Trial and Litigation

In our trial and litigation practice, we handle PTO contested proceedings, matters in court, mediation and arbitration, and negotiations. Our blended approach to the practice of law sets us apart from other law firms. We are not only trial lawyers and litigators; we are also authors, artists, scientists and engineers, former patent examiners, experienced PTO patent and trademark attorneys, and business managers. These skills help us to effectively relate to our client and our client’s business, to efficiently work with experts, and to better communicate with the various judges in court and at the PTO. We are also well prepared to mediate and negotiate with our client’s adversaries.

Representative Patent and Trademark Matters

Patent defense – adhesives and consumer electronics. On behalf of leading maker of protective adhesive solutions for consumer electronics devices and smartphones, defended against accusations of patent infringement, in federal district court in the Central District of California and Utah and handled concurrent inter partes reexamination challenging one of the asserted patents. Successfully handled Markman/claim construction proceedings in the California and Utah matters, and obtained grant of a request for inter partes reexamination challenging the validity of all claims of the asserted patent.

Patent defense – telecom and software. On behalf of an emerging software company, responded to the threat of patent litigation by a major regional bell operating company, and structured and finalized a key patent licensing deal.

Patent assertion – medical devices. On behalf of a medical device manufacturer, filed a patent suit in Massachusetts. Before discovery, mediated the dispute, and negotiated an early settlement including royalties paid to the client.

Patent, copyright, and trademark assertion – medical devices. On behalf of a medical device manufacturer, filed a patent suit in the Northern District of California, with an accompanying Motion for Preliminary Injunction and associated copyright and trademark infringement claims. The case settled within weeks, resulting in the agreed destruction of all infringing product.

Patent assertion – machine vision software. On behalf of a major international software company, identified and asserted in Delaware patents infringed by a new major competitor.

Patent assertion – telecommunications software. On behalf of a telecommunications software company, filed patent infringement actions in the Eastern District of Texas, the Eastern District of Virginia, Delaware, and Georgia. Handled multidistrict litigation, several reexamination proceedings, and appeal to the Federal Circuit.

Trademark and trade dress assertion – medical devices. On behalf of maker of thermometers, we obtained both a preliminary injunction and a packaging recall order against a former distributor using infringing packaging in a new competing product.

Trademark assertion – beauty industry. On behalf of beauty industry services company, we filed an infringement action and subsequently obtained a favorable settlement.