James W. Morando, Partner

Notable Engagements for Business Litigation

• Bass PLC v. The Promus Companies - Represented Bass in litigation filed in the Southern District of New York, in asserting claims for breach of warranties made in connection with a $2 billion merger through which Bass aquired the domestic Holiday Inn system.  The action settled on favorable terms to Bass.

• City of San Jose v. Paine Webber, Jackson Curtis, Inc., et al. (U.S. District Court, Northern District of California) - Defended William E. Pollack & Company in trial against claims by the City of San Jose arising from losses in excess of $70 million for alleged securities fraud and churning of City funds invested in reverse repurchase bond transactions.  
• Danisco, et al. v Syngenta - Representing Danicsco in litigation pending in United States District Court for Northern District of California relating to enforceability of restrictive covenant in senior executive employment contract.
• Grunfeld v Taldan Investment Co. (U.S. District Court, Northern District of California) Represented Ernie Grunfeld (current President of Basketball Operations for the Washington Wizards and former NBA star) in a two week trial before U.S. District Court Judge Lowell Jensen to successfully prosecute claims for breach of contract and breach of fiduciary duty against Talden Investment Company arising from failed real estate investments.  
• Gump v Wells Fargo Bank (San Francisco Superior Court) - Defended Wells Fargo Bank in a four month trial against multi-million dollar claims for breach of trust and breach of fiduciary duty.  The trial involved a challenge to the bank's role as trustee for the Gump trust, whose primary assets were the Gump's department store in San Francisco, in addition to various real estate holdings and other assets.  
• MPS Acquisition, Inc.  v Micro Power Systems, Inc., et al. (Santa Clara Superior Court)  Defended Micro Power Systems, Inc. in a multi-million dollar suit for breach of contract, fraud and conspiracy resulting from failed acquisition negotiations.  Obtained judgment for the defendant, and then acted as lead counsel in a trial in Santa Clara Superior Court before the Honorable Conrad Rushing to successfully establish alter-ego liability against the principals of MPS Acquisition, Inc. to enforce recovery on cross-complaint.
• Macromedia v. Ashford.com - Represented Macromedia in connection with an action against Ashford.com for claims arising from a software license and consulting agreement relating to Macromedia’s LikeMinds software.  We succeeded in avoiding extensive discovery and obtaining a prompt and favorable settlement for our client. 
• S.Com v InServe (United States District Court Northern District Of California) - Successful defended venture capital fund at trial against various alter ego theories seeking to establish liability of investment entity.
• Steele v. Nokia - Represented Nokia in a first-impression case in which the plaintiff has brought a products liability claim against Nokia arising out of the use of cellular technology in an automobile.  A successful dismissal was obtained.

Notable Engagements for Intellectual Property and Technology

• Copyright
  321 Studios v Metro-Goldwyn-Mayer Studios, Inc. et al. - Represented nine major motion picture production companies in litigation related to a software product called "DVD Copy Plus," which allowed users to decrypt copy-protected DVDs and to duplicate and transfer the copyrighted contents and issues of first impression relating to the Digital Millennium Copyright Act, as well as copyright infringement claims, including challenge to the constitutionality of the anti-trafficking provisions of the DMCA. 
• Chris Arsenault v. Roger Wagner Publishing, Inc. - Successfully defended the former owner of Roger Wagner Publishing, Inc. against a claim by a software programmer for alleged joint authorship and ownership of the copyright to the successful multimedia educational software program Hyperstudio.
• CyberMedia v. Symantec, et al. - Represented an Atlanta-based software development company and its officers in connection with copyright and trade secret claims arising out of the development and sale of a popular software program.  
• In Re Napster, Inc. Copyright Litigation - Represented both Napster, Inc. and Musicnet in connection with the Napster litigation involving copyright and antitrust claims.  
• Pragmatic C Software v. Cadence Design Systems - Represented a third party software developer in arbitration to assert claims relating to a dispute over licensing royalties and copyright infringement. Successfully obtained a multi-million award the developer after a 14 day trial.
• Patent
  Compression Labs v SanDisk Corporation, et al - Represented AverMedia, a Taiwanese manufacturer, in connection with patent infringement claims asserted by Compression Labs relating to patents for digital compression technology.
• Creo Products v. Dainippon Screen - Successfully defended Japanese manufacturer Dainippon Screen against patent infringement and trade secret claims brought in the United States District Court for the Western District of Washington.  Obtained summary judgment of non-infringement in our client's favor based on application of prosecution history estoppel, and summary judgment dismissing all other claims and an award for attorneys' fees in favor of our client.  The district court judgment was affirmed in all respects by the Federal Circuit.
• Do-Lin Metal, et al. v. DS-Max Int’l, et al. - Represented DS-Max in this patent infringement action filed in the Northern District of California.  The case involved several design and utility patents on a carrying container for tools, and was successfully settled.
• 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.

• Elegent v. Dolby Laboratories - Defended Dolby Laboratories against antitrust and patent misuse claims relating to their licensing of the industry standard Dolby Digital audio compression for DVD video in a cutting-edge case involving the permissible scope of RAND licensing.

• 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.

• Software Performance
  Diversified Collection Services, Inc. v. E.A. Smith - Obtained a judgment in excess of $1 million after trial in a AAA arbitration based on claims of breach of contract arising from a custom software development project for one of the nation’s leading student loan collection companies.
• Visa International v. J. Frank Consulting - Represented Visa International and obtained a significant settlement through mediation based on claims of breach of contract and fraud in a custom software performance and development dispute involving Visa’s global customer support service software.
• Trade Secrets
  BCCI v. Principal Builders, et al. - Successfully defended the founders of a start-up company who were sued in California state court by their former employer in the commercial design business based on claims of alleged misappropriation of trade secrets, breach of employment contracts and restrictive covenants.
• Corporate Health Care Financing, Inc. v. Chris Fletcher and Tri-City Benefits, et al. - Successfully defended Tri-City Benefits and Chris Fletcher in a lawsuit filed in the United States District Court for the District Of Maryland by the former employer of Mr. Fletcher which sought preliminary injunctive relief based on claims of alleged misappropriation of trade secrets, breach of restrictive covenants and solicitation clauses in Mr. Fletcher’s employment contract, as well as alleged theft and improper disclosure of confidential business information relating to the employee benefit plan industry.  After conducting extensive expedited discovery proceedings and avoiding a preliminary injunction, was able to settle this case for our clients on favorable terms.
• Eloukhy v. Castagna - Defended Paul Castagna and Golden Gate Financial against claims of trade secret misappropriation relating to development of computerized market timing systems.  Evidentiary hearing in Santa Clara Superior court on application for preliminary injunction.
• FAS Technologies, Inc. v. Dainippon Screen Mfg. Co. - Defended Dainippon Screen in a trade secret case involving allegations of misappropriation of alleged trade secrets relating to flat panel display manufacturing equipment.  Obtained summary judgment on the trade secret claims and a significant award of attorneys' fees for our client under the California trade secret statute. 
• 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
  Hewlett-Packard v. Advanced Laser Products - Successfully represented a small company that was charged with trademark infringement by Hewlett-Packard.  After defeating Hewlett-Packard’s application for a preliminary injunction, was able to negotiate a favorable settlement for our client.
• Kendall Jackson v. Golden State Vintners - Defended this trademark infringement action filed by Kendall Jackson against our client, Golden State Vintners, over the use of the name VINTNER'S RESERVE on competing wine labels and ultimately obtained a successful settlement.
• Naxon Corporation v. Tyler Nichols d.b.a. Precision Networks, et al. - Represented Naxon Corporation, which owned the mark WINESHOPPER.COM and operated a website at that address offering a wide variety of wines to consumers nationwide.  The defendant operated the Web page Wineshopper.net, which automatically sent customers to a site called Sendwine.com that offered a much more limited range of products than the Wineshopper.com site.  On behalf of Naxon, sued the operator of the Wineshopper.net Web page for trademark infringement, false advertising, and unfair competition, obtaining a settlement shutting down the defendant’s website.
• 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.

Notable Engagements for Antitrust

• Digital Instruments v. Topometrix - Represented Topometrix in defending claims of patent infringement and asserted Walker-Process antitrust counterclaims in litigation involving two of the leading manufacturers of atomic force microscopes.  We obtained a favorable settlement for our client.
• Dolby Laboratories v. Smart Devices, Inc. - Represented Dolby in a suit for trademark infringement, unfair competition and false advertising to enforce Dolby’s intellectual property rights related to one of its latest sound innovations – SURROUND EX. The case was filed in the Central District of California and resulted in a favorable settlement for our client.

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