Intellectual Property and Technology Engagements
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.
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. - 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.
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. - 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.
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.
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.
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.
SLL v. Wal-Mart Stores, et al. - We recently completed our representation of Wal-Mart Stores and Sam's Club in the Central District of California against allegations that a certain brand of jeans sold at Sam's Club infringed on the plaintiff's copyright and trademarks. The case ultimately settled with very favorable terms to Wal-Mart and Sam's Club.
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").
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.
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.
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.
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 represented Clorox, Brita, Pentair 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. The court issued a favorable claims construction for Defendants in December 2007 as part of a ruling denying summary judgment. The case then settled on terms favorable to our clients.
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.
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.
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.
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.
Cordis v. Guidant - One of our partners served on the arbitration panel that resolved patent infringement claims between Cordis Corporation and Guidant Corporation involving infringement claims over the groundbreaking Palmaz stent patent. The arbitration involved a lengthy claims construction proceeding, followed by a two week hearing ending in an award. The claims asserted sought hundreds of millions of dollars in damages for the alleged infringement.
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.
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.
DataTern v. Bank of America Corp. et al. - We defended Visa Inc. in a lawsuit filed by DataTern against it and others in the Eastern District of Texas which claimed that Visa was infringing DataTern's ‘402 patent titled "System for enabling access to a relational database from an object oriented program." We obtained a successful settlement of the case for Visa.
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.
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.
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.
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.
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 action brought by Orion IP, LLC (also known by the name Clear With Computers LLC) in the Eastern District of Texas asserting claims for patent infringment against our clients and many other parties based on patents relating to online sales methods. We were able to settle the claims against our client at an early stage, obtaining 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.
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.
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.
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.
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.
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.
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.
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
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 - 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.
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.
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.
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 - 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.
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.
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. - 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.
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.
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.
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.
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
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.
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 - 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.
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.