Experience
Round Rock Research v. Dell Inc.
Defended Dell in the U.S. District Courts for the Eastern District of Texas and the District of Delaware against allegations that its products infringed 20 patents across a wide range of technologies involving DRAM, server management and monitoring, and BIOS.
Soladigm (View) v. Tarng
Represented Soladigm (now View, Inc.) against former consultant for breach of a consulting and nondisclosure agreement relating to electrochromic glass technology in United States District Court for the Northern District of California. The case settled favorably, with the court subsequently enforcing the settlement agreement over the objection of the consultant who wanted to unwind the agreement.
Disney Enterprises, Inc. et al. v Hotfile Corp., et al.
Represented a cloud storage company against copyright infringement claims brought by five major movie studios in federal district court in Florida. The case involved cutting-edge issues of law under the DMCA, the Stored Communications Act and the Copyright Act in the cloud-computing context. 798 F. Supp. 2d 1303 (S.D. Fla. 2011)(motion to dismiss denied in part)
MedioStream Inc. v. Acer America Corp et al
Defended Sonic Solutions in a patent infringement suit originally filed by MedioStream, Inc. in the Eastern District of Texas, that asserted infringement claims on two patents pertaining to technology for recording video information onto discs and were directed at Sonic's digital video and DVD software products. In a precedent-setting tactical victory, we obtained an appellate order transferring the litigation from the Eastern Texas to Sonic Solutions' home jurisdiction in Northern California. 626 F. 3d 1252 –(Fed. Cir. 2010) The trial court eventually dismissed - 869 F. Supp. 2d 1095 (N.D.Cal 2012) (granting motion to dismiss)
SLL v. Wal-Mart Stores, et al.
We represented 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 settled with very favorable terms to Wal-Mart and Sam's Club.
e-Micro Corporation v. Google, Inc.
Defended Google against allegations that Google Checkout infringes a patent allegedly related to electronic payment transactions conducted on the Internet.
Cioffi, et al. v. Google Inc
Defended Google in the U.S. District Court for the Eastern District of Texas in a four-patent case relating to multi-process web browsers. The case is currently pending a post-trial invalidity decision based whether the reissue patents improperly recaptured disclaimed subject matter under 35 USC section 251.
Myriad v. Openwave Systems
Represented Myriad France, a French mobile-handset software company, in a dispute with Openwave Systems, an American software company, over ownership of 36 patents for such products as text messaging and mobile web browsing. After winning partial summary judgment, Myriad successfully negotiated an eight-figure settlement.
Zep Solar
Defended Zep Solar (which was later acquired by SolarCity) in patent infringement lawsuits filed in the International Trade Commission and the Northern District of California relating to efficient techniques for mounting solar panels. After obtaining early dismissal of Plaintiffs' claim for declaratory judgment of noninfringement because there was no subject matter jurisdiction, we sought a stay of the litigation pending an inter partes reexamination of the patent-in-suit in the Patent and Trademark Office. The asserted patents were invalidated virtually in their entirety, and the cases then settled.
Restricted Spending Solutions v. Allow Card
We won summary judgment of invalidity for our client Visa USA, Inc. in this patent action filed in Chicago asserting a patent over an "allowance" card for teens that can be controlled by the parent. This was a significant victory. Not only is a summary judgment of invalidity rare, but the well-known NPE Acacia was the ultimate owner of the plaintiff and had managed to exact settlements with many of the other eighteen defendants. 743 F. Supp. 2d 954 (N.D. Ill. 2010)(granting summary judgment).
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.
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.
Every Penny Counts, Inc. v. American Express Co., et al.
Defended Visa U.S.A. Inc. in a case where the plaintiff accused Visa’s gift card technology of infringing five patents. We prevailed on a case-dispositive claim construction at the district court, leading to a stipulated judgment of non-infringement on all five patents. The Federal Circuit upheld the claim construction and judgment on appeal. 563 F.3d 1378 (Fed. Cir. 2009). A petition for en banc rehearing and petition for writ of certiorari were both denied.
Bilski et al v. Kappos (561 U.S. 593 (2010)
Submitted an amicus brief on behalf of Dolby Laboratories for the Supreme Court of the United States in the landmark Bilski ruling relating to business method patents. The Supreme Court relied on and cited for the proposition in overturning the Federal Circuit Court of Appeals opinion and addressing the scope of what is patentable under section 101 of the Patent Act. Specifically, that exclusive adoption of a “machine-or-transformation test” for patent eligibility “would create uncertainty as to the patentability of software, advanced diagnostic medicine techniques, and inventions based on linear programming, data compression, and the manipulation of digital signals.”
In Re Napster, Inc. Copyright Litigation
Represented both Napster, Inc. and Musicnet in connection with the Napster litigation involving copyright and antitrust claims.
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.
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.
Orion v. Wal-Mart
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 infringement 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.
Ischemia Research and Educational Foundation v Pfizer, Inc., et al.
We defended Pfizer, Inc. against claims of trade secret misappropriation in Santa Clara County Superior Court. The plaintiffs’ misappropriation claims arise out of clinical drug trials for Bextra, a second generation COX-2 inhibitor.
Chiron v. Hoffman-LaRoche
We represented Chiron Corporation (now Novartis) 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.
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.
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.
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.
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 requested a judgment of noninfringement and invalidity. We successfully appealed a jurisdiction dismissal (142 F.3d 1266))(reversing dismissal for lack of personal jurisdiction and giving opponent a “Chutzpah Award”). 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.
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.
Eltoukhy 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.
Technology Licensing Agreement Arbitrations
Represented Novartis in a series of arbitrations arising out of technology licensing agreements.
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.
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