Jeffrey M. Fisher, Partner

Notable Engagements for Intellectual Property and Technology

• Copyright
  B.C. Bones v. Battat - We represented B.C. Bones in a copyright infringement action relating to the design of three-dimensional dinosaur puzzles.  The case settled favorably to our client. 
• Risk & Value Engineering v. Loan Performance - We represented Risk & Value Engineering in a copyright infringement / breach of licensing agreement action relating to interest rate process software used to simulate and analyze market risk in the mortgage industry. After negotiating a stipulated preliminary injunction preventing the defendant from using the software, we settled this action through mediation.
• Warner Bros. Records, Inc., et al. v. SeeqPod, Inc. - We are defending search engine SeeqPod in a copyright infringement matter brought by Warner Brothers Records and several other major music labels in the Central District of California.  Warner is alleging that SeeqPod's technology allows the infringement of copyrighted materials, and is seeking a preliminary injunction.  We are defending the action based on a number of "safe harbors" under the Digital Millennium Copyright Act ("DMCA").
• Patent
  Actus LLC v. Bank of America Corp, et al. - We defended Sonic Solutions in litigation filed in the Eastern District of Texas by Actus LLC, a patent holding company, that asserted infringement claims on four patents relating to an electronic payments system directed at companies offering prepaid gift cards and online payment options for customers.  We were able to obtain an early favorable settlement for Sonic to avoid further costly legal proceedings. 
• Dainippon Screen Mfg. Co. Ltd. v. CFMT, Inc., et al. - This declaratory relief action was filed in March 1997, requesting a judgment of noninfringement and invalidity.  We successfully appealed a jurisdiction dismissal (142 F.3d 1266), and after remand, the patentee counterclaimed on four patents involving semiconductor cleaning and drying technology used in state-of-the-art semiconductor fabrication equipment.  We presented claim construction arguments at several Markman hearings. Following a month-long jury trial, this case was successfully settled.
• Dolby Laboratories v. Lucent Technologies – We represented Dolby in seeking a declaratory judgment that Dolby’s AC-3 technology does not infringe patents Lucent had asserted against Dolby’s licensees.  Following protracted litigation, in which we obtained discovery sanctions against Lucent on multiple occasions and attorneys fees at the conclusion of the case, we successfully obtained orders granting summary judgment of non-infringement on the patents-in-suit.  The Federal Circuit affirmed the district court's orders awarding summary judgment and attorney's fees.
• Drexler Technology v. Dolby Laboratories, Inc., et al. - This case, filed in the Northern District of California, involved patent infringement claims asserting that Dolby Digital sound-on-film technology infringed patents held by the plaintiff, Drexler Technology Corporation.  In addition to defending Dolby Laboratories, also represented a number of major entertainment companies (including Walt Disney Pictures, Fox, MGM, Universal Studios and Columbia Pictures) in this action.  After obtaining a claim construction (“Markman”) order supporting virtually every claim construction position advocated on behalf of our clients, the Court entered summary judgment in the defendant's favor on grounds of non-infringement and patent invalidity.
• Every Penny Counts v. Visa USA Inc. - We achieved a complete victory against plaintiff Every Penny Counts Inc. by obtaining a final judgment of non-infringement on all five patents allegedly covering prepaid cards based on a favorable claims construction ruling on the first morning of a scheduled two-day Markman hearing. The judgment, which was entered by the U.S. District Court for the Middle District of Florida in May 2008, was affirmed on April 30, 2009 by a 3-0 decision by the U.S. Court of Appeals for the Federal Circuit.
• MedioStream Inc. v. Acer America Corp et al. - We are presently defending Sonic Solutions against a suit filed by patent holder MedioStream, Inc. in the Eastern District of Texas asserting claims for patent infringement, misappropriation of trade secrets and others.  The infringement claims are based on two patents pertaining to methods for recording video information onto disks and are directed at Sonic's digital video and DVD software products.
• People Protecting Patents  v. Clorox & Glad - We are defending Clorox and Glad in a false patent marking suit under 35 U.S.C. §292(b) filed in the Northern District of Texas which alleges that Glad marked certain of its product with patent numbers after expiration of the patents with an intent to deceive the public.  We are seeking to have the action transferred to the Northern District of California based on the first filed rule and convenience factors.
• PostX v. Sigaba - Represented Sigaba in two separate patent infringement actions asserting that Sigaba's e-mail encryption technology infringed two of the plaintiff's patents.  Obtained orders granting summary judgment of non-infringement on two separate patents prior to any claims construction hearings; these were affirmed by the Federal Circuit. Asserted antitrust counterclaims alleging that the plaintiff made bad faith infringement accusations in the marketplace under PREI.

• Volterra Semiconductor v. Primarion & Infineon Technologies - Representing patent holder and plaintiff Volterra Semiconductor in an infringement action filed in the Northern District of California on five patents relating to flip chip switching regulators, conductive routings for IC's and discrete time-sampling of data for use in switching regulators.  We are also defending Volterra against antitrust counterclaims brought by defendants, including Walker-Process claims for monopolization and attempted monopolization.

• Trade Secrets
  Ischemia Research and Educational Foundation v Pfizer, Inc., et al. –  Defended Pfizer, Inc. against claims of trade secret misappropriation.
• Wavelink Media v. Stoneground Solutions - Represented three former employees and their start-up website design company in litigation filed by their former employer (another website design company) based on claims of alleged misappropriation of trade secrets (including client lists, marketing strategies and website design techniques and styles), trademark infringement and copyright infringement.  The case was settled favorably for our clients through mediation.
• Trademark
  Opus One v. Fuente Cigar, Ltd. - In this trademark infringement action, represented Opus One, a joint venture of Robert Mondavi Winery and Baron Phillippe de Rothschild, S.A., against Dominican Republic-based Fuente Cigar, Ltd.  The case involved whether Fuente’s use of the name OPUS on cigars infringed Opus One’s trademarks. Litigated this case in the Middle District of Florida, ultimately obtaining a favorable settlement for our client.
• Patent
  Akeena Solar et al. v. Zep Solar et al. - Defending Zep Solar and groSolar in a patent infringement lawsuit filed in the Northern District of California relating to efficient techniques for mounting solar panels.  After obtaining an early dismissal of Plaintiffs' claim for declaratory judgment of noninfringement because there was no subject matter jurisdiction as to this claim, we sought a stay of the litigation pending an inter partes reexamination of the patent-in-suit in the Patent and Trademark Office ("PTO"). The court recently granted our motion, staying the action pending completion of the reexamination proceedings.

Notable Engagements for Renewable Energy And Clean Technologies

• Patent
  Akeena Solar et al. v. Zep Solar et al. - Defending Zep Solar and groSolar in a patent infringement lawsuit filed in the Northern District of California relating to efficient techniques for mounting solar panels.  After obtaining an early dismissal of Plaintiffs' claim for declaratory judgment of noninfringement because there was no subject matter jurisdiction as to this claim, we sought a stay of the litigation pending an inter partes reexamination of the patent-in-suit in the Patent and Trademark Office ("PTO"). The court recently granted our motion, staying the action pending completion of the reexamination proceedings.

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