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.
  • 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.
  • 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.

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  • Patent
    • 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 PTAB determining not to institute the IPR proceeding based upon the Patent Owner Statement, which highlighted fundamental inconsistencies in IBM’s assertions.
    • 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 technology in which we prevailed following a virtual Markman Hearing wherein the judge’s order found six claims indefinite.
    • 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.
    • Successfully defended HME Wireless in two contentious patent infringement cases filed by competitor Long Range Systems. Both cases were dismissed with prejudice and without payment following claim construction.
    • 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 defended Stanley Black and Decker, Inc. in a bench trial against claims that one of its popular products infringed the design patent on a competitor’s similar product.
    • Pursued action for Invitae Corporation to have declared invalid genetic testing patents asserted by Myriad Genetics in a Utah MDL proceeding. Following extensive litigation, Myriad abandoned its patent enforcement efforts.
    • 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 Patent Trial and Appeal Board, a ruling the Federal Circuit affirmed on appeal.
    • Successfully defended Atlas Copco in a patent infringement jury trial with over $200 million in damages at stake, prevailed in district court and Federal Circuit appeals, winning a seven-figure attorneys’ fees award.
  • Trademark
    • Represented San Diego Comic Convention against Dan Farr Productions and its founders for trademark infringement and unfair competition for the unauthorized use of the Comic-Convention mark in connection with Salt Lake Comic Convention.
    • Defended RetailMeNot, the world’s largest marketplace for digital offers, against allegations of trademark infringement, unfair competition and dilution.
    • 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.
    • Aggressively defended Bass Pro Shops against allegations of trademark, trade dress, false design, unfair competition, tortious interference and patent infringement, achieving the dismissal of all claims.
  • Trade Secrets
    • 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.
    • Represented a major aviation company in theft of a trade secrets suit against former regional vice president who defected to a principal competitor.
    • Represented a computer security company in a lawsuit alleging misappropriation of data previously supplied pursuant to contract, securing successful dismissal of action by the trial court.
    • Represented a semiconductor company regarding former consultant’s misappropriation of confidential information. Won a temporary restraining order. Parties subsequently entered stipulated permanent injunction and confidential settlement.
    • Represented RetailMeNot in defending against claims of breach of contract and misappropriation of trade secrets in the U.S. District Court, District of Delaware.
    • 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.
    • Represented a cord blood stem cell bank in a New Jersey trade secret and confidential information misappropriation action against its former regional sales manager, who took extensive confidential data to the direct competitor.
  • Copyright
    • Achieved a successful settlement for a client in a copyright infringement matter concerning a popular animated television series.
    • Represented the San Diego County Apartment Association in a copyright dispute with the California Apartment Association over the copyrightability of apartment rental forms. Successfully opposed a temporary restraining order.
    • 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.
  • International Trade Commission 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 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.) Inc., 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.

Practice Area Highlights

  • Ranked in Chambers USA for Intellectual Property in Northern Virginia (2011 – 2023) and Texas (2022 – 2023).
  • Recognized nationally for IP Litigation, Patent Litigation, Patent Law, and Trademark Law by U.S. News – Best Lawyers (2024).
  • 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 partners recognized individually, including one national ranking (2023).

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  • 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).
  • Ranked in California, Washington, DC and Texas as one of the top trademark practices by World Trademark Review’s “WTR 1000” and six lawyers named individually, including one lawyer receiving a national ranking for trademark prosecution (2023).
  • Ranked nationally for patent prosecution and trademark prosecution by Managing Intellectual Property magazine, in addition to regional recognitions in California and Virginia, with four Pillsbury lawyers recognized as “IP Stars” (2023).