Intellectual Property and Technology Engagements

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. 

• Chris Arsenault v. Roger Wagner Publishing, Inc. - We 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 software program Hyperstudio.

• Corbis v. Ofoto - We defended online photography service Ofoto, a subsidiary of Eastman Kodak, against first-impression claims of copyright and trademark infringement relating to the online sharing and exchange of photographs.   We obtained a successful settlement for our client. 

• CyberMedia v. Symantec, et al. - We 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.   The matter settled favorably.

• Electronic Arts v. Granite Bay Software - We represented Granite Bay Software, Inc., a developer of action/game software programs, in a copyright infringement and breach of contract case against a distributor of computer and video games.  The action involved a dispute over the rights to software source code and the issue of whether certain successive game products were “derivative products” entitling Granite Bay to royalties.  We counterclaimed on behalf of Granite Bay for copyright infringement and unfair competition, and ultimately negotiated a successful settlement of the case.

• Pragmatic C Software v. Cadence Design Systems - In this case, we represented a third party software developer in arbitration to assert claims relating to a dispute over licensing royalties and copyright infringement.  After a 14-day trial, we successfully obtained a $1.6 million award for our client.

• Ran One v. Principa - We represented Ran One in a copyright infringement and trade secret misappropriation case brought against a former officer and director who attempted to create a competing company.  The case settled favorably to Ran One. 

• 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.

• Wavelink Media v. Stoneground Solutions - We 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.

• WinWay Corporation v. The Job Guys - We represented WinWay Corporation, the developer of software that assists users in obtaining a new job, in a copyright infringement action against the owners of a web site designed to provide services to job seekers.  The defendants were using a substantial portion of WinWay's software on their web site without authorization.  We obtained a favorable settlement for WinWay.

Digital Technology

• AGF Reassurances v. Spar Aerospace Ltd. - We successfully represented this international manufacturer of telecommunications satellites in multi-million dollar claims related to technical malfunctions.  A favorable settlement was reached prior to trial.

• Creo Products v. Dainippon Screen - We successfully represented Dainippon Screen against patent infringement and trade secret claims brought in the United States District Court for the Western District of Washington.  We 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.

• 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.

• Dolby Laboratories v. Smart Devices, Inc. - We 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.

• 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, we 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 we advocated on behalf of our clients, the Court entered summary judgment in our clients' favor on grounds of non-infringement and patent invalidity.

• GTE Wireless v. PCS - We represented GTE Wireless as a plaintiff and counter-defendant in a multi-pronged litigation regarding cellular telephone services carried out simultaneously in federal, state, and bankruptcy court and before the Federal Communications Commission.  The case settled on favorable terms.

• MIT v. Dolby Laboratories - We defended Dolby Laboratories in an action brought by the Massachusetts Institute of Technology relating to a licensing agreement for the development of digital sound technology used in high definition televisions.   After a jury trial in the District Court in Boston, a favorable settlement was reached for our client.

• Steele v. Nokia - We represent Nokia in this 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.  The case is pending in Contra Costa County Superior Court. 

• Trimble Navigation, Ltd. v. SiRF Technology, Inc. - We defended SiRF Technology in an infringement action on three patents related to chipsets for use in Global Positioning Systems (GPS) technology.  After a technical tutorial and the assertion of counterclaims based on limited discovery, and the exchange of initial disclosures under the Local Patent Rules, we achieved a favorable settlement for the client which included licenses to additional patents.

Internet and Software

• Analytica Environmental Services, Inc. v. Lumina Corporation - Analytica Environmental Services brought proceedings in the Trademark Trial and Appeals Board to cancel the registered trademark of our client, Lumina, which develops sophisticated decision-making software that it markets under the trademark ANALYTICA.  The plaintiff, an environmental consulting firm, contended that Lumina's mark was confusingly similar to its mark.  The cancellation proceedings went to a decision, and the TTAB agreed with our position and denied the request for cancellation of Lumina's mark.

• Boldryev v. Frankel - We represented the original developer of WinAmp, the industry leading MP3 player, involving claims of fraud, copyright infringement, and partnership accounting by an alleged co-developer, following the sale of the company to AOL.  The case was successfully resolved.

• Diversified Collection Services, Inc. v. E.A. Smith - We 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.

• Larkmead Vineyards v. Frank-Rombauer Cellars, LLC - On behalf of Larkmead Vineyards, a Napa Valley winery, we brought an anticybersquatting case against the defendant which had registered several domain names using our client’s trademarks LARKMEAD and LARKMEAD VINEYARDS.  A favorable settlement was obtained.

• Macromedia v. Ashford.com - We 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. 

• Naxon Corporation v. Tyler Nichols d.b.a. Precision Networks, et al. - We 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, we 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.

• Neohouse v. Autodesk Corp. - In this action involving a dispute over the development and licensing of a popular consumer software application, we represented the software developer, Neohouse.  After starting arbitration proceedings, the case was successfully resolved with the payment of a cash settlement to our client.

• 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.  In this case, we 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. We asserted antitrust counterclaims alleging that the plaintiff made bad faith infringement accusations in the marketplace under PREI.

• Sabre v. ARC – Represented Sabre Inc. in claims against the Airlines Reporting Corporation for unauthorized use of data compiled by the Sabre Computerized Reservation System

• Sabre v. American Airlines – Represented Sabre Inc. in a court case and related arbitration over American Airlines' refusal to make all of its air fares available in the Sabre Computerized Reservation System.  The case settled with an agreement that, among other things, provided Sabre with its desired access to American's web fares.

• Sabre v. Northwest Airlines - Represented Sabre, the owner of the largest Global Distribution System in the world, and its Travelocity.com subsidiary in a variety of significant litigation matters. We represented Sabre in a case against Northwest Airlines that was triggered by Northwest's announced $7.50 surcharge/fare increase imposed on tickets issued by travel agent's who use the Sabre GDS. Dueling suits were filed by Sabre in Texas and Northwest in Minnesota, alleging breach of contract. Northwest has added antitrust and related tort claims. We were successful in securing Sabre's chosen venue in Fort Worth, and Northwest's action was transferred and consolidated with Sabre's action there. We have also represented Sabre in a breach of contract/ unjust enrichment dispute over ownership of passenger reservation information, and in several major arbitrations.

• Travelocity – We represent Travelocity in two separate pre-arbitration contract disputes involving the content on its well-known travel website.

• Visa International v. J. Frank Consulting - We 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.

• Walmart.com USA, LLC – We represent one of the nation’s most well-known online retailers as its outside intellectual property counsel, advising on matters ranging from compliance with regulatory regimes, licensing matters, “spam” statutes (such as CAN-SPAM), advertising issues, patent and trademark matters, and the impact of new developments in the “e-tail” space.
  

Life Sciences

• Beckman Research Institute v. Genentech - We represented Genentech in this arbitration proceeding concerning the royalties due plaintiff under a research and license agreement regarding recombinant DNA technology, which resulted in the issuance of two patents and the development and commercialization of two highly successful anti-cancer drugs.  The case settled favorably for Genentech shortly before arbitration.

• Chiron v. Hoffman-LaRoche - Represented Chiron Corporation as a plaintiff in this patent infringement action in the Northern District of California. The case involved the patent for a vaccine for the Hepatitis C virus, as well as antitrust counterclaims.

• Cordis v. Guidant - One of our partners served on the arbitration panel that resolved patent infringement claims between Cordis Corporation and Guidant Corporation involving the groundbreaking Palmaz Stent.  The arbitration resolved claims seeking hundreds of millions of dollars in damages.

• Dental Technology Recovery Trust v. International Technology Concepts, Inc. - Our client, IT Concepts, sells intra-oral cameras that are used in the dental industry which the plaintiff had claimed infringes its patent.  IT Concepts filed an action for declaratory judgment of noninfringement and invalidity, and the plaintiff counterclaimed for infringement.  We obtained a favorable settlement for our client.

• Synbiotics Corp. v. Heska Corp. - We represented Heska in a patent infringement suit in which the plaintiff charged Heska with infringing a patent that claims several bioengineered elements used in the detection of heartworm infection in dogs and cats.  We successfully moved for summary judgment that two of the patent claims in issue were invalid on the basis of anticipation.  We settled the remaining claims on terms favorable to our client.

Patent

• 3M Innovative Properties v. The Clorox Company - We currently represent Clorox, Brita and Sears in a patent infringement lawsuit brought by 3M and its Cuno subsidiary in Minneapolis. The case involves two patents covering replacement water filters used in refrigerators. Trial is expected in sometime in 2008. We also represent Clorox in connection with prelitigation efforts to settle claims of infringement on two patents asserted by a competitor.

• Atmel Corporation v. Ericsson – We represented Atmel, a leading semiconductor manufacturer, in a multi-week arbitration through which we obtained an award of over $43 million arising from Ericsson's misappropriation of Atmel's patented AVR microcontroller technology and Ericsson's multiple breaches of the parties' license agreement.  The International Centre for Dispute Resolution, International Arbitration Tribunal also awarded Atmel a permanent injunction prohibiting Ericsson from continued misappropriation of Atmel's proprietary technology.

• 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.

• 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.

• Do-Lin Metal, et al. v. DS-Max Int’l, et al. - We 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.

• Orion IP, LLC v. Wal-Mart Stores, Inc./Walmart.com USA, LLC - We defended Wal-Mart Stores, Inc. and Walmart.com USA, LLC in this patent action brought in the Eastern District of Texas, which recently settled. We obtained the most favorable settlement ever extracted from this litigant by any retailer. We have handled several other patent and licensing related matters for Wal-Mart Stores, Inc. and Walmart.com USA, LLC.

• Pickholtz v. Aladdin Knowledge Systems - We represented the inventor in a patent infringement action alleging that certain of Aladdin's Software Digital Rights Management (DRM) products infringed the inventor's patent (covering an invention restricting unauthorized use of pirated computer software).  We secured a $2 million settlement after successfully defeating Aladdin's jurisdictional challenges, winning all contested claim constructions and receiving favorable orders on many discovery issues, including an award of sanctions for the defendants' discovery abuse.  The settlement was reached and finalized without incurring the additional expense of taking or defending any depositions.

• Scheiber v. Dolby - We successfully obtained summary judgment in favor of our client, Dolby Laboratories, Inc., in the Indiana District Court on the issue of bundling United States patents with foreign patents.  The judgment was affirmed by the Seventh Circuit, and a writ of certiorari denied by the Supreme Court.

• 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 suit was filed in the U.S. District Court for the Middle District of Florida.

Trade Secrets

• BCCI v. Principal Builders, et al. - We 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.

• Cadence v. Avant!; People v. Avant! - In these parallel civil/criminal proceedings, the firm represented the CEO of Avant!, who was among several individual defendants alleged (along with the corporation) of having been involved in the theft of source code belonging to the plaintiff/“victim.”  The issues involved Integrated Circuit Design Automation, defined generally as the field of automated software tools for the design and creation of sophisticated integrated circuits.  The case settled favorably for our client. 

• Corporate Health Care Financing, Inc. v. Chris Fletcher and Tri-City Benefits, et al. - We 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, we were able to settle this case for our clients on favorable terms.

• Deluxe Data v. Visa International, et al. - In this case, perhaps the first in the country tried under the “inevitable disclosure” trade secrets doctrine, the firm represented Visa, its data processing system, and seven individuals who were sued for having left the plaintiff en masse, allegedly with knowledge of source code and “know-how” related to the functionality in ATM machines worldwide.  The case was tried in state court in Milwaukee for approximately two weeks, and our clients prevailed on every count.  The decision in favor of our clients was affirmed by the Wisconsin Court of Appeals.

• FAS Technologies, Inc. v. Dainippon Screen Mfg. Co. - We defended Dainippon Screen in a trade secret case involving allegations of misappropriation of alleged trade secrets relating to flat panel display manufacturing equipment.  We 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. –  We are currently defending Pfizer, Inc. against claims of trade secret misappropriation pending in Santa Clara County Superior Court which involve asserted damage claims in excess of $100 million.  The plaintiffs’ misappropriation claims arise out of clinical drug trials for Bextra, a second generation COX-2 inhibitor.

• PGEI v. Sierra Detroit Diesel-Allison, et al. - We represented the defendant company being sued by a competitor over the components of large, commercial, diesel-powered electric generator packages.  The plaintiff’s claims alleged that our client hired the plaintiff’s former employees and misappropriated the plaintiff’s design plans for the fuel tanks, on which the generators sit, and the steel housings or enclosures, which cover the generators for weather protection and sound attenuation.  The case was settled on favorable terms for our client prior to trial. 

• Smith Barney – We act as regional counsel for Smith Barney in the San Francisco Bay Area and regularly provide advice, counseling and act as litigation counsel for disputes arising out of the termination and hiring of broker-dealers, solicitation of clients and employees and the handling of confidential business and client information.  In connection with this work, we are often called upon to handle proceedings seeking TRO’s and preliminary injunctive relief.

Trademark, Trade Dress and Domain Name Dispute Litigation

• Grills To Go v. W.C. Bradley Co. - We are defending W.C. Bradley Co., a manufacturer of barbecue grills, in this trademark infringement action and have filed a cross-complaint against the plaintiff alleging our own Lanham Act claim.  The case is currently pending in the Eastern District of California.

• Hewlett-Packard v. Advanced Laser Products - We successfully represented a small company that was charged with trademark infringement by Hewlett-Packard.  After defeating Hewlett-Packard’s application for a preliminary injunction, we were able to negotiate a favorable settlement for our client.

• Kendall Jackson v. Golden State Vintners - We 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.

• Opus One v. Fuente Cigar, Ltd. - In this trademark infringement action, we 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.  We litigated this case in the Middle District of Florida, ultimately obtaining a favorable settlement for our client.

• Pacific Telesis Group v. Allied Telesis, Inc. - We successfully represented Pacific Telesis Group in a trademark enforcement action originally brought by the client’s in-house lawyers.  After discovery and motion practice, the defendant agreed to a settlement, which was later successfully enforced.