Intellectual Property Litigation and Counseling
We have deep experience litigating and counseling on a broad range of IP issues. Because we have handled all types of intellectual property cases, we are able to spot issues that other lawyers with a more narrow focus miss. We are also adept at thinking out of the box when coming up with our litigation or negotiating strategies. We understand that a company's IP is one of its most important business assets. We know how to protect your IP and how to use it to further your company's business objectives. Examples of our services include:
If an IP case is too big for us to handle alone, we have a far reaching network of other IP lawyers who we know and trust to co-counsel with us on appropriate cases. These lawyers include a deep bench of technically trained lawyers who work closely with us on patent litigation matters. We are adept at working collaboratively with co-counsel on large cases, and our experience at large law firms such as Jones Day, DLA Piper, and Arent Fox means that we have a solid network of lawyers who we can call on across the country and around the globe.
One issue that constantly arises for our clients is what to do if they are using a software product, and suddenly the software licensor wants to conduct a software audit and then claims that the client is in breach of the licensing agreement and threatens to terminate the license. We have counseled clients on how to respond to these audits, and how to best position themselves to avoid a termination of the license agreement, or how to handle the threat of a lawsuit. In particular, we have experience advising clients who are dealing with software audits, and have successfully assisted our clients to resolve disputes without the need for expensive and time consuming litigation.
Another issue that frequently arises is what a client should do when they receive a patent "notice letter". We are skilled at counseling clients as to what steps they will need to take to best protect against a later finding of willful infringement. Our approach is a pragmatic one, because we understand how to balance the risk and the expense of such an undertaking. We are also frequently consulted about "cease & desist" letters in the trademark and false advertising context.
Finally we have a great deal of experience bringing and opposing motions for preliminary injunctions. Our knowledge of how these fast moving proceedings work and our understanding of the applicable law are critical to obtaining or defeating an injunction.
Below we have detailed a few representative examples of the firm's IP related experience.
- Sending or responding to patent notice letters and related advice
- Inventorship disputes
- Software compliance audits and related copyright litigation
- Advising and litigating issues involving the Computer Fraud & Abuse Act
- Litigation relating to breach of IP licensing agreements
- Online copyright infringement litigation and related counseling
- Digital Millennium Copyright Act safe harbor immunity litigation & counseling
- Cyber law issues
- Rights of publicity and false light advice and litigation
- Online trademark infringement investigations and litigation
- Responding to or sending trademark cease & desist letters
- Litigating Trademark Trial and Appeal Board Proceedings
- False advertising, unfair competition and related disputes
- Disputes related to the use of social media
- Domain name misappropriation and assignment and transfer disputes
- Trade secret litigation
- Employee onboarding and termination counseling & best practices
- Non-compete, non-disclosure & non-solicititation
- Hacking, privacy & data theft
- Seeking or opposing requests for injunctive relief including temporary restraining orders and preliminary injunctions
- Contract (including licensing) interpretation and advice
- Indemnification or breach of warranty advice & litigation
If an IP case is too big for us to handle alone, we have a far reaching network of other IP lawyers who we know and trust to co-counsel with us on appropriate cases. These lawyers include a deep bench of technically trained lawyers who work closely with us on patent litigation matters. We are adept at working collaboratively with co-counsel on large cases, and our experience at large law firms such as Jones Day, DLA Piper, and Arent Fox means that we have a solid network of lawyers who we can call on across the country and around the globe.
One issue that constantly arises for our clients is what to do if they are using a software product, and suddenly the software licensor wants to conduct a software audit and then claims that the client is in breach of the licensing agreement and threatens to terminate the license. We have counseled clients on how to respond to these audits, and how to best position themselves to avoid a termination of the license agreement, or how to handle the threat of a lawsuit. In particular, we have experience advising clients who are dealing with software audits, and have successfully assisted our clients to resolve disputes without the need for expensive and time consuming litigation.
Another issue that frequently arises is what a client should do when they receive a patent "notice letter". We are skilled at counseling clients as to what steps they will need to take to best protect against a later finding of willful infringement. Our approach is a pragmatic one, because we understand how to balance the risk and the expense of such an undertaking. We are also frequently consulted about "cease & desist" letters in the trademark and false advertising context.
Finally we have a great deal of experience bringing and opposing motions for preliminary injunctions. Our knowledge of how these fast moving proceedings work and our understanding of the applicable law are critical to obtaining or defeating an injunction.
Below we have detailed a few representative examples of the firm's IP related experience.
Patent DisputesSuccessfully defended Ooyala Inc. as lead counsel in a patent infringement action in the Eastern District of Texas in a case involving file storage patents.
Successfully represented breathalyzer device maker KHN Solutions and its BACtrack brand as lead counsel in a patent infringement action brought by KHN in the Northern District of California against a competitor. Defeated Alice motion to dismiss brought by the Defendant on Section 101 grounds. When a patent troll sued entertainment magazine US Weekly for patent infringement in the Southern District of New York, Us Weekly aggressively defended the action and attacked the validity of the patent finding enough invalidating prior art to convince the NPE to settle the litigation at a fraction of what was first demanded and obtaining a complete dismissal. A well known competitor of a consumer products company threatened to sue for breach of contract and patent infringement arising out of an alleged breach of a licensing agreement. After trying to settle the case for months, the client filed a lawsuit for declaratory relief in the Northern District of California and was able to obtain a complete settlement within days of filing the lawsuit.
Alexx Inc. discovered that a Korean importer located in New Jersey was knocking off its products and selling it in the US. The client filed suit for patent and trademark infringement in the Northern District of California and discovered that the Defendant had been falsifying documents to escape liability. After identifying the fraudulent documents to the court, the case quickly settled and the infringer was pushed out of the market.
Defended Reckitt Benckiser, a large international consumer products company in a false patent marking case in the Northern District of California. Case settled favorably for the client.
Brought an American Arbitration Association arbitration on behalf of a major Internet tech company involving a dispute over interpretation of a patent licensing agreement and whether the license was exclusive. Successfully settled the matter for the client short of the arbitration hearing.
A large consumer products company was sued for patent infringement. We advised the client to tender the defense to a supplier under the relevant indemnification provision. The supplier picked up the defense and the client defended the lawsuit successfully at essentially little or no real cost. |
Trademark & CopyrightCurrently representing Fortune 500 food products company and famous brand in a trade dress dispute against a large competitor.
Successful defense of Cogent Communications in a copyright infringement and breach of license agreement action brought by Oracle in the federal court for the Northern District of California. A Fortune 500 consumer products company, engaged one of our lawyers to protect its trademark rights in a household brand name from a competitor that was seeking to reenter the US market and use the mark. By filing a trademark infringement and unfair competition lawsuit against the competitor, the client was able to obtain a favorable settlement early in the case after requesting a court sponsored mediation. An employee of a major Silicon Valley software company was attending a trade show and noticed that a third party vendor was displaying the company's signage in a way that suggested sponsorship or endorsement of their product. Sending an aggressive cease & desist letter, the client threatened to file for a temporary restraining order. The threat of the lawsuit coupled with the strong cease & desist letter, caused the infringer to rethink its position and abandon the improper use of the client's marks and trade dress.
A consumer products company noticed that a large competitor had changed its product packaging to incorporate elements of our client's trade dress. After sending out a strongly worded cease & desist letter, the client was able to resolve the matter without the need for litigation when the infringer agreed to discontinue its use of the infringing packaging.
Represented Planet 3, LLC in a design patent infringement, trademark infringement and unfair competition lawsuit involving ready-to-assemble furniture for use with televisions and stereos. Successfully defeated preliminary injunction motion and obtained favorable settlement for client.
Defended Wind River in an antitrust, false advertising and trademark infringement case brought by a competitor in the Central District of California. Case settled favorably prior to trial.
A huge multinational cloud computing software company audited our client a small company. After the audit, the large software company claimed that the client was in breach of the software agreement, and terminated the license. Rather than caving in, the client stood its ground and was able to use the threat of litigation to get the larger company to back off and to settle the lawsuit. |
Trade Secret, False AdvertisingAdvise multiple companies on implementing a trade secrets program to protect their valuable IP from being misappropriated, which complies with the new Defend Trade Secrets Act.
Represented online college applications software company in lawsuit involving claims of false advertising. The client brought suit after it discovered that the competitor was gaining an unfair advantage by using PII of college applicants and their parents and selling it to banks and other third parties in violation of their stated privacy policy. Defended a medical device company, in a trade secrets case involving employee mobility under the inevitable disclosure doctrine. After a hard fought litigation, the medical device company was able to favorably resolve the lawsuit and obtain a settlement. Represented the Whittemore Peterson Institute in a trade secrets misappropriation case against a former employee. Obtained a preliminary injunction ordering the former employee to return the purloined laboratory notebooks and the other intellectual property.
Represented a Personal Products Company that was accused of mislabeling its products and of false advertising under the Lanham Act in a case brought by a competitor. After reviewing the competitor's packaging, the client discovered a myriad of errors and filed a counterclaim for false advertising. Case settled favorably before discovery and well prior to trial.
We have advised numerous clients on how to implement procedures that will protect the trade secret status of their intellectual property. We understand from litigating these cases that one key line of attack is to argue that the trade secret was not really secret and therefore not entitled to protection. Our lawyers have also litigated employee mobility cases, and have used this knowledge to advise businesses on how to best protect their trade secrets from walking out the door with the departing employee. Trade secret lawsuits are emotionally charged disputes and it is important to meticulously prepare in advance of filing or defending one.
|
The above cases represent only a small fraction of our intellectual property expertise. We have deep experience practicing in the Bay Area and have a long track record of successfully advising local technology, consumer products and other companies. As a result, we are familiar with the issues that tend to arise again and again in the intellectual property space. Our knowledge and experience means that when such problems or issues impact your business, we know how to act to minimize your risk. We are not bloated and large like big law firms. Our small size also means that we are nimble and responsive and are able to work closely with our clients. We know the value of relationships. We understand the importance of trust.
Many of our clients are business people or in-house lawyers who may not have deep IP expertise--that is why they call on us. We are here to help. We partner with our clients to craft strategies, assess risk and apply our years of experience and good judgment to solving even the most thorny legal problems. We do this so that our clients can focus on what is most important to them--growing their business.
Many of our clients are business people or in-house lawyers who may not have deep IP expertise--that is why they call on us. We are here to help. We partner with our clients to craft strategies, assess risk and apply our years of experience and good judgment to solving even the most thorny legal problems. We do this so that our clients can focus on what is most important to them--growing their business.
