for Nonviolent Social Change (Ga. Sup. Ct.).

Represented pharmaceutical manufacturer in Abbreviated New Drug Application case involving drug with $400 million in annual revenue. Favorable decision on one patent, unfavorable decision on another. United Therapeutics Corp. v. Sandoz Inc. (D.N.J.).

Represented consumer electronics company in series of ITC and federal district court actions, confirming the client’s right to continue importation into the United States. Certain Integrated Circuits, Chipsets and Products Containing Same Including Televisions, Media Players and Cameras, Inv. Nos. 337-TA-709, 337-TA-786.

An inventor in a constitutional challenge to the First-Inventor-To-File provisions of the America Invents Act of 2011. Madstad Engineering, Inc. v. U.S. Patent & Trademark Office, No. 8:12-CV-01589-SDM (M.D. Fla.).

A major technology firm in a patent infringement dispute.

Assisted home health care company in analysis of its intellectual property portfolio and strategy for monetization thereof.

A group of medical researchers and chemists in a patent infringement action involving an implantable drug delivery vehicle. Saffran v. Johnson & Johnson, No. 2012-1043 (Fed. Cir.).

Litton Systems in a patent infringement case. Honeywell, Inc. v. Litton Systems, Inc., 520 U.S. 1111 (1997). See 1997 WL 33562040 (brief) (U.S. Supreme Court).

A businessman in his suit against former business partners for failing to pay royalties on a patent portfolio.

Litton Systems in a case involving the doctrine of “equivalents” in patent law. Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997). See 1996 WL 253319 (brief) (U.S. Supreme Court).

Baxter/Allegiance Corporation in trial of thermal therapy patent infringement case. Plaintiff dismissed case with prejudice after pre-trial conference, and attorneys’ fees and costs awarded to Baxter. Seabrook v. Baxter/Allegiance.

An inventor in his constitutional challenge to the “first-to-file” provisions in the America Invents Act.

Litton Systems in a case presenting the question whether the Seventh Amendment requires trial by jury of issues of patent construction in patent infringement actions. Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). See 1995 WL 702829 (brief) (U.S. Supreme Court).

A specialty and generic pharmaceuticals company focused on increasing access to affordable medicines for consumers in its Patent Trial and Appeal Board inter partes review challenge to a pharmaceutical patent.

Chiron Corporation in a patent dispute concerning polynucleotide probe assays.

An inventor in a patent infringement case involving the question of whether the interpretation of a patent claim, as well as the resolution of conflicting testimony with respect to literal infringement and infringement under the doctrine of equivalents, may be deemed issues of “law” amenable to summary judgment. Gussin v. Nintendo of America, Inc., 517 U.S. 1166 (1996). See 1995 WL 733488 (brief) (U.S. Supreme Court).

Miles Therapeutics in optical systems patent case alleging infringement of Johnson & Johnson flow cytometry patents. Ortho Diagnostic Systems, Inc. v. Miles Inc.