Cases

Appellate Litigation (reported):

King Instrument v. Tapematic, Federal Circuit.
Bench trial in favor of our client concerning patents on apparatus for winding tape into blank cassettes. Judgment for over $1,000,000.00. One of the leading cases in damage awards as the reasonable royalty was over 60% for products that the patentee would have sold but were not manufactured under the patent. We also submitted Amicus Curie briefs in the related Rite Hite Decision and are referenced as such in the decision.

Rachel v. Banana Republic, 4 USPQ 2d 1877 (9th Cir. 1987)
Our client Banana Republic was sued for copyright infringement and trade dress infringement. We obtained summary judgment on Copyright claim, directed verdict on trade dress claim, jury verdict on related contract claim, and sanctions. Affirmed on appeal except for sanctions.

MFG v. EMRA, 2 USPQ 2d 1538 (7th Cir. 1987)
Our client Supercuts (then EMRA) was sued for trademark infringement by owner of SUPERCUT trademark on hair cutting shears. Summary judgment in favor of our client finding no likelihood of confusion. Affirmed on appeal.

Power Controls v. Hybrinetics, 231 USPQ 774 (Fed. Cir. 1986)
Preliminary injunction for trade dress infringement granted against our client by district court. Federal Circuit granted its first stay of a preliminary injunction (pursuant to FRAP 4) pending appeal and vacated the preliminary injunction.

Hall v. Intex Plastics, 809 F.2d 788 (Fed. Cir. 1986) (unpublished)
Our client’s waterbed patent was held invalid, we had lower court decision vacated and remanded. A jury ultimately granted a six million-dollar judgment on this patent.

Micro-Mega v. Jacklich, 1988 U.S. App. LEXIS 2129 (Fed. Cir. 1988) (unpublished)
Jury trial found patent asserted against our client to be invalid for failing to comply with the written description requirement of 35 USC 112. Affirmed on appeal.

 

District Courts (reported):

Chiron Corp. v. SourceCF Inc. 431 F.Supp.2d 1019 (N.D.Cal., 2006)
Chiron, the holder of medical-method patent disclosing a method of treating lung infections, namely using certain concentrations of liquid tobramycin with high-efficiency nebulizers, sought to enjoin cystic fibrosis (CF) victims, their parents, and their physicians from using any treatment method administering tobramycin via new and efficient nebulizers. Chiron was unsuccessful and the new protocol is available to CF victims, who are mainly children.

Sideout Sport v. Bentley’s Restaurant, 22 USPQ 2d 1239 (C.D. Cal. 1991)
We sued Bentley’s Restaurant for trademark infringement and filed motion for preliminary injunction. Court granted preliminary injunction.

Sideout Sport v. Nike, Inc., 21 USPQ 2d 1633 (C.D. Cal. 1991).
We sued Nike for trademark infringement over the SIDE 1 trademark and filed a motion for preliminary injunction. After several months of intense discovery, motion was heard and injunction was granted. Nike’s only line of women’s athletic shoes was enjoined weeks before Christmas.

 

Trials:

Doyle v. Bilafer, (Superior Ct. Ca. 2007)
Our client filed a Petition for Surcharge and after a several week bench trial, our client prevailed and was awarded a Surcharge.

Source CF v. Chiron, (N.D. Cal. 2006)
Our client was sued for patent infringement, and after a 5 day bench trial, was found not to infringe any claims of the Chiron patents.

Homeland Housewares, (C.D. 2006)
Our client was sued for trade dress infringement and an Order to Show Cause for Contempt was filed and set for an evidentiary hearing. No contempt was found, and the client continues to sell a competitive product today to major retailers such as Wal-Mart.

One Call Locators v. Scott Smith (State Ct. Montana)
Our client successfully sued former owner for breach of a non-compete clause. Tried in a several day Arbitration proceeding.

Zoltar v. Qualcomm, (N.D. Cal. 2004)
Our client sued for patent infringement and there were dozens of counterclaims. After a 5 week trial, the jury split on the issues of liability finding no liability and was unable to decide other issues. No counterclaim was successful and the case was reset for trial.

Gould v. Cooper Lasersonics, (N.D. Cal. 1987)
Our client was sued for patent infringement by Gordon Gould (the inventor of the laser). Jury found infringement but nominal damages. Damages sought were in the millions, damages found were appx. $200,000.

Micro-Mega v. Jacklich, (N.D. Cal. 1987) aff’d 1988 U.S. App. LEXIS 2129 (Fed. Cir. 1988) (unpublished)
Bench trial found patent asserted against our client to be invalid for failing to comply with the written description requirement of 35 USC 112, affirmed on appeal.

King Instrument v. Tapematic, (D.C. Mass. 1990)
Bench trial resulted in favor of our client finding patent infringement and awarding over $1,000,000. in damages.

McDonald’s v. Arche (N.D. Cal. 1989)
Our client was sued for trademark infringement of SINGLE ARCH LOGO on computer products. Bench trial decision in favor of our client.

Rachel v. Banana Republic (N.D. Cal. 1985)
Our client was sued for copyright infringement and trade dress infringement. We obtained summary judgment on Copyright claim, directed verdict on trade dress claim, jury verdict on related contract claim, and sanctions.

 

Litigation:

Atari v. Sega (N.D. Cal.)
Filed a Patent Infringement case on memory technology for video games, settled with our client being paid over $80,000,000.

COMSAT v. General Instruments (N.D. Cal.)
Filed a Patent Infringement case on set top box technology, settled with our client being paid over $10,000,000.

On Command Video v. LodgeNet (N.D. Cal. -three cases-, S.D. South Dakota)
Four related patent infringement cases, very complicated, with combined legal bills in excess of $10,000,000. Ultimately settled on the eve of trial with our client being paid $17,000,000.

Chiron v. Foundation Care, Maxor, and Pharmaceutical Specialties (N.D. Cal.)
Our clients were sued for Unfair Competition over a medical device used to deliver tobramycin to patients with Cystic Fibrosis. The case was resolved with our clients not losing a sale, or having to stop the sale of the medical device, which is now a leading selection among doctors.

ELM Consulting v. Endpoint, (Dist. Wisc. 2008)
Our client sued former employees for taking trade secrets and for violation of the Federal Computer Theft, and related causes of action. The case settled while our Motion for Preliminary Injunction was pending.

Husain v. Khan, (N.D. Ca. 2006) 
Our client sued on a breach of contract regarding an investor in a new telephone technology to be developed. The matter is pending.

Sundberg v. Behavioral Analysts, (N.D. Ca. 2007)
Our client, an author of books for autistic children, was threatened with litigation of he were to author a new generation of books. The case settled with our client receiving back royalties and the right to continue authoring books for autistic children without further threat of litigation.

ELM v. @Road
Our client sued for rescission under a contract. Case was promptly resolved.

Renaissance Construction v. Trust of Ziegler, (Superior Ct. Ca. 2008)
Our client successfully moved for Summary Judgment on a construction contract and obtained an Order for over $275,000.00.

Doyle v. Brown, (Superior Ct. Ca. 2007)
Our client sued for Partition of real property. The property was sold.

Dahlgren Footwear v. Southern Mills (S.D. Cal. and D.S.C.)
Our client sued for patent and trademark infringement and breach of contract. They were counter-sued in South Carolina District Court. Case resolved with defendant agreeing to stop all infringement and a resolution of all other issues.

Koolatron Corporation v. Homeland Housewares, LLC, (C.D. Cal.)
Our client filed a DJ action as to patent infringement on both utility patents and design patents. Case resolved with client able to continue selling its products.

Halo Management, LLC v. Interland, Inc., (N.D. Cal.)
Our client filed a trademark infringement action, and lost a motion for summary judgment on the issue of naked licensing. The case was then settled.

Merrill Lynch, et al. v. John T. Folsom, et al, (S.D. Cal.)
Our client, a senior producer, was sued for breach of a covenant not to compete by Merrill Lynch. Case was resolved with our client continuing his new employment.

The Massachusetts Institute of Technology, et al. v. Abacus Software, Inc., et al, (E.D. Tex.)
We represented approximately a dozen clients accused of patent infringement as part of a group of defendants that totaled over 300 defendants. Our clients raised the one successful issue on summary judgment resulting in all of them being dismissed from the case.

ELM v. Williams (State Ct. Peoria Ill)
Our client has sued a former owner for violation of his con-compete clause. The case was resolved.

CLS v. Bauger (D.C. Az.)
Our client was sued for hiring an ex-employee and for that employee breaching his non-compete agreement. Resolved in mediation.

Network Computer v. Network Computer, Inc. (N.D. Cal.)
Filed a trademark infringement action against Oracle subsidiary over the corporate designation. Motion for Preliminary Injunction filed and cross motion for summary judgment filed on basis that designation was generic. Court agreed and ruled that designation, Network Computer, is generic.

Brosnan v. Rollerblade (N.D. Cal.)
Filed a patent infringement action over moveable brakes on the back on in-line skates. Settled with client granting a license to Rollerblade.

CST v. Silicon Graphics, Eastman Kodak, Alias/Wavefront (N.D. Cal.)
Filed a patent infringement action over the digital methodology for the colorization of black and white films. Case settled.

S & S Sports Power v. v. Huss Maschinenfabrik GmbH& Co. (C.D. Cal.)
Brought in by counsel on the eve of trial to handle the trial in a patent infringement suit over pneumatic amusement park rides. Case settled on eve of trial.

Heat & Control v. Hester (N.D. Cal.)
Brought in by plaintiff’s counsel to advise in case and brokered a settlement.

Genmark Automation v. Optical Specialties (N.D. Cal.)
Client sued for patent infringement over robotic technology for wafer manufacturing. Plaintiff dropped lawsuit.

TM Patents v. Silicon Graphics and Cray (N.D. Cal)
Filed for patent infringement over super computer technology. Case settled with payment for a covenant not to sue.

Trigg Laboratories, Inc. v. Westridge Laboratories, Inc. (N.D. Cal.)
Brought in to assist in trademark case over WET trademark as used on personal lubricants because fees had spiraled out of control and trial was approaching. Case settled with consent decree in our client’s favor.

Genmark Automation v. Optical Specialties (N.D. Cal.)
Client sued for patent infringement over robotic technology for wafer manufacturing. Plaintiff dropped lawsuit.

ATEC (Athletic Training Equipment Co. v. Pacer Mfg. (N.D. Cal.)
Filed patent infringement action over a batting cage and a motion for preliminary injunction. Consent Decree entered with defendant switching to a non-infringing design.

Cal. Micro Devices v. Universal Semiconductor (N.D. Cal.)
Filed patent infringement action and motion for preliminary injunction. Case settled.

Flowmaster v. D.W. Green Enterprises (Arkansas)
Filed patent infringement action suit and motion for preliminary injunction. Case settled with consent decree.

Gladish v. Tyco Toys (N.D. Cal.)
Filed patent infringement action, defendant found anticipatory prior art. Case settled.

Hall v. Various Waterbed Retailers (C.D. Cal.)
Patent infringement case on the “waterbed” patent. Brought in to handle 19 separate motions for summary judgment. Motions denied, cases settled.

OCLI v. Applied Vision, Ltd. (N.D. Cal.)
Filed patent infringement action and motion for preliminary injunction. Motion denied and case transferred to new counsel.

See’s Candy v. Various California Candy Manufacturers. (N.D. Cal. and C.D. Cal.)
Filed trademark infringement suits against several companies over their use of BORDEAUX as a See’s trademark for a buttercream chocolate. All cases resolved in See’s favor.

See’s Candy v. Lydia See’s (C.D. Cal.)
Filed trademark infringement action against the use of SEE’S as a family surname on a coffee shop. Case resolved with consent decree in See’s favor.

Hewlett-Packard v. Teradyne, Inc., (N.D. Cal.)
Our client was sued for patent infringement on three separate patents.

Spectradyne, Inc. v. On Command Video Corp., (E.D. Va.)
Our client was sued for patent infringement and for a declaratory judgment that two of its patents are not infringed by Spectradyne. We prevailed on motion practice and ended up purchasing Spectradyne.

Gladish v. Tyco, (E.D. Cal.)
Our client sued for patent infringement over crash test dummy toys. Case settled.

Digital Security Controls v. C & K, (E.D. Cal.)
Our client, DSC, has filed a declaratory judgment action of non-patent infringement. Case settled.

Genmark v. Equipe Technologies, (N.D. Cal.)
Jury found Equipe infringed copyright and to have violated trade secrets. Thee effect of which was to put the company out of business. We were retained to argue post trial motions and to handle appeal. All substantive post trial issues were adjudicated in our client’s favor. Company ultimately sold to PRI for $180,000,000.

OCLI v. DSI, (N.D. Cal.)
We brought Motion to Intervene on behalf of third party three weeks prior to trial in light of a recently filed State court action. The State court action was dismissed with prejudice thereby mooting the Motion to Intervene.

ATEC v. Pacer, (N.D. Cal.) 
We sued for patent infringement and filed for a preliminary injunction, case settled during pendency of motion for scope of requested injunctive relief.

Pioneer Chicken v. Various Franchisees (C.D. Cal.)
Filed trademark infringement and breach of contract actions against various rogue franchisees who stopped paying franchisee fees or were ordering materials through third parties. All cases resolved in our client’s favor.

Polaris v. Seibel (N.C. Cal.)
Retained to enforce consent decree re injunctive relief regarding pool equipment filters.

Del Monte v. Lloyd Cruger, (D.C. Ore.)
We obtained a TRO against Defendant in a trade secret action. Case promptly settled.

Dionex Corp. v. Millipore Corp., (N.D. Cal.).
Patent infringement action against our client. We prevailed on Motion to Transfer and Motion to Dismiss, settled.

Sideout Sport v. Bentley’s Restaurant, 22 USPQ 2d 1239 (C.D. Cal.)
We sued for trademark infringement and filed a motion for preliminary injunction. Court granted preliminary injunction. Case promptly settled with injunction intact and our client receiving damages.

Sideout Sport v. Nike, Inc. 21 USPQ 2d 1633 (C.D. Cal.).
We sued Nike for trademark infringement and filed a motion for preliminary injunction. After several months of intense discovery, motion was heard and injunction was granted. Nike’s only line of women’s athletic shoes was enjoined weeks before Christmas.

Supercuts v. Superhair, (S.D. Tex.)
We sued for trademark infringement. Case settled with injunction and consent judgment.

Brophy v. ATEC, (N.D. Cal.)
Our client was sued for patent infringement. We had case transferred from Miami and it promptly settled after transfer.

Dunn Technology v. Digital Technology Inc. (N.D. Cal.)
. We sued for trademark infringement and brought a motion for preliminary injunction. Case settled while motion was pending.

Everest & Jennings v. Sunrise Medical, (C.D. Cal.)
Our client was sued for patent infringement. We found anticipatory prior art and E&J dropped lawsuit.

Pierson Enterprises, The Candy Barrell v. Sweet Streets Candy, (D.C.N.J.)
We filed trade dress infringement action brought on behalf of our client. Case settled with injunctive relief.

Star Stainless Screw v. Texas Bolt, (W.D. Wash.)
We brought declaratory judgment for client whose goods were seized by customs as counterfeit. Case settled and goods were released. No sanctions were sought by Customs.

Supercuts v. Super Clips, (D.C. Mass.)
Our client sued for trademark infringement. We obtained both a preliminary injunction as well as a judgment of contempt.

Supercuts v. Super 7 Cuts, (S.D. Fl.)
Our client sued for trademark infringement. Case settled with injunction and consent judgment.

Supercuts v. Super Cut, (D.C. Ga.)
Our client sued for trademark infringement. Case settled with injunction and consent judgment.

Supercuts v. Super 7 Cuts, (S.D. Fl.)
Our client sued for trademark infringement. Case settled with injunction and consent judgment.

Supercuts v. Super Hair and Nails, (C.D. Cal.)
Our client sued for trademark infringement. Case settled with partial injunction and consent judgment.

Texas Bolt v. Star Stainless Screw, (S.D. Tex.)
Related to Washington district court action.

Timber Crest Farms v. Appleseed Orchards, (N.D. Cal.)
Our client was sued for trademark infringement. Case settled with our client’s rights being purchased.