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Intellectual Property

Contacts

Jack S. Barufka
Partner, Northern Virginia
T: +1.703.770.7712
Michael E. Zeliger
Partner, Silicon Valley
T: +1.650.233.4069
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Areas of Focus

Recognized as among the most skilled and highly regarded IP practices, Pillsbury provides comprehensive intellectual property advice and protection to clients worldwide.

On the cutting edge of IP for more than 120 years, Pillsbury’s intellectual property lawyers provide clients with successful and comprehensive IP strategies to protect, manage and optimize IP assets. We also assert and defend infringement claims and resolve IP-related disputes before regulatory bodies, in courts and at the negotiating table. Our team includes more than 100 IP lawyers—many bilingual—plus technical consultants, patent agents and former U.S. Patent and Trademark Office examiners. Many team members are scientists and engineers with advanced degrees in electrical and mechanical engineering, chemistry, biotechnology, physics and numerous other technical disciplines.

With offices in key business centers and an extensive network of handpicked international IP lawyers, we secure and enforce worldwide IP assets and help clients optimize their market position. We utilize the latest technology, including an advanced online tracking system and customized extranet to provide real-time information and at-a-glance reports to help clients easily manage their IP portfolios. Our IP litigators have an impressive record of success in federal and state courts and before administrative agencies, such as the PTAB, TTAB, the ITC, WIPO and international alternative dispute resolution forums.

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  • IP Counseling and Prosecution
    • Patents
    • Trademarks and branding
    • Trade Secrets and unfair competition
    • Copyright
    • Intellectual Property Audits and strategic planning
    • Open source
    • Infringement, enforceability and other IP opinions
    • Global protection and enforcement strategies
  • IP Litigation Claims and Defense
    • Patents
    • Trademarks and trade dress
    • Trade secrets and unfair competition
    • Copyright
    • International Trade Commission (ITC) Section 337 proceedings
  • Post-Grant Proceedings
    • Covered business method
    • Derivation proceedings
    • Ex parte reexaminations
    • Inter partes reviews
    • Patent reissues
    • Post-grant reviews
    • Supplemental examinations

Representative Experience

  • Represented Cuker Interactive LLC in a “David and Goliath” trade secret dispute involving website development for Walmart Inc. An Arkansas jury found that Walmart misappropriated trade secrets.
  • Advised a multinational bank in all IP matters worldwide, including patent, trademark, copyright, licensing, IP diligence, IP agreements, monetization, domain names and handling patent and trademark litigation and opposition matters.
  • Represented HM Electronics in a trademark infringement and unfair competition dispute with R.F. Technologies, winning a permanent injunction, a finding of contempt and obtaining court-ordered sanctions for the client.

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  • Patent Prosecution, Counseling and Litigation
    • Represented Fox Corporation, Fox Broadcasting Company and Fox Sports Productions in a patent infringement dispute filed by Recentive Analytics in the District of Delaware relating to network scheduling software. Secured a complete victory, with the court granting Fox’s motion to dismiss with prejudice and finding all four asserted patents invalid for failing to claim patentable subject matter.
    • Defended SiTime in a patent infringement suit filed by VTT Technical Research Centre in the Northern District of California involving MEMS resonator device technology, including arguing the case-dispositive term in one of the first virtual Markman Hearings, that led to the court’s finding the asserted patent invalid and the client prevailing at the conclusion of Markman stage of the proceedings, with the court on its own entering judgment in favor of SiTime.
    • Defended SweeGen and Blue California in a patent infringement lawsuit brought by PureCircle in the Central District of California involving highly soluble stevia sweeteners in which we prevailed on a motion to stay the case in light of a post grant review filed with respect to one of the patents in suit.
    • Defended ViewRay in a patent infringement lawsuit brought by Varian Medical Systems in the Northern District of California involving radiotherapy. The case was stayed and eventually resolved after the court found six claims indefinite during claim construction.
    • Achieved a favorable arbitration ruling for University of Kansas following years litigating a closely watched battle over inventorship credit on National Institute of Health-owned patents covering cancer drug formulations.
    • Secured an $18 million settlement payment to Toshiba Corp. in a patent infringement action against a Taiwanese competitor over DVD technology, and later won a $13 million arbitration award, confirmed on appeal, for further royalties due under the settlement agreement.
    • Successfully prosecuted and enforced a highly coveted and respected Bass Pro fishing lure patent covering a range of infringing products, resulting in numerous licenses and removal of competing lures from the marketplace.
    • Helped a well-funded Austin startup in the cybersecurity industry obtain blockchain patents to utilize blockchain technology to build a platform for greater data security.
  • Trademark Prosecution and Litigation 
    • Represented complainants, Hyundai Motor America and Hyundai Motor Company of Korea, in an ITC matter to stop the importation of illegal, gray-market service and repair parts using the Hyundai trademarks in which the ITC issued a limited exclusion order, cease and desist orders, and a consent order against four automotive parts dealers, including the U.S. dealer, the middleman and the suppliers. (Certain Replacement Automotive Service and Collision Parts and Components Thereof, Inv. No. 337-TA-1160).
    • Represented San Diego Comic Convention against Dan Farr Productions and its founders for trademark infringement and unfair competition over unauthorized use of the Comic-Convention mark in connection with the Salt Lake Comic Convention.
    • Defended RetailMeNot, the world’s largest marketplace for digital offers, against allegations of trademark infringement, unfair competition and dilution.
    • Aggressively defended Bass Pro Shops against allegations of trademark, trade dress, false design, unfair competition, tortious interference and patent infringement, achieving dismissal of all claims.
  • Copyright Counseling and Litigation
    • Handled intricate copyright matters, as well as talent issues, in connection with AT&T Services Inc.’s acquisition of a media company. We also spearheaded the entertainment content and entertainment union-related aspects of this complex transaction.
    • Defended a media company in litigation alleging copyright infringement regarding use of plaintiff’s photos on its website. Favorably settled, with our client retaining free perpetual license to use the photographs.
    • Represented Reelin’ in the Years Productions in connection with its acquisition of all rights in the popular European music show Countdown and in its handling of the archives of The Merv Griffin Show.
  • Post-Grant Proceedings
    • Represented Atlas Copco as the patent challenger in two IPR proceedings, based on two patents involved in eight cases pending in District Court of Delaware. The PTAB issued final written decisions in favor of Atlas Copco, finding all challenged claims unpatentable. Upon the patent holder’s appeal, the Federal Circuit affirmed the PTAB’s decisions, resulting in a complete victory for Atlas Copco.
    • Defended Rigetti Computing against two inter partes reviews (IPRs) brought against one of its foundational patents by IBM, with the Patent Trial and Appeal Board (PTAB) determining not to institute the IPR proceeding based upon the patent owner statement, which highlighted fundamental inconsistencies in IBM’s assertions.
    • Represented patent owner Sleep Number in an inter partes review brought by American National Manufacturing, challenging claims found to infringe in a preceding ITC case and other claims asserted in a district court case relating to the electronic air controller used with an air adjustable mattress. The PTAB confirmed patentability of all but one of the infringing claims and confirmed patentability of newly added claims. 
    • Represented MotionPoint Inc., won a covered business method review before the PTAB by convincing the Patent Office to invalidate TransPerfect’s Scanlon patent, previously found by district court to be valid and infringed.
    • Represented petitioner Medtronic in three inter partes review proceedings in which all challenged claims to a percutaneous aortic valve replacement were found unpatentable by the PTAB, a ruling the Federal Circuit affirmed on appeal.
    • Achieved victory for Schrader-Bridgeport International in inter partes review with PTAB finding unpatentable several claims in a tire pressure monitoring system patent owned by two Swiss companies.
  • Open Source
    • Advised the Washington Post Company, a diversified media organization, in connection with open-source technology matters.
    • Advised Tenable Network Security on an open-source/proprietary licensing strategy for its open-source Nessus vulnerability scanner and evaluated venture capital investment opportunities.
  • ITC Section 337
    • Represented complainant Millennium Dental Technologies regarding false advertising and alleged violations of importation. Complaint was withdrawn and dismissed.
    • Represented respondents The Black & Decker Corporation, Black & Decker (U.S.) , bObsweep Inc., bObsweep USA, Hoover Inc., Royal Appliance Manufacturing Co. d/b/a TTI Floor Care North America Inc. and Shenzhen Silver Star Intelligent Technology Co., Ltd. regarding alleged infringement of complainant iRobot’s patents, resulting in favorable final initial determination finding invalidity and no infringement of certain products and patents, currently before the commission.
    • Represented Sigma Designs in the ITC against Broadcom regarding alleged patent infringement of Sigma system of chip (SoC) devices used in televisions. Final initial determination of non-infringement for all three patents asserted against Sigma.
  • Trade Secrets Counseling and Litigation
    • Secured permanent injunction for LG Electronics Mobilecomm, preventing a former employee and his new employer from using misappropriated trade secrets and obtaining an agreement to destroy all material taken.
    • Won more than $23 million in damages, injunctive relief and attorneys’ fees for Eldorado Stone, LLC against Renaissance Stone Co. on trade secret misappropriation, copyright and trademark infringement and other claims.

Practice Area Highlights

  • Ranked in Chambers USA for Intellectual Property in Northern Virginia (2011 – 2023) and Texas (2022 – 2023).
  • Ranked in Washington, DC, and Texas as one of the world’s leading IP practices across all aspects of patent law by Intellectual Asset Management’s “IAM Patent 1000,” with six attorneys individually recognized, including one national ranking (2023).
  • Ranked nationally for patent prosecution and trademark prosecution by Managing Intellectual Property, in addition to regional recognitions in California and Virginia, with four Pillsbury lawyers recognized as “IP Stars” (2023).

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  • Ranked in California as one of the top trademark practices by World Trademark Review’s “WTR 1000,” with six lawyers named individually, including one lawyer receiving a national ranking for trademark prosecution (2024).
  • Recognized nationally for IP Litigation, Patent Litigation, Patent Law, and Trademark Law by S. News – Best Lawyers (2024).
  • Recognized as a United States leader in patent prosecution (including reexamination and post-grant proceedings) by The Legal 500 U.S. in 2022.
  • Managing Intellectual Property named Pillsbury “best in the West” for enforcement and litigation for the second consecutive year in the category Trademark Contentious (West) (2021 – 2022).

Resources

PTAB Handbook

Case Study

Defending Hyundai from Gray-Market Fraud

IP Courts & Entities At-a-Glance
Updates (COVID-19)

Internet & Social Media Law Blog

Factsheet

European IP Practice

Case Study

(Hoover etc.) Robotic Vacuums Clear ITC Section 337 Challenge

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