Intellectual Property Litigation
Successful Settlement of Trademark Infringement Against Direct Competitor
Obtained favorable settlement of trademark infringement claims against direct competitor. Competitor refused to settle early in the case. After close of fact discovery and development of significant evidence of intentional copying, competitor agreed to stop using the asserted trademarks and pay a monetary settlement.
Represented Worldwide Interests for a Multibillion-Dollar Company in Patent Infringement Case in Europe
Served as co-counsel representing the worldwide interests for a multibillion-dollar company as defendant in complex patent infringement case in Europe. Responsibilities for this matter included developing and leading global litigation defense strategy, as well as supporting official nullity proceedings and licensing possibilities.
Preliminary Injunctions Denied and Settlements Obtained in Trademark Infringement Actions
Defended several clients against trademark infringement preliminary injunction motions, driving favorable settlements for the clients.
Trademark Rights Enforced on Behalf of Consumer Goods Companies
Enforced trademark rights on behalf of various consumer goods companies.
Injunction and Settlement Obtained for Software Company in Copyright Action
Represented a client in a complex software matter where high-level employees left and allegedly took source code with them. We positioned our client for litigation by filing key copyright registrations on its software in an expedited manner, taking critical source code discovery, hiring a top-level expert, and filing a compelling motion for preliminary injunction, all of which drove a favorable settlement for our client, including a stipulated injunction against further use of its software.
Successful Settlement Achieved for Multibillion-Dollar Global Automotive Supplier in Complex Patent Infringement Case
Represented multibillion-dollar global automotive supplier as defendant in complex patent infringement case in the U.S. District Court for the District of Delaware achieving settlement in favor of our client, after motion to dismiss for failure to state a claim and after our preparation and filing of two petitions for inter partes review before the United States Patent & Trademark Office. The plaintiff in this matter was represented by a top five AmLaw 100 firm.
Intellectual Property Rights Enforced on Social Media
Enforced clients' intellectual property and related rights on Facebook®, YouTube®, and elsewhere.
Plaintiff Dismisses Copyright Action
Successfully represented a client in connection with a software audit and caused the software owner consortium to walk away with no payment after initially demanding a five figure payment.
Successful Settlement of Trademark Matter Ensures Right For Client to Keep Using Its Name
Settled a trademark infringement matter and secured the right for our client to keep using its name. We successfully drove the settlement by filing a motion to remove the case to federal court, a motion to dismiss the plaintiff's dilution claim, and advising plaintiff that it had no rights in its mark outside of its local area.
Trademark Rights Enforced on Behalf of Automotive OEMs
Enforced various trademark rights on behalf of automotive OEMs.
Anonymous Internet Speaker Identified for Defamatory Emails and Franchisor Exonerated
Represented restaurant franchisor in dispute with terminated consultants. Successfully identified anonymous internet speaker who allegedly sent defamatory emails to franchisees.
Attorney's Fees Not Warranted
Lead counsel in Halo Electronics, Inc. v. Pulse Electronics, Inc. after the seminal U.S. Supreme Court decision regarding patent infringement damages issued and the case was remanded back to Nevada. Successfully defended Pulse Electronics against the imposition of enhanced damages and attorney's fees as the court found that this was not an exceptional case warranting further recovery under 35 U.S.C. § 285.
Plaintiff Drops Trademark Infringement Action Against Nonprofit Veteran's Organization
Represented a nonprofit veteran's organization against a claim of trademark infringement by persuading the plaintiff to drop its claim.
Patents Protected for Alternator Decoupler Manufacturer
Represented an industry leader for overrunning alternator decouplers on their patented technology, which was the core of the their business and represents hundreds of millions of dollars in revenue each year. As their patent was coming to the end of its enforceable life, competitors were anxious to get into the industry and entered the market while the patent was still enforceable. We quickly filed suit and resolved the matter to protect the client's position within the industry.
Injunctions and Damages Obtained Against Software Copyright Infringers
Enforced a client's software copyrights against a range of infringers, some of which involved litigation that ended with the infringers accepting an injunction and paying damages.
Representation of Gaming Client in Patent Infringement Actions and Copyright and Trademark Claims
Intellectual property litigation counsel for one of the largest gaming corporations in the world against multiple non-practicing entities (NPEs) patent infringement actions and other copyright and trademark claims asserted before U.S. Federal Courts and the U.S. Trademark Trial and Appellate Board.
Seizure of Infringing Shoes at Tradeshow
Represented shoe manufacturer in connection with enforcement of its design patents and trademarks. Successfully obtained and executed order permitting the seizure of shoes displayed at the World Shoe Association tradeshow.
National Steakhouse Settles Trademark Infringement Claim
Represented restaurant owners in defense of trademark infringement claims brought by national steakhouse. Successfully negotiated settlement of dispute.
Foreign Nationals' Online Casino Websites Shut Down for Trademark Infringement and Cybersquatting
Represented Las Vegas casinos in multiple trademark infringement and cybersquatting cases against foreign nationals operating online casinos using counterfeit trademarks. Successfully obtained orders shutting down the websites.
Strong Defenses Force Plaintiff to Dismiss Our Client After a Swift Two Week Representation
Successfully secured a dismissal in a patent infringement case after quickly developing several strong defenses including non-infringement, invalidity, failure to state a claim, and low potential for damages. After confronting the patent owner with a letter explaining our defenses, the patent owner dismissed the complaint against our client within two weeks of our being engaged, while maintaining its actions against several other defendants. T-Rex Property AB v. Destination Media, Inc., 1:16-CV-1587 (N.D. IL. 2016).
Expert Used to Obtain Stipulated Consent Judgment Before Filing Complaint
Won a DMCA case against a competitor who was circumventing the client's technological protections against copying. We successfully used a software expert to develop the case before filing the complaint, which caused the defendant to stipulate to a consent judgment.
Successful Claim Construction Ruling Paves Way for Settlement of Patent Infringement Suit
Obtained a favorable settlement in patent infringement lawsuit on behalf of an inventor in the Eastern District of Texas after a successful result in a claim construction hearing. The team successfully argued against the defendant's attempts to force means-plus-function language into a process patent claim. The claim construction ruling made a determination of infringement much more likely, leading to the favorable settlement.
Successful Dismissal of Trademark Infringement Action – Metatag Evidence Too Speculative
Obtained dismissal of trademark infringement action against a manufacturing company in the Northern District of Illinois after previously defeating a motion for temporary restraining order. The Plaintiff asserted trademark infringement through metatags to direct online shopping search results. We successfully argued to the Court that the Plaintiff's allegations were based on speculation and contained no factual support.
Summary Judgment Granted for Gaming Manufacturer
Represented a gaming manufacturer in defense of intellectual property and contract claims. We obtained summary judgment in favor of our client on all claims.
First Successful Invalidation of a U.S. Patent in Nevada Federal Court
Lead counsel in first successful invalidation of a U.S. patent in Nevada Federal Court based upon the seminal U.S. Supreme Court case Alice Corp. Pty. Ltd. v. CLS Bank Intern. concerning patent ineligibility. Successfully represented NRT Technology Corp and related international parties against Global Cash Access, now Everi Holdings, to have the Federal Court grant a motion to dismiss and find the asserted patent unenforceable.
Successfully Enforced Software Company's Copyrights
Enforced a client's software copyrights against a competitor and obtained a favorable settlement following months of hard-fought litigation.
Win of Largest Corporate Copyright Dispute in Nevada State History
Lead Nevada litigation counsel for major international publicly traded software development and support services provider in the largest corporate copyright dispute action in Nevada State history.
Protected NYSE® Corporation's Trademarks and Brand Name
Lead intellectual property litigation counsel for international NYSE® telecommunications and data center corporation in federal trademark litigation and strategic counseling to protect a worldwide brand name.
Trademarks Protected for Worldwide Leader in Textile Manufacturing and Luxury Hotel Linen Industry
Lead counsel in prosecuting USPTO and Trademark Trial and Appellate Board proceedings that protect a global family of trademarks on behalf of a worldwide leader in textile manufacturing and the luxury hotel linen industry.
Patent, Trademark, Copyright, and Trade Secret Rights Enforced on Behalf of U.S. and International Clients
As lead prosecution counsel and defense counsel, successfully negotiated and resolved scores of U.S. Federal Court patent, trademark, copyright, and trade secret intellectual property disputes involving U.S. and foreign companies, including international clients from, among other places, China, Canada, Mexico, Austria, and Australia.
Patent Protection Enforced at Tradeshow Changes how Chinese Companies Resolve Intellectual Property Cases
Lead intellectual property litigation counsel for a start-up tech company in securing an emergency temporary restraining order and court seizure by U.S. Marshals of patent infringing products in widely publicized CES® Consumer Electronic Tradeshow dispute. The case resulted in the successful ban of the production and sale of the infringing products from a foreign company and changed how many Chinese companies resolve intellectual property cases at international trade shows today.
Seizure of Infringing Nutritional Supplements at Tradeshow
Represented nutritional supplement manufacturer in connection with the enforcement of its patents and trademarks. Successfully obtained and executed order permitting the seizure of nutritional supplements displayed at SupplySide West tradeshow.
Successful Defense of Trademark Infringement Claims Against Healthcare Companies
Represented healthcare companies in defense of trademark infringement claims brought by public university.
Registrant of Domain Names Using Blackmail Scheme Identified
Represented owner of retail stores in action against anonymous registrant of domain names used in blackmail scheme. Obtained an order identifying registrant.
Copyrights Successfully Enforced for Developer of Automobile Navigation Software
Represented developer of commercial navigation software in connection with enforcement of its copyrights against manufacturers of in-dash automobile navigation systems.
Successful Settlement of Copyright Claims for Production Company
Represented production company in defense of copyright infringement claims brought by Las Vegas stage show performer. Successfully negotiated settlement of claims.
Defended Online Fantasy Sports Provider in Patent Infringement Claims
Represented online fantasy sports provider in defense of patent infringement claims. Successfully obtained transfer of venue.
Successful Settlement of Patent Infringement Against Foreign Television Manufacturer
Represented technology licensing company in patent infringement action against foreign television manufacturer. Successfully negotiated settlement of dispute.
Representation of Smartphone Manufacturer in Patent Infringement Claim
Represented smartphone manufacturer in defense of patent infringement case.
Dismissal with Prejudice Obtained in Design Patent Infringement Action
Secured a dismissal with prejudice in a case against our clients for design patent infringement, false advertising, and tortious interference in exchange for no payment from our client. We brought counterclaims for false assertion of patent coverage and false association under the Lanham Act, which drove the favorable settlement. AirHawk International, Ltd. v. TheRealCraigJ, LLC et al., 8:16-CV-00624 (C.D. Cal. 2016).
Injunction Obtained for Sporting Goods Company
Enforced a patent on behalf of a sporting goods company against a competitor, winning an injunction.
Patent Case for Supplier of Sound-insulated Glass for Automotive Vehicles
Represented a supplier in a patent case involving sound-insulated glass for automotive vehicles.
Successful Settlement in Patent Case for Software Company Specializing in Automotive Supply Chain Management
Advised a software company, who specialized in automotive supply chain management, in a patent case and reached a favorable settlement.
Settlement for Supplier of Wheel Alignment Systems
Defended a supplier of non-contact wheel alignment systems by discovering knock-out prior art and inequitable conduct evidence to force an immediate walk-away settlement.
Automotive OEM Minimizes Involvement in Supplier Disputes
Counseled an automotive OEM on a stream of third-party subpoenas for documents and depositions, and helped the OEM minimize its involvement in supplier disputes.
Successful Settlement in Patent Action for Supplier of Wheel and Tire Assembly Lines
Represented a supplier of wheel and tire assembly lines against a competitor's patents and reached a favorable settlement.
Patent Enforced for Wheel Alignment System
Enforced a patent on a wheel alignment system against a competitor, won a favorable Markman ruling, and obtained a favorable settlement.
Successful Defense of Side View Mirror Supplier in Patent Infringement Action
Represented a side view mirror supplier by finding a knock-out prior art reference that drove prompt settlement in our client's favor.
Successful Defense of Laser Industry Company in Patent Infringement Action
Defended a small company in the laser industry against a large company that had filed an aggressive patent infringement case regarding a laser-based measuring device. We identified key defects in the patent owner's position and persuaded it to dismiss the case.
Settlement Achieved in Action Involving Electro-Mechanical Patent
Enforced a client's electro-mechanical patent against a competitor and won a favorable settlement following months of intense litigation.
Plaintiff Dismisses Patent Infringement Case When Presented with Experts and Motions Demonstrating Lack of Evidence
Secured a dismissal with prejudice against a patent owner in a large, multi-defendant patent infringement case. After the Markman and discovery phases, we noticed that the patent owner failed to uncover sufficient infringement evidence against our client and confronted the patent owner with a motion for summary judgment, an expert report pointing out the evidentiary deficiency, and a motion challenging the qualification of the patent owner's expert and the validity of the expert's report. Resulted in patent owner dismissing the case with prejudice and with no money paid.
Plaintiff Dismisses Patent Infringement Claim After Presented with Detailed Defense
Secured a dismissal in a patent infringement case in the Eastern District of Texas by preparing a detailed invalidity and non-infringement analysis and threatening an inter partes review, which caused the patent owner to dismiss the case without prejudice and with no money paid. Rothschild Connected Devices Innovations, LLC v. Protect America, Inc., 2:15-CV-01465-JRG (E.D. Tex. 2015).
Settlement Driven After Win on Key Markman Ruling
Won a key Markman ruling invalidating all of the asserted claims in six different patents, driving a favorable settlement for our client including a dismissal with prejudice. Joao Control & Monitoring Systems, LLC v. Protect America, Inc., 1:14-CV-134-LY, (W.D. Tex. 2015).
Successful Settlement for General Motors on Patent Infringement Case
Settled a complex patent infringement case in the District of Delaware on terms favorable to General Motors where there were multiple patents and multiple indemnifying suppliers. We successfully found strong prior art and developed non-infringement and claim construction arguments that drove settlement.
Patent Infringing Products Forced to be Pulled Off of the Market
Enforced a client's patent, which we wrote and prosecuted, against two competitors, and successfully forced them to withdraw their products from the market.
Settlement Driven on Behalf of General Motors
Settled a complex patent infringement case in the District of Delaware on terms favorable to General Motors and its suppliers, where the suppliers also supplied multiple other OEM defendants. We coordinated a defense that helped everyone by finding invalidating prior art, and developing noninfringement and claim construction arguments that drove settlement.
Patent Action Dismissed in Favor Of Doctors Treating Opioid Patients
Represented a group of doctors that were helping patients overcome their opioid addictions by performing an elaborate and specific treatment method that would eliminate withdrawal symptoms in one day or less. Our clients were sued for patent infringement, facing allegations of direct infringement, contributory infringement, and inducing infringement. We successfully argued to the district court that the case should be dismissed for failure to state a claim under Iqbal and Twombly because the patent was limited to a narrow treatment method. The patentee appealed. In a 2-1 opinion, the CAFC affirmed the dismissal in our clients' favor.
Plaintiff Dismisses Patent Infringement Case After Reading Motion to Dismiss and Before It Was Filed with the Court
Secured a dismissal with prejudice in a patent infringement case by preparing a persuasive motion to dismiss. Before filing the motion, we shared it with the patent owner, who chose to dismiss the case with prejudice and with no money paid.
Plaintiff Dismisses Patent Infringement Case After Presented with Strong Prior Art
Secured a dismissal with prejudice in a patent infringement case after taking over the case from another firm. We successfully developed a strong prior art position and after confronting the patent owner with this prior art, the patent owner dropped the case with our client, while maintaining its cases against several other defendants. ComCam International, Inc. v. Protect America, Inc., 2:13-CV-00800 (E.D. Tex. 2014).
Plaintiff Dismisses Patent Infringement Claim After Presented with Detailed Defense Including Invalidity, Non-Infringement and Lack of Personal Jurisdiction
Secured a dismissal in a patent infringement case by preparing a detailed invalidity and non-infringement analysis and arguing that there was no personal jurisdiction in the Western District of North Carolina, which caused the patent owner to dismiss the case without prejudice and with no money paid. EyeTalk365, LLC v. Protect America, Inc., 3:14-CV-525 (W.D. N.C. 2014).
Successful Settlement for General Motors in a Complex On-Board Computer Systems Case
Served as lead counsel for General Motors in a complex on-board computer systems case against a Chinese company where we brought claims for copyright infringement, DMCA violations, computer fraud and abuse, trademark infringement, trade secret misappropriation, and unfair competition and unjust enrichment. The case settled on terms favorable to our client after defeating the Chinese company's motion to dismiss. General Motors LLC, et al. v. Autel.US Inc. et al., C.A. No. 2:14-CV-14864 (E.D. Mich).
Seizure of Infringing Tires at Tradeshow
Represented tire manufacturer in connection with enforcement of its trademarks. Successfully obtained and executed order permitting the seizure of tires displayed at SEMA tradeshow.
Summary Judgment Granted for Shoe Manufacturer in Defense of Trademark Infringement Claims
Represented shoe manufacturer in defense of trademark infringement claims. Obtained an order striking plaintiff’s expert report and obtained summary judgment on behalf of shoe manufacturer.
Representation of Firearms Manufacturer in Patent Infringement Claim
Represented firearms manufacturer in defense of patent infringement action.
Representation of Samsung in Patent Litigation
Representation of Samsung in patent litigation against Apple.
Estate of Pop Singer Wins Injunction and Seizure Order
Represented the estate of a pop singer in an infringement action against counterfeiters. We obtained an injunction and seizure order under the Lanham Act against "John Doe" counterfeiters. This case was significant in that it presented substantial jurisdictional and ripeness concerns because the defendants' identities were unknown.
Patent for GPS System to Plant Research Crops Invalidated
Successfully invalidated a patent, issued in 2003, involving technology using GPS systems to plant research crops for their client, which was a family owned business in Kansas. The patentee was a large company and industry leader from Iowa. We uncovered prior art from 1997 evidencing a public use of a prior system that existed more than a year before the patents. The evidence included pictures of the prior system, videos of the prior system planting in the field, a copy of the software that was run on the system, a company newsletter describing the system, a trade show presentation about the system, and declarations (including from individuals in Australia) from the people that operated the system and were shown in the video and pictures. The court agreed and invalidated the entire patent.
Successful Enforcement of Patents against Liner Motor Conveyor System Competitor
Represented manufacturer of liner motor conveyor system in connection with enforcement of its patents against competitor.
Successful Settlement for Telecommunications Company in Trademark Ownership and Infringement Case
Successfully defended a telecommunications client in a complex trademark ownership and infringement case, reaching a favorable settlement after winning key victories in preliminary injunction and discovery motions.
Successful Settlement for Automotive Supplier in Patent Infringement and Trade Secret Lawsuits
Represented an automotive supplier for critical adhesive technology used to attach hardware to automotive windows involving multiple patent infringement and trade secret lawsuits. All of the matters were settled in favor of our clients.
Successful Settlement for Fortune 500 Automotive Supplier in Patent Infringement Action
Lead counsel for a Fortune 500 automotive supplier in a patent infringement suit in the Eastern District of Michigan where the case settled in our client's favor after obtaining a preliminary injunction.
AmLaw 100 Law Firm Settles Patent Infringement Case After Defense Files Key Motions to Dismiss
Represented a multibillion-dollar automotive supplier and successfully settled a complex patent infringement case in the District of Delaware after filing key motions to dismiss for failure to state a claim, as well as two petitions for inter partes review, both of which drove plaintiff, who was represented by an AmLaw 100 firm, to settle.
Successful Defense Against Artist's Claims of Copyright Infringement in Las Vegas Hotel Rooms
Represented Las Vegas resort hotel/casino in defense of copyright infringement claims based on display of artist’s works in hotel rooms.
Seizure Order, Permanent Injunction and $56MM Judgment for Shoe Manufacturer
Represented a shoe manufacturer in a copyright and trademark infringement action arising out of the sale of counterfeit footwear accessories. We obtained a seizure order, permanent injunction, and a $56MM judgment.
Casino's Carpet Design Defended in Copyright Infringement Action
Represented Las Vegas resort hotel/casino and its corporate parent in defense of copyright infringement action concerning casino carpet design.
Co-Counsel in U.S. Supreme Court Seminal Patent Case Addressing Obviousness
Co-counsel for the patent holder in the noted KSR Int. v. Teleflex Inc. intellectual property case in which the U.S. Supreme Court made its seminal ruling concerning the issues of obviousness as applied to patent claims.
Served as Patent Specialist Counsel in U.S. Supreme Court Seminal Patent Case Addressing Obviousness
Served as patent specialist counsel for patent holder Teleflex in the influential KSR Int. v. Teleflex Inc. intellectual property case where the U.S. Supreme Court ruled on the issue of obviousness as applied to patent claims.
All Claims Dismissed Against Corporate Officer in Trade Secret Case
Defended a corporate officer in a trade secret matter and won a complete dismissal of all claims during a jury trial on a motion for judgment as a matter of law.
Jury Finds in Favor of Supplier of Exterior Trim Parts in Trade Secrets Case
Successfully defended a supplier of exterior trim parts in a trade secret case by winning a favorable verdict in a jury trial.
Local Company Uncovers Former VP Stole Its Trade Secrets
Represented a local company against its former VP of Research and Development and his secret offshore company who stole our client's trade secrets, turning the case over to the Department of Justice for criminal prosecution.
Copyrights Enforced on Behalf of a Nonprofit Drug Abuse Prevention Organization
Enforced the copyrights belonging to a nonprofit drug abuse prevention organization and persuaded the infringer to stop infringing after filing a lawsuit and obtaining critical discovery.
Lighting Equipment Supplier Wins After Invalidating Competitor's Patents
Counseled a supplier of lighting equipment for sports fields and won a complete victory after trial and appeal by invalidating three of a competitor's patents. Musco Corp. v. Qualite Inc., 41 U.S.P.Q. 2d 1954 (Fed. Cir. 1997).
Substantial Settlement for Wiper Blade Patent Holder
Enforced a wiper blade patent against a competitor and obtained a substantial monetary settlement.
Supplier of Wheel Chair Restraints Wins Against Patent Troll
Defended a supplier of wheel chair restraints against a patent troll and won a finding of no infringement at trial. Queens University at Kingston v. Kinedyne Corp., 910 F.Supp. 527 (D. Kansas 1995).