Blog Post 08.16.18
Sara O’Connell is a former federal prosecutor who advocates for clients in disputes over intellectual property matters and helps those navigating internal and federal government investigations.
Sara's record includes successfully trying to verdict federal jury and bench trials, a dozen appellate victories, and negotiating numerous favorable settlements and resolutions.
Her intellectual property practice focuses primarily on clients in high-tech industries engaged in litigation over patent infringement, trade secret misappropriation and other related matters. Examples of technologies addressed in her recent cases are wireless communication, media processors, location-based software, and computer telephony.
Her white collar defense practice concentrates on advising and defending individuals and corporations involved in internal investigations and in civil regulatory and criminal investigations by government entities such as SEC, DOD and DOJ.
Linex Tech. Inc. v. Hewlett Packard Co. et al., 13‐cv‐00159 (N.D. Cal.) Defended Hewlett Packard in case regarding wireless digital communication, resulting in summary judgment and costs award.
MicroUnity Systems Engineering Inc., v. Apple Inc., et al., 2:10‐cv‐91 (E.D. Tex.). Defended Texas Instruments in case relating to media processor technology, resulting in favorable settlement.
USA v. Francis, 13-cr-03782 (S.D. Cal.). Represented defendant charged with bribery and conspiracy to defraud the United States in case stemming from DOD investigation.
- Intellectual Property
- FastVdo LLC v. AT&T Mobility et. al., 16CV394 (S.D. Cal. 2016). Defended ZTE against allegations of patent infringement; pending inter partes review.
- Landmark Technology LLC v. Canada Drugs LP, 16CV558 (S.D. Cal. 2016). Defended Canadadrugs.com in suit alleging patent infringement, resulting in dismissal with prejudice.
- Nuki Inc. v. Delsey Luggage Inc., 16CV1997 (S.D. Cal. 2016). Defended Delsey against alleged design patent infringement, resulting in dismissal with prejudice.
- American Automobile Association v. Zaid, CV 14‐4040 (C.D. Cal.). Represented plaintiff AAA in trademark infringement case, resulting in order to transfer registration of domain name to client.
- Invenger Tech. v. Enservio Inc., CV 13‐04828 (C.D. Cal). Represented plaintiff‐counter‐defendant in case regarding trade secrets and contractual interference, resulting in settlement favorable to client.
- 911 Notify LLC v. Hyundai Motor America Inc., 1:13‐cv‐00275 (D. Del.). Defended Hyundai in patent infringement case relating to wireless emergency communication system.
- Certain Digital Media Devices, Including Televisions, Blu‐Ray Disc Players, Home Theater Systems, Tablets and Mobile Phones, Components Thereof and Associated Software, Inv. No. 337‐TA‐882 (US ITC). Represented respondent Samsung in investigation relating to wireless location technology, resulting in findings of invalidity and noninfringement.
- In the Matter of Certain Semiconductor Integrated Circuit Devices, Inv. No. 337‐TA‐840 (US ITC). Represented complainant Microchip Technology in matter relating to integrated circuit devices and package designs, resulting in favorable settlement.
- White Collar Criminal Defense
- Represented biotechnology corporation under investigation by DOJ.
- Represented potential investor in energy corporation under investigation by DOJ and SEC.
- Represented health care executive investigation by DOJ.
- Represented life sciences executives in investigations by SEC.
- Represent court-appointed receiver in civil litigation seeking claw backs of fraudulently-transferred funds in several cases stemming from SEC and FTC investigations.
- USA v. Kaplan, 13-cr-00377 (D. Nev.). Represented pharmaceutical company in trial stemming from FDA investigation regarding conspiracy to commit adulteration with intent to defraud.
- Pro Bono Work
- Daire v. Lattimore, 812 F.3d 766 (9th Cir. 2016). Briefed and argued pro bono case resulting in en banc opinion overruling fifteen years’ of incorrect case law. Persons who suffer ineffective assistance of counsel at a state sentencing hearing are no longer barred from federal habeas corpus relief simply because they received a noncapital sentence.
- Lopez-Rodriguez v. Mukasey, 536 F.3d 1012 (2008). Briefed and argued case resulting in 9th Circuit panel opinion reversing BIA opinion on precedential grounds. Held that Fourth Amendment jurisprudence applies even in an administrative context.
Honors & Awards
Named 2017 “Best of the Bar” by San Diego Business Journal
Recognized as 2015 Rising Star by Super Lawyers
Received Wiley W. Manuel Award for Pro Bono Legal Services
- Further Experience
- Serves as Adjunct Professor at the University of San Diego School of Law, where she teaches a litigation skills course entitled “Experiential Advocacy”
- Prior to law school, served as Communications Director and Press Secretary for Member of Congress
- Selected Publications
- “Case May Strengthen Trademark Protections,” San Diego Business Journal (2016)
- “DOJ Shifts Focus to Individual Misconduct,” Los Angeles Daily Journal and San Francisco Daily Journal (2015)
- “Counting Down Another Music Marathon: Copyright Arbitration Royalty Panels and the Case of Internet Radio,” Marquette University Intellectual Property Law Review
- “Commercial Software Developers Lose Research and Development Tax Credit: Tax and Accounting Software Corporation v. United States of America,” Georgetown University Law Center’s The Tax Lawyer
- Legal Associations
- American Bar Association, Intellectual Property Law Section (Patent and Trade Secret Committees); Criminal Justice Section; Women in White Collar
- Federal Bar Association, San Diego Chapter
J.D., Georgetown University Law Center, 2005
Awards: Won National Computer Law Association Writing Competition.
B.A., Boston University, 1997
magna cum laude, Awards: B.U. Trustee Scholarship (full tuition merit-based award); College Prize for Excellence in Urban Studies and Public Policy (1st in major); Distinction in Political Science (2nd in major)
U.S. District Courts for the Southern, Central and Northern Districts of California
U.S. District Court for the Eastern District of Texas
U.S. Court of Appeals for the Ninth Circuit
U.S. Court of Appeals for the Federal Circuit