Richard H. Zaitlen
Partner

Mr. Zaitlen is a partner of Pillsbury in the Intellectual Property Group. His experience in technical fields involving intellectual property matters encompasses a broad spectrum of technology, including consumer electronics, chemical and biochemical processes, compositions and related arts, as well as medical device technology. In terms of litigation, Mr. Zaitlen has been lead counsel in over twenty high-stakes jury trials involving patents, trademarks and copyrights, as well as judge trials, arbitrations and mediations. He has also been lead counsel in many preliminary injunction proceedings involving intellectual property rights. Mr. Zaitlen has also represented numerous U.S. and foreign companies in obtaining and licensing rights in virtually every technology, including advanced computer software and hardware, electronic devices and consumer goods. Mr. Zaitlen has taken an active role in numerous mergers, acquisitions and joint ventures, where the technology, trademarks, or copyrights are the driving force behind the relationship.

Mr. Zaitlen was employed with the U.S. Patent and Trademark Office for five years. While at the Patent Office, he was detailed to the Office of Legislation and International Affairs, where he helped draft various patent, trademark and copyright legislation.

Mr. Zaitlen has also published numerous articles in the field of patents, trademarks and other intellectual property rights.

Mr. Zaitlen is a past chair of the Intellectual Property and Unfair Competition Section of the Los Angeles County Bar Association. He has been a member of the District of Columbia Bar since 1973, is a member of the California Bar since 1974, and is admitted to practice before the U.S. Patent and Trademark Office.

Mr. Zaitlen has been an adjunct professor of trademark law and unfair competition at Pepperdine University Law School and at Southwestern University Law School.

Mr. Zaitlen now resides at Pillsbury's offices in Los Angeles.

Retained as patent, trademark or copyright expert for the following cases:

• Turn-Key-Tech v. Koito Manufacturing Company of Japan (Auto parts)
• Ampex v. Mitsubishi (Large screen P-I-P TVs)
• Ampex v. Kodak (ITC Proceeding) (electronic cameras)
• Surfco Hawaii v. Fin Control Systems Pty Ltd. (surf boards)
• Reuben Jaja v. Clean Oil Technology AB (oil purification)
• Certain Digital Image Storage and Retrieval Devices (ITC Proceeding) (electronic storage systems)
• Popeil Pasta Products, Inc. v. Helsgott & Karas (consumer product)
• Qual-A-Tec v. Ladas & Parry et al. (consumer product)
• Stratagene Co. v. Lyon & Lyon (biotechnology)
• Arnold M. Hess v. Steele, Gould & Fried (consumer product)
• Cosmetic Concepts v. Sebastian International, Inc. (shampoo and skin cream)
• E*Trade Securities, Inc. v. Ceres Securities (electronic stock trading)
• Impact Absorbent Technologies v. Xorb Corporation (water purification)
• Martin Reffien v. Microsoft Corporation (software)

Representative Cases

• Attachmate vs. HealthNet, CV No. 09-1161 MJT (U.S. Dist Ct., Western Dist., Seattle, 2010). We represented the defendant in this copyright and breach of contract lawsuit. At issue was the alleged over-installation of certain advanced software programs.On the eve of trial in late 2010, the case was very favorably settled.


• Pressure Products Medical Supplies, Inc. vs. Quan Emerteq Corp. d/b/a Enpath Medical, CV No. 9:06-CV-121 (U.S. East. Dist. Ct. Texas-2008). We represented the plaintiff in this patent infringement action involving a medical device used in pacemaker implantation. The case was tried to a jury and all claims at issue were found to be valid and infringed. A multi-million dollar verdict was also issued as well as an injunction.


• Entrepreneur Media Inc. vs. Allbusiness.com (a division of D&B), et al., SACV-08-1066-DOC (U.S. Dist. Ct.-Cal., 2008). We represented the defendants in this trademark, copyright, unfair competition and trade secret lawsuit. At a preliminary injunction hearing, the plaintiff withdrew its motion and the case was mediated. A complete resolution and settlement of the matter was achieved.


• Human Touch, et al. vs. KingKong USA, et al., CV-06-1902-VBF (U.S. Dist. Ct.-Cal. 2008). We were brought in to handle the trial of this patent and unfair competition matter. At the conclusion of the closing arguments to the jury on the patent issues, and while the jury was deliberating, the matter was resolved for $400,000.00. The plaintiff had been requested over $100,000,000.00 in damages.


• Angela Wagner, et al. vs. Peak Potentials and Harv Eker, CV-06-6201-PA (U.S. Dist. Ct., Cal. –2007). We represented the defendants in this trademark, copyright and unfair competition case involving training seminars and book titles. Plaintiff was seeking in excess of $125 million in damages. After some pointed discovery, we filed a Motion for Summary Judgment on all issues. Motion granted, trial avoided.


• Light-Boy Co. Ltd. V. Airstar America, CV-05-1899-GPS (U.S. Dist. Ct., Cal. – 2005). We filed this case in 2005 seeking to have Airstar's patent declared not infringed. The technology related to sophisticated industrial lighting fixtures, made by our client, a Japanese company. We immediately filed a request for a Markman Hearing and related Summary Judgment Motion. Our Motion for non-infringement was granted in April, 2006, and a jury trial was avoided.


• DSU Medical Corp. v. JMS Co. Ltd. et al., CV-1826 and Appeal (Fed. Circuit Ct. of Appeals – 2005). We represent the defendant in this patent infringement appeal. At the lower court, a number of claims were invalidated and/or found not infringed. The device at issue is a medical needle guard assembly made by our client, a noted medical device manufacturer in Japan. Case argued before Federal Circuit in 2007, and the position of our client upheld. Case also cited a precedent for placing limits on inducement of infringement.


• TOTO U.S.A., Inc. v. Takagi Indus. Co., USA, Inc., CV – 1471 – JNS (U.S. Dist. Ct, Cal. – 2004). We represented the plaintiff, a U.S. subsidiary of a Japanese consumer product company. The suite involved key trademarks owned by our client throughout the world. Case settled and defendant agreed to change the name of its competitive product.


• Something Old/New vs. Joan Rivers, QVC et al, 98-CIV.7450 SAS (U.S. Dist Ct., Southern Dist. New York). We represented the defendant in this action, including the well-known actress Joan Rivers and the infomercial company QVC. Defendants were being sued for over $10M in this copyright and unfair competition lawsuit. The case was settled at the conclusion of the cross-examination of the president of plaintiff for $15,000.


• Magnequench International Inc. v. Wal-Mart Stores, Inc, Eastmas Kodak Co., and Dell Inc., Case No. CV-00424-DFH-TAB ( Indiana Dist. Ct. - 2004) This case involved extremely high strength magnets used in a wide variety of devices. The case has been successfully resolved, and settlement agreements obtained.


• Troy-CSL Lighting, Inc. v. American Lighting, Inc. et al., Case No. CV-03-4936 SJO (U.S. Dist. Ct., Cal., 2005). We represented the plaintiff in this patent infringement action involving lighting products. After filing a successful motion for summary judgment, a consent judgment was obtained and a settlement obtained including the award of substantial money damages.


• Schneider Automation Inc. and Square D Company v. OPTO 22, Inc., Case No.. CV-02-4859 SJO (U.S. Dist. Ct., Illinois and Cal., 2002) We represented the defendant in this patent infringement lawsuit. The technology involves sophisticated electronic automation controllers. The case has been settled by a settlement agreement and dismissal of all claims with prejudice.


• Turn-Key-Tech, LLC v. Daimler Chrysler Corp., Case No. 01CV 0381L (U.S. Dist. Ct., San Diego, 2002) In this infringement case, we represented the defendant. At issue was a patent alleged to cover all taillight assemblies in the Chrysler Cherokee and other cars. The case has been settled by a dismissal and a portfolio license from the plaintiff.


• Biosite Diagnostics, Inc. v. XOMA, Ltd. et al., (U.S. Northern District of Cal., 2001). This case involves breach of contract and patent infringement claims. We represented the plaintiff, Biosite. The technology involves phage displays and protein-based test kits to diagnose disease. Favorable settlement achieved and case dismissed.


• S3 Incorporated vs. nVidia Corporation, (U.S. District of California Oakland Division, (September 1999 - CV 98-1938). This is a patent infringement lawsuit involving three patents directed to electronic video control cards. We represented the plaintiff, S3. The lawsuit was brought to an end by defendant taking a license under the patents. One remaining aspect of the suit was recently resolved in favor of S3 by the Federal Circuit Court of Appeals.


• Wanlass and Energystics, Inc. v. G.E. Fedders, Sanyo, et al., (1997 – CV-0320, U.S. Dist. Ct. Utah). After pre-trial discovery and motion practice, we obtained a fully paid-up license on favorable terms for our client Sanyo. The technology involved small electric motors used in many consumer products.


• Cobe Laboratories, v. C.R. Bard, Inc., (1997 – CA No. 97-WM-1635 U.S. Dist. Ct. Colorado). This patent case involved three patents. Plaintiff was requesting damages in excess of $20,000,000. Through various pretrial discovery and analysis of the patents at issue, an extremely favorable worldwide, fully paid-up, non-cancelable license was obtained. The technology at issue involved blood heaters and oxygenators.


• Mars, Inc. v. Conlux USA Corp., (Delaware U.S. Dist. Ct. 1996). Here, we represented the defendant in a jury patent trial. The case involved a patent owned by Mars (manufacturer of M&M's) for an electronic coin changer device. The defendant, Conlux, was a wholly owned subsidiary of a Japanese corporation. The Mars patent had gone through reexamination in which the PTO confirmed patentability of the claims without change. The Mars patent had been previously declared valid and infringed. Mars was suing Conlux for almost $40 million and also alleged that the infringement was willful. Thus, the potential total amount of damages Mars was seeking was almost $120 million. After an 8-day trial, the jury returned a verdict finding that the Mars patent was not willfully infringed and that damages were $545,000 (See, 818 F.Supp. 707 (D.Del.)). The CAFC affirmed.


• Mars, Inc. v. Nippon Conlux Kabushiki-Kaisha, 58 F.3d 616, 35 U.S.P.Q.2d 1311 (Del. U.S. Dist. Ct., 1995 and U.S. Fed. Ct. of Appeals), No. 94-1414, 94-1425. We represented the defendant, a large Japanese manufacturer of coin and dollar bill validating electronic equipment. After the action was filed, we immediately filed a motion for summary judgment. Our motion was granted, and affirmed on appeal.


• SSI et al. v. IVT, (U.S. Dist. Ct. San Diego 1994). In this patent infringement case, a jury determined that two U.S. patents owned by our client, Surgical Systems and Instruments (SSI), an Illinois corporation, were infringed by defendant InterVentional Technologies, Inc. (IVT) of San Diego, California. IVT's sales of an atherectomy device were determined to infringe SSI's patents. Atherectomy is a field of medical technology which involves the removal of plaque build-up in human arteries. At the conclusion of the first stage of the trial, a second trial was conducted before the same jury for the determination of damages. The jury returned a damage verdict in favor of our client SSI in the amount of $1.1 million, which was in excess of a 10% royalty.


• Lewis v. Clarion Corporation, This arbitration involved patent rights for a car stereo electronic security system owned by a U.S. citizen. Clarion (Japan), our client, was alleged to infringe. Case successfully resolved by the grant of a fully paid-up, non-cancelable patent license after six days of testimony. (1994, AAA arbitration conducted in California)


• Devon v. AMMI, (U.S. Dist. Ct, Cal. 1994). In this case we represented AMMI, the CAFC vacated and remanded a preliminary injunction granted earlier by the district court on the grounds that the district court failed to consider arguments made during the prosecution of the patent. See, 1994 LEXIS U.S. App. 2051. Here, too, the goods involved were medical products (light handle covers used during surgery). Later, in 1994, before the district court, we successfully moved for a summary judgment of non-infringement.


• C.R. Bard, Inc. v. The Kendall Co., (U.S. Dist. Ct. Cal. – 1993). After a three week trial, a jury returned a verdict finding that a patent owned by our client, C.R. Bard, was infringed by Kendall. Kendall's manufacture and sale of a Foley urine catheter device having a tamper-evident seal shrunk fit on a certain location on the device was found to infringe on Bard's patent rights. After the jury returned its verdict, a separate damage trail was set to begin shortly thereafter. However a multi-million dollar settlement was received and accepted on the damages. The settlement also included a provision for a consent judgment of validity and infringement as well as an injunction.

Arbitrator
Lead arbitrator in a three-member panel. Arbitration involving all aspects of a patent litigation matter. Matter involved related to dental implants. Decision and award affirmed in U.S. District Court, Central District, California, 2004.

Honors & Awards

• PLC Which Lawyer?, Life Sciences: Patent Litigation—National (2012)
• Managing Intellectual Property, IP Star (2013)

Affiliations

Member of Los Angeles County Bar Association (past chair, Intellectual Property and Unfair Competition section)

Speaking Engagements and Lectures

"Anime-zing Ways to Protect Your Intellectual Property". The Anime Expo in Los Angeles, California, 2011.

"Developing Optimal Links in the Value Chain - Part 2: Leveraging Relationships". Medical Device Summit in San Diego, California, 2011.

"Protecting, Enforcing and Managing IP Rights". State Bar Meeting in San Jose, California, 2006.

"Dancing Around a Markman Hearing". Practicing Law Institute, San Francisco, California. 2001 – 2005

"Protecting, Maintaining and Enforcing Trademark and Other Intellectual Property Rights". Half Moon Production, Costa Mesa, California. 2000 – 2005

"Design Patents and Trademarks". Law Seminars International, Los Angeles, California. 2005 –

Various lectures given in Japan on patent litigation, damages and opinions between 1998 – 2004.

Publications
Zaitlen, Richard, "Dancing Around a Markman Hearing". Practicing Law Institute, October/2001 – 2005.

Zaitlen, Richard and German, Joel, "Of Mice and Men (and Patenting the Same)". Modern Drug Discovery, June (part 1) and July (part 2) 2000.

Zaitlen, Richard and Victor, David, "The New Internet Domain Name Guidelines: Still Winner-Take-All". The Computer Lawyer, December, 1996.

Zaitlen, Richard and Victor, David, "Protecting Your Trademark on the Internet". Loeb.Com Intellectual Property News, June, 1996.

Zaitlen, Richard and Chartove, Alex, "Patent Protection Expands to Financial Products". American Banker, March, 1996.

Zaitlen, Richard and Yang, Wendy, "Software Patents: Vendors Rush to Protect Innovations". MicroTimes, March, 1996.

Zaitlen, Richard and Chartove, Alex, "Some Important Trends in U.S. Patent Law – 1997 and Beyond". February, 1998.

Zaitlen, Richard and Chartove, Alex, "Unfair? The Use of Foreign Laws to Limit Discovery Demands Directed to Foreign Companies Involved in U.S. Litigation". April, 2000.

Zaitlen, Richard and Chartove, Alex, "When Do You Hold 'Em and When Do You Fold 'Em – A Few Tips on Patent Claim Interpretation When Playing the High Stakes Game of Patent Litigation". January, 2000.