Intellectual Property Litigation

Volterra Semiconductor v. Primarion & Infineon Technologies
We obtained a unanimous verdict in a three-week patent jury trial for our client Volterra Semiconductor in the United Stated District Court for the Northern District of California upholding the validity of Volterra's key patents for flip chip integrated power switches against challenges by defendants Infineon and Primarion. Infringement in favor of our client had been determined prior to trial as a result of key rulings we obtained in favor of Volterra in connection with claims construction and summary judgment proceedings. Read More
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.  Read More
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. Read More

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.  Read More

Albert Jones v. Google Inc.
Represented Google in a multi-defendant patent infringement action in the Northern District of California involving smart phone, smart watch and headphone technologies. Following a claim construction hearing, the court ruled in favor of defendants. Read More
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. Read More
Authors Guild v. HathiTrust
We submitted an amicus brief on behalf of the Electronic Frontier Foundation in support of the HathiTrust “mass digitization” project. HathiTrust, backed by a consortium of university libraries and Google, has digitized millions of copyrighted books and incorporated them into a database without the consent of copyright owners. The brief addressed whether changing a work from print form to a digital database in order to add new uses counts as “transformative” under copyright fair use factor 1. In June 2014, the Second Circuit affirmed the district court’s decision that HathiTrust Digital Library’s use of the copyrighted works for full-text search constitutes a “fair use.” The court also affirmed the district court’s ruling that fair use allows the libraries to provide the works in formats accessible to the print-disabled. Read More
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.  Read More

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. Read More
Bilski et al v. Kappos

Prepared an amicus brief for the Supreme Court of the United States, which the Court relied on and cited for the proposition 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.” Bilski et al v. Kappos, 130 S.Ct. 3218, 3227 (2010) Read More

BladeRoom v. Facebook and Emerson

Represent BladeRoom Group Ltd., a UK-based data center design company, in the Northern District of California in a suit against Facebook and Emerson claiming that Facebook and Emerson breached non-disclosure agreements and stole BladeRoom’s trade secrets relating to a revolutionary new methodology of designing and constructing warehouse-sized data centers. Read More

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. Read More

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. Read More
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. Read More

Cioffi, et al. v. Google Inc
Defending Google in the U.S. District Court for the Eastern District of Texas against allegations that Google Chrome web browser infringes four patents. Read More
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. Read More

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 patent. The arbitration resolved claims seeking hundreds of millions of dollars in damages. Read More

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.  Read More
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.Read More
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. Read More

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), 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.Read More
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. Read More

Disney Enterprises, Inc. et al. v Hotfile Corp., et al.
We represent an internet file-hosting company against copyright infringement claims brought by five major movie studios in federal district court in Florida.  The case involves cutting-edge issues of law under the DMCA, the Stored Communications Act and the Copyright Act in the cloud-computing context.  Read More
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. Read More

Dolby Laboratories v. Alcatel-Lucent Technologies
We represented Dolby in seeking a declaratory judgment that Dolby’s AC-3 (“Dolby Digital”) technology does not infringe patents that Alcatel-Lucent had asserted against Dolby’s licensees.  Following protracted litigation, in which we obtained discovery sanctions against Alcatel-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. Read More
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. Read More
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.Read More
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. Read More

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.Read More
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.
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Every Penny Counts, Inc. v. American Express Co., et al., 563 F.3d 1378 (Fed. Cir. 2009)
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. A petition for en banc rehearing and petition for writ of certiorari were both denied. Read More
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.  Read More
Grills To Go v. W.C. Bradley Co.
Defended 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 was venued in the Eastern District of California.Read More
Hall Data v. Dropbox
Defended Dropbox in patent proceedings related to database synchronization technologies initially filed in the Eastern District of Texas. After successfully obtaining transfer of the action from the Eastern District of Texas to the Northern District of California, we obtained a dismissal with prejudice on behalf of our client following a court-ordered settlement conference. Read More
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. Read More
hiQ Labs Inc. v. LinkedIn Corp.
Representing start-up company hiQ Labs in its declaratory judgment action asking a California federal court to find it is not breaking any laws by collecting (“scraping”) LinkedIn member public profile data from LinkedIn’s website. hiQ has asked the court for a declaration it wasn’t violating the Digital Millennium Copyright Act, the Computer Fraud and Abuse Act (CFAA) and a California state law on unauthorized computer access. Read More
In Re Napster, Inc. Copyright Litigation
Represented both Napster, Inc. and Musicnet in connection with the Napster litigation involving copyright and antitrust claims.   Read More
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. Read More

Kendall Jackson v. Golden State Vintners
Defended a 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. Read More
MAZ Encryption v. Dell Inc.
Defending Dell Inc. in the U.S. District Court for the District of Delaware against allegations that its DDPE and DDPA products infringe two patents. Read More
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.Read More
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. Read More

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. Read More
Novartis v. MedImmune, Biogen, Alexion
Served as co-counsel in litigation alleging infringement of patents for a vector for the expression of polypeptides. The cases were resolved by favorable settlements for Novartis.  Read More
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. Read More
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. Read More
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. Read More
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. Read More
Purple Leaf v. Google, Inc.
Defended Google Checkout in the Eastern District of Texas against assertions that it infringed a patent owned by Purple Leaf that purportedly disclosed a way to conduct an online transaction directly between merchant and buyer. After initial pleadings, we were able to attain a dismissal of the claims against Google. 
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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. Read More
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. Read More
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. Read More
Rotatable Technologies v. Motorola Mobility LLC and Quickoffice Inc.
Obtained favorable claim construction for defendant Motorola and stipulated judgment of non-infringement in a case in the U.S. District Court for the Eastern District of Texas involving over 47 smartphones and tablets. Judgment was upheld on appeal. Read More
Rothschild Location Technologies v. Popular Ridesharing Company
Defended a popular ridesharing company in Eastern District of Texas patent proceedings from allegations that our client’s on-demand transportation services infringe Rothschild’s patents relating to GPS technology. Obtained a favorable settlement for our client. Read More
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. Read More
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. Read More
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 Read More
Sazerac Co. Inc. v. Fetzer Vineyards
Represented Fetzer Vineyards in a trademark infringement suit alleging it violated the Lanham Act and state statutes by featuring on the label for its 1000 Stories zinfandel a single buffalo icon and disclosing that the wine is aged in bourbon barrels. Following a week-long trial in the Northern District of California, the federal judge ruled in favor of Fetzer. Read More
Security People, Inc. v. Ojmar US, LLC

Defending Spanish touch pad locking solutions company Ojmar US, LLC in a series of patent infringement actions filed by its direct competitor in the Northern District of California. We succeeded in getting two cases dismissed outright and the third stayed pending the outcome of the IPR review initiated by the PTAB. Read More

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. Read More
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. Read More
SoftVault v. Dell Inc.

Defended Dell in the U.S. District Court for the Northern District of California against allegations that Credant Mobile Guardian, KACE K3000, and Wyse Client Cloud Manager infringe two patents. Read More

Technology Licensing Agreement Arbitrations
Represented Novartis in a series of arbitrations arising out of technology licensing agreements. Read More
Tridia Corp. v. NTT Resonant Corp.
Served as lead counsel for this subsidiary of Japan’s largest telecom company, Nippon Telegraph & Telephone Co., in its first ever patent litigation in the United States. The case filed in Georgia Northern District Court presented unique questions involving the role of special masters to resolve section 101 motions and personal service of Japanese companies in the United States under the Federal Rules of Civil Procedure.  Read More
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. Read More
Tse v. Google, Inc.

Defended Google from assertions of patent infringement related to digital rights management technology.  Prevailed on an early summary judgment motion of patent invalidity for lack of adequate written description support. Read More

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. Read More
Represented 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.
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Warner Bros. Records v. SeeqPod
We defended 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"). Read More
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. Read More
Waymo LLC v. Uber Technologies, Inc. et al.
Appointed by federal court Judge William Alsup of the Northern District of California, John Cooper is serving as “special master” in Waymo’s trade secrets case against Uber, putting him at a focal point of what could be seen as a battle for the future of the autonomous vehicle industry. Read More
Zep Solar
Defended Zep Solar 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 an 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. Read More