ASUS Computer International
Currently defending in multiple patent and copyright infringement suits filed in jurisdictions across the country. Technologies involve video encoding, biometric sensors, wi-fi, parental control software, ergonomics, and Ethernet. Recently settled, on favorable terms, litigation in the District of Delaware involving archival storage technology after aggressively managing discovery costs.
Logitech, Inc.
Currently defending in patent infringement action in the District of Arizona in connection with a laptop cooling pad technology.
Yelp!
Enforced Yelp!’s trademarks in the Northern District of California against Instaplak. After a key deposition of the defendant’s president, we successfully negotiated an early settlement that gave Yelp exceptional relief.
MarketQuest Group, Inc.
Defended MarketQuest, which develops and markets personalized “swag,” in patent infringement litigation. Turner Boyd was retained three weeks before trial began, after four years of litigation. On the third day of trial, opposing counsel abruptly sought leave to withdraw, leading to dismissal with prejudice.
Sweet & Low
Defending makers of Sweet & Low in false patent marking litigation in the Northern District of California.
Bilski amicus brief
Represented personalized medicine companies Adamas Pharmaceuticals and Tethys Bioscience in filing an amicus curiae brief in the United States Supreme Court on the landmark patentable subject matter case, Bilski v. Kappos.
Netfirms
Defended internet service provider in a contributory trademark and copyright infringement dispute in the Central District of California involving allegations of counterfeit Louis Vuitton goods. Won motion to dismiss on the grounds of improper service and negotiated a highly favorable settlement that did not involve an injunction, while other targets of the plaintiff have been held liable for eight-figure damages claims. See “Web hosters ordered to pay $32M for contributing to trademark infringement,” ComputerWorld (9/1/09)
Otter Box
Currently enforcing intellectual property rights of this fast-growing innovator in protective covers for iPods, Blackberries, cell phones, and other personal electronics.
Finelite
Currently defending against Philips subsidiary Ledalite Architectural Products’ claims that Finelite’s high-performance, high-efficiency, California-built industrial lighting systems infringe certain Ledalite design patents. Currently representing Finelite against Ledalite in case asserting false patent marking, false advertising, and unfair competition.
Rave Wireless
Defending a patent infringement suit involving “Rave Alertâ€â€”technology rolled out by universities nationwide in the wake of the Virginia Tech tragedy.
Poa Sana, Inc. v. National Semiconductor
Represented entrepreneurial technology venture in a technology license dispute with National Semiconductor. Helped Poa Sana avoid the expense of litigation while securing a highly favorable resolution that achieved the client’s objectives.
Brilliant Store
Currently defending in patent infringement litigation with Apple involving computer peripherals and accessories.
Channel Islands Sidewalk Grinding
Currently defending in patent infringement litigation for concrete cutting methods. Defeated a motion for a temporary restraining order in connection with a city contract to repair sidewalks.
Memory Dealers
Currently representing against a former employee and a competitor in an embezzlement andtrade secret case involving optical transceivers.
newScale, Inc.
Enforced software license against Motorola, successfully negotiating settlement prior to substantial discovery costs.
Oklahoma Medical Research Foundation
Defended patent infringement action in the Northern District of California involving Alzheimer’s Disease research tools. Won a transfer motion that allowed OMRF to fight this case on its home turf in Oklahoma.
Pool Cover Specialists
Defending Pool Cover Specialists in a patent infringement suit involving-you guessed it-swimming pool covers.
Google, Inc.
Consulted for Google, Inc. on patent litigation management, including outside counsel management and cost reduction.
Unither Pharmaceuticals v. Herbalife et al.
(L-arginine for treatment of vascular disorders)Represented Unither in a patent infringement suit asserting several Unither patents against multiple defendants. Successfully transferred and consolidated all actions into a single forum, and directed the discovery and strategy of the case, which drove a successful monetary settlement including a royalty-bearing license.
Medtronic v. Kyphon Inc.
(Medical devices and procedures for treatment of osteoporosis)
Represented Kyphon in a patent infringement suit involving multiple patents asserted by both parties. Following extensive discovery in connection with Kyphon’s preliminary injunction motion, and a week-long hearing on that motion, the case settled, with Medtronic acquiring Kyphon for $4.2 billion.
Represented Kyphon in a patent infringement suit involving multiple patents asserted by both parties. Following extensive discovery in connection with Kyphon’s preliminary injunction motion, and a week-long hearing on that motion, the case settled, with Medtronic acquiring Kyphon for $4.2 billion.
Typeright Corp. v. Microsoft
(ergonomic keyboards)
Successfully defended Microsoft in a patent infringement suit by Typeright on three utility patents and two design patents related to ergonomic computer keyboards. Tracked down 20-year-old prior art in Germany that led to summary judgment of invalidity.
Successfully defended Microsoft in a patent infringement suit by Typeright on three utility patents and two design patents related to ergonomic computer keyboards. Tracked down 20-year-old prior art in Germany that led to summary judgment of invalidity.
GlaxoSmithKline v. Pliva Pharmaceuticals et al.
(Anti-nausea drugs)
Represented Pliva (now Barr Pharmaceuticals) in a series of patent infringement suits and appeals brought by GlaxoSmithKline related to Pliva’s generic version of GlaxoSmithKline’s Zofran® product. Strategies included district court and FDA regulatory approaches, including Citizens’ Petitions. The case settled with a substantial business agreement between the parties, including Glaxo’s acquisition of Pliva’s R&D arm in Croatia.
Represented Pliva (now Barr Pharmaceuticals) in a series of patent infringement suits and appeals brought by GlaxoSmithKline related to Pliva’s generic version of GlaxoSmithKline’s Zofran® product. Strategies included district court and FDA regulatory approaches, including Citizens’ Petitions. The case settled with a substantial business agreement between the parties, including Glaxo’s acquisition of Pliva’s R&D arm in Croatia.
nCube Corp. v. SeaChange International, Inc.
(video server technology)
Represented SeaChange in a series of litigations against nCube, including two jury trials. The suits concerned the parties’ video servers for video-on-demand. In the first suit, the case went to trial within three months of the complaint being filed.
Represented SeaChange in a series of litigations against nCube, including two jury trials. The suits concerned the parties’ video servers for video-on-demand. In the first suit, the case went to trial within three months of the complaint being filed.
Kyphon Inc. v. Disc-Orthopedic Technologies Ltd.
(Medical devices and procedures for treatment of osteoporosis)
Represented Kyphon Inc. in a patent infringement suit against Disc-Orthopedic Technologies in both the International Trade Commission and district court asserting five Kyphon patents. Jury verdict of infringement, followed by settlement including the withdrawal of the defendants from the U.S. market. Kyphon later acquired Disc-O-Tech.
Represented Kyphon Inc. in a patent infringement suit against Disc-Orthopedic Technologies in both the International Trade Commission and district court asserting five Kyphon patents. Jury verdict of infringement, followed by settlement including the withdrawal of the defendants from the U.S. market. Kyphon later acquired Disc-O-Tech.
Elan Pharmaceuticals v. Mayo Foundation
(Transgenic mice)
Defended the Mayo Foundation in a patent infringement suit by Elan Pharmaceuticals on two patents related to transgenic mice used for Alzheimer’s disease research. Summary judgment of invalidity granted, but reversed on appeal on issue of inherent anticipation. Petition for hearing en banc granted and the panel reissued a revised decision on another ground. The case settled on remand, with the parties cross-licensing patent portfolios so that both parties could continue their Alzheimer’s research.
Defended the Mayo Foundation in a patent infringement suit by Elan Pharmaceuticals on two patents related to transgenic mice used for Alzheimer’s disease research. Summary judgment of invalidity granted, but reversed on appeal on issue of inherent anticipation. Petition for hearing en banc granted and the panel reissued a revised decision on another ground. The case settled on remand, with the parties cross-licensing patent portfolios so that both parties could continue their Alzheimer’s research.
Unaxis Balzers v. Varian
(Mass spectrometer leak detectors)
Defended Varian in a patent infringement suit. Varian sells leak detectors used to assess vacuums in scientific equipment. Following an early development of the fundamentals of the case, the case settled for less than the cost of continued litigation.
Defended Varian in a patent infringement suit. Varian sells leak detectors used to assess vacuums in scientific equipment. Following an early development of the fundamentals of the case, the case settled for less than the cost of continued litigation.
PolyMASC v. Alza
(PEGylated liposomes)
Represented PolyMASC in a patent infringement suit. PolyMASC asserted a patent on PEGylated liposomes used for drug delivery. The U.S. dispute was part of a world-wide series of lawsuits and patent oppositions, which resulted in a payment of $6.5 million to PolyMASC.
Represented PolyMASC in a patent infringement suit. PolyMASC asserted a patent on PEGylated liposomes used for drug delivery. The U.S. dispute was part of a world-wide series of lawsuits and patent oppositions, which resulted in a payment of $6.5 million to PolyMASC.
ArthroCare Corp. v. Smith & Nephew, Inc.
(electrosurgical devices for arthroscopic applications)
Defended Smith & Nephew, Inc. in a patent infringement suit. Three Smith & Nephew electrosurgical devices were accused of infringing ArthroCare patents. Following a jury trial and protracted litigation on multiple fronts, the parties settled by signing product supply and license agreements for bipolar and monopolar arthroscopy products.
Defended Smith & Nephew, Inc. in a patent infringement suit. Three Smith & Nephew electrosurgical devices were accused of infringing ArthroCare patents. Following a jury trial and protracted litigation on multiple fronts, the parties settled by signing product supply and license agreements for bipolar and monopolar arthroscopy products.
Caliper v. Molecular Devices Corp.
(fluorescence polarization for kinase reaction detection)
Defended Molecular Devices in patent infringement suit by Caliper. The case settled following the denial of Caliper’s requested preliminary injunction.
Defended Molecular Devices in patent infringement suit by Caliper. The case settled following the denial of Caliper’s requested preliminary injunction.
Genzyme v. Genentech
(modified tissue plasminogen activator)
Represented Genzyme in a patent infringement suit. Genzyme asserted a patent on modified tissue plasminogen activator used as a thrombolytic agent in acute myocardial infarction, and the case involved both patent claims and contract issues. Case settled on confidential terms.
Represented Genzyme in a patent infringement suit. Genzyme asserted a patent on modified tissue plasminogen activator used as a thrombolytic agent in acute myocardial infarction, and the case involved both patent claims and contract issues. Case settled on confidential terms.
Cardiogenesis v. PLC
(biomedical device for laser cardiac surgery)
Represented PLC in a declaratory judgment patent infringement suit brought by Cardiogenesis. Case settled with Cardiogenesis making royalty payments of at least $2.5 million after a claim construction ruling and several partial summary judgments favorable to PLC.
Represented PLC in a declaratory judgment patent infringement suit brought by Cardiogenesis. Case settled with Cardiogenesis making royalty payments of at least $2.5 million after a claim construction ruling and several partial summary judgments favorable to PLC.
Monster Cable Products, Inc. v. The Quest Group d/b/a AudioQuest
(N.D. Cal.; Fed. Cir.)
Asserted patent on use of electromechanical bias to improve quality of signal transmission in audio cables.
Asserted patent on use of electromechanical bias to improve quality of signal transmission in audio cables.
Agfa Monotype Corp. v. Adobe Systems Inc., and International Typeface Corp. v. Adobe Systems Inc.
(N.D. Ill.)
Defended Adobe against allegations that Adobe Acrobat was designed to circumvent technical controls over use of type fonts, in violation of Digital Millennium Copyright Act and licensing agreements between the parties.
Defended Adobe against allegations that Adobe Acrobat was designed to circumvent technical controls over use of type fonts, in violation of Digital Millennium Copyright Act and licensing agreements between the parties.
Open Source Yoga Unity v. Bikram Choudhury
(N.D. Cal.)
Represented outgoing counsel for declaratory judgment plaintiff against charges of breach of duty of confidentiality based on alleged conflicts of interest in action involving alleged copyrights in sequences of yoga poses. Successful substitution of counsel resulted in immediate settlement, including royalty-free license to members of trade association.
Represented outgoing counsel for declaratory judgment plaintiff against charges of breach of duty of confidentiality based on alleged conflicts of interest in action involving alleged copyrights in sequences of yoga poses. Successful substitution of counsel resulted in immediate settlement, including royalty-free license to members of trade association.
Litex Inc. v. Delphi Corp.
(D. Mass.)
Defended Delphi against patent allegedly covering use of plasma for automotive exhaust aftertreatment. Settled into arbitration during trial, with successful arbitration.
Defended Delphi against patent allegedly covering use of plasma for automotive exhaust aftertreatment. Settled into arbitration during trial, with successful arbitration.
Chan v. Intuit
(N.D. Cal.)
Defended Symantec against patent allegedly covering use of hyperlinks on CD-ROMs.
Defended Symantec against patent allegedly covering use of hyperlinks on CD-ROMs.
Connelly et al v. Palm, Inc. (S.F. Superior); Hemmingsen v. Palm, Inc. (Santa Clara Superior)
Defended Palm against product liability suits alleging damage due to electrostatic discharge.
Sonic Solutions v. Spruce Technologies, Inc.
(N.D. Cal.)
Enforced copyrights for user interfaces for DVD authoring software.
Enforced copyrights for user interfaces for DVD authoring software.
Altiris, Inc. v. Symantec Corp.
(D. Utah)
Defended against patent for remote control of computer boot process.
Defended against patent for remote control of computer boot process.
Atmel Corp. v. Silicon Storage Technology (N.D. Cal.; Fed. Cir.) and In the Matter of Certain EPROM, EEPROM, Flash Memory, and Flash Microcontroller Semiconductor Devices (U.S. Int’l Trade Comm.; Fed. Cir.)
Asserted patents for automatic identification of and on-chip charge pumps in flash memory products. $40 million trial court judgment and ITC Limited Exclusion Order upheld on appeal.
Wind River Systems, Inc. v. Mentat Inc.
(Alameda Superior)
Copyright litigation involving network protocols and associated software.
Copyright litigation involving network protocols and associated software.
Town of Los Gatos and City of Saratoga v. TCI
(Santa Clara Superior)
Enforced cable television franchise agreements requiring advantageous placement of public access television channels. Settled with new franchise agreements, including funding support for public access channels.
Enforced cable television franchise agreements requiring advantageous placement of public access television channels. Settled with new franchise agreements, including funding support for public access channels.
Sun Microsystems, Inc. v. Microsoft Corporation
(JAVA™ technology litigation)
Represented plaintiff Sun in its copyright, trademark, license breach, business tort, and unfair competition lawsuit against Microsoft regarding the JAVA™ technology. Prepared summary judgment motions that court granted and which ultimately drove a successful settlement.
Represented plaintiff Sun in its copyright, trademark, license breach, business tort, and unfair competition lawsuit against Microsoft regarding the JAVA™ technology. Prepared summary judgment motions that court granted and which ultimately drove a successful settlement.
Louis Vuitton Malettier, S.A. v. Netfirms, Inc.
(trademark litigation)
Represented defendant Netfirms, a web host company, in a trademark lawsuit brought against it. Successfully moved to dismiss the litigation against Netfirms before having to answer the complaint.
Represented defendant Netfirms, a web host company, in a trademark lawsuit brought against it. Successfully moved to dismiss the litigation against Netfirms before having to answer the complaint.
In re Microsoft Corporation Antitrust Litigation, Sun Microsystems, Inc. v. Microsoft Corp
(software and hardware technology and interfaces, including JAVA™)
Represented plaintiff Sun in its antitrust case against Microsoft. Sun secured a preliminary injunction requiring that Microsoft ship a Sun-compatible Java Virtual Machine with each copy of Microsoft’s Windows operating system and Internet Explorer browser. The case settled favorably to Sun, in an amount making it the largest civil antitrust settlement in history.
Represented plaintiff Sun in its antitrust case against Microsoft. Sun secured a preliminary injunction requiring that Microsoft ship a Sun-compatible Java Virtual Machine with each copy of Microsoft’s Windows operating system and Internet Explorer browser. The case settled favorably to Sun, in an amount making it the largest civil antitrust settlement in history.
Poa Sana, Inc. v. National Semiconductor
(Touchscreen technology license dispute)
Represented Poa Sana, an entrepreneurial technology venture, in a technology license dispute with National Semiconductor. Helped Poa Sana avoid the expense of litigation while securing a resolution on terms that were highly favorable and achieved Poa Sana’s objectives.
Represented Poa Sana, an entrepreneurial technology venture, in a technology license dispute with National Semiconductor. Helped Poa Sana avoid the expense of litigation while securing a resolution on terms that were highly favorable and achieved Poa Sana’s objectives.
Jitit Inc. v. Fuji Xerox, Ltd.
(enterprise software)
Represented Jitit, a producer of enterprise management software, in a copyright dispute against Fuji Xerox, Ltd. Settled the dispute on the terms my client desired, without the expense of litigation.
Represented Jitit, a producer of enterprise management software, in a copyright dispute against Fuji Xerox, Ltd. Settled the dispute on the terms my client desired, without the expense of litigation.
GTE Wireless, Inc. v. QUALCOMM Incorporated
(cellular telephony patent)
Represented defendant QUALCOMM in patent litigation concerning cellular telephony. QUALCOMM prevailed at the trial court upon being granted summary judgment of no infringement. GTE appealed but later dropped its appeal after the QUALCOMM opposition brief was filed.
Represented defendant QUALCOMM in patent litigation concerning cellular telephony. QUALCOMM prevailed at the trial court upon being granted summary judgment of no infringement. GTE appealed but later dropped its appeal after the QUALCOMM opposition brief was filed.
PlayFirst, Inc. v. Alawar Entertainment Inc., et al.
(game copyrights)
Represented plaintiff PlayFirst in copyright infringement case concerning online video games. The case settled on terms highly favorable to PlayFirst, before any complaint needed to be filed.
Represented plaintiff PlayFirst in copyright infringement case concerning online video games. The case settled on terms highly favorable to PlayFirst, before any complaint needed to be filed.
Pfizer Inc., et al. v. Eli Lilly & Company, ICOS Corporation and Lilly ICOS
(“Viagra” patent)
Represented defendants ICOS Corporation and the Lilly/ICOS joint venture, the makers of Cialis, in a patent litigation charging that Cialis infringed Pfizer’s Viagra patent. Discovered prior art based on centuries-old Chinese herbal remedy that ultimately led the United States Patent and Trademark Office to revoke the only asserted patent claim.
Represented defendants ICOS Corporation and the Lilly/ICOS joint venture, the makers of Cialis, in a patent litigation charging that Cialis infringed Pfizer’s Viagra patent. Discovered prior art based on centuries-old Chinese herbal remedy that ultimately led the United States Patent and Trademark Office to revoke the only asserted patent claim.
Convio, Inc. v. Kintera, Inc.
(commercial defamation)
Represented Kintera, maker of the most popular fundraising software platform, in opposing a pre-litigation subpoena concerning allegations that Kintera had participated in defamation of Convio. The Texas court granted Kintera’s motion to quash Convio’s pre-litigation discovery request, thereby resolving the matter in Kintera’s favor.
Represented Kintera, maker of the most popular fundraising software platform, in opposing a pre-litigation subpoena concerning allegations that Kintera had participated in defamation of Convio. The Texas court granted Kintera’s motion to quash Convio’s pre-litigation discovery request, thereby resolving the matter in Kintera’s favor.