Representative Patent Cases on Behalf of Patent Owners

Dey, L.P. v. IVAX Pharmaceuticals, Inc., et. al. (Central District of California)

Represented Dey in a Paragraph IV litigation under the Hatch-Waxman Act against six companies, all competing for the ability to manufacture the generic version of the client’s branded product (a treatment for COPD). Obtained a favorable settlement with all six generic manufacturers.

Ronald A. Katz Technology Licensing, L.P. v. General Electric Capital Corp., et. al. (Central District of California)

Represented plaintiff in a lengthy and complex litigation relating to more than eight separate patents and more than 40 individual patent claims asserted against General Electric entities. This particular litigation was consolidated with more than 40 other cases in a multi-district litigation, making it one of the largest patent cases in U.S. history. Obtained a favorable settlement on behalf of the client.

Golden Bridge Technology Inc. v. Apple, et. al. (District of Delaware)

Represented plaintiff, a pioneer in 3G wireless technology, in an action involving two standards essential patents relating to 3G UMTS wireless telecommunications.

Golden Bridge Technology Inc. v. Apple (Northern District of California)

Represented plaintiff, a pioneer in 3G wireless technology, in an action involving a standards essential patent relating to wireless telecommunications.

Mosaid Technologies, Incorporated v. Dell, Inc., et. al. (Eastern District of Texas)

Represented the patent owner and exclusive licensee in a patent infringement action involving several standards essential patents relating to Wi-Fi. After a hard-fought battle, obtained favorable settlements on behalf of the client with all defendants.

Data Encryption Corp. v. Microsoft Corp. (Central District of California)

Represented the patent owner in a patent infringement action relating to encryption technology.

Activision Publishing Inc. v. Worlds Inc. (Central District of California)

Represented plaintiff, a video gaming company, in a patent infringement action relating to gaming software.

Shire v. Watson (Central District of California)

Represented the brand in a Paragraph IV litigation under the Hatch-Waxman Act relating to oral treatment for attention deficit disorder.

In the Matter of Certain Devices for Mobile Data Communication (International Trade Commission)

Represented the complainant, a pioneer in the mobile Internet and owner of several patents relating to accessing the Internet from mobile devices, in a multiple-patent investigation before the International Trade Commission.

Unwired Planet v. Google (District of Nevada)

Represented plaintiff in an action asserting ten of plaintiff’s patents covering inventions relating to mobile applications, including location and messaging services.

Confidential Evaluation of IP Portfolios

Conducted confidential analysis on large patent portfolios, evaluating strength of patents and possible infringement claims.

 

Representative Patent Cases on Behalf of Accused Infringers

Oceanovac v. Dole Food Company, Inc. (Central District of California)

Represented defendant in a patent infringement action alleging infringement of a method patent directed to preserving fresh produce, including lettuce, by treating the produce with warmed water followed by vacuum cooling. Won complete dismissal with prejudice on behalf of Dole.

Bluestone v. VIZIO, et. al. (Northern District of California)

Represented VIZIO in a patent infringement action alleging infringement of plaintiff’s patent relating to LED technology. Obtained dismissal of action and covenant not to sue from plaintiff following Markman and the filing of motion for summary judgment of non-infringement.

Allergan v. Exela Pharmsci, Inc., et. al. (Central District of California)

Represented the Abbreviated New Drug Applicant for an opthamalic solution in a Paragraph IV litigation under the Hatch -Waxman Act.

Global Touch Solutions v. VIZIO, et. al. (Northern District of California)

Represented VIZIO against allegations of infringement of six patents relating various touch control and screen illumination features.

Aspex Eyewear v. Marchon Eyewear (Central District of California)

Represented defendant in a patent infringement action relating to eyeglass frames.

Freeny v. VIZIO, et. al. (Eastern District of Texas)

Represented defendant in a patent infringement action relating to wireless technology. Achieved dismissal with prejudice following motion.

Roche Diagnostics Corp. v. Apex Biotechnology, et. al. (Northern District of Illinois)

Defended Apex against claims of infringement of a patent directed towards blood glucose monitoring devices.

Pre-Litigation Advice and Paragraph IV Letters

Advised a major pharmaceutical company desiring to manufacture a generic product on the specifics of the preparation of the Paragraph IV letter and the timing and filing of the Abbreviated New Drug Application under the Hatch-Waxman Act.

Investment Advice Pertaining to the Hatch-Waxman Act

Using litigation expertise and Hatch-Waxman experience, conducted confidential analysis for an investment firm interested in investing in various pharmaceutical companies. Identified issues relating to the target companies and advised on the timing and effects on revenue streams, taking into account various facets including FDA approvals and the Hatch-Waxman Act, pending and possible patent litigations, capitalization, strength of patents and market pressures.

 

Representative Federal Circuit Appeals

Ultramercial, LLC v. Hulu, LLC (Federal Circuit Court of Appeals)

Represented plaintiff, an advertising company, in asserting its method patent for gating and monetizing media content distributed over the Internet through the use of sponsored advertising. Overturned the trial court’s initial finding of invalidity based on patentable subject matter at the U.S. Court of Appeals for the Federal Circuit, resulting in a string of published opinions relating to business method patents and subject matter patentability. See Ultramercial v. Hulu, 657 F.3d 1323 (Fed. Cir. 2011), aff’d with decision, 722 F.3d 1335 (Fed. Cir. 2013), rev’d, 772 F.3d 709 (Fed. Cir. 2014), cert denied, 2015 WL 2457913.

Oplus v. Vizio (Federal Circuit Court of Appeals)

Represented consumer electronics manufacturer in an appeal relating to section 285 of the Patent Act. In a precedential opinion, the Federal Circuit Court of Appeals vacated and remanded the District Court’s decision denying fees and instructed the district court to reconsider its earlier decision under the Octane Fitness case. The Federal Circuit also found that VIZIO had incurred additional fees caused by plaintiff’s litigation misconduct. See Oplus v. Vizio,782 F.3d 1371 (Fed. Cir. 2015).

Clean Air Engineering Maritime, Inc. v. Advanced Cleanup Technologies, Inc. (Federal Circuit Court of Appeals)

Won affirmance in the Federal Circuit Court of Appeals on behalf of client, Clean Air Engineering Maritime, Inc., in a case taken over post-trial, with the Federal Circuit affirming both summary judgment of non-infringement and verdict of invalidity on a method and a system patent for controlling maritime emissions.

Angioscore v. Trireme Medical, LLC (Federal Circuit Court of Appeals)

Won complete reversal of a $20+ million dollar judgment before the Federal Circuit Court of Appeals on behalf of client, Eitan Konstantino. After Mr. Konstantino suffered a judgment in the trial court in excess of $20 million for alleged breach of fiduciary duty through alleged misappropriation of a corporate opportunity for his development of an innovative angioplasty balloon catheter while serving as an outside director for the plaintiff corporation, Mr. Konstantino retained new counsel to represent him on appeal. The ruling was reversed in its entirety by the Federal Circuit following appeal.

Microprocessor Enhancement Corp. v. Texas Instruments (Federal Circuit Court of Appeals)

Represented the owner and exclusive licensee of a patent relating to microprocessor design. On appeal, the Federal Circuit reversed the trial court’s order invalidating the patent.

 

Representative Trademark, Copyright and Trade Secret Matters

Wag Hotels v. Wag Labs (Central District of California)

Represented plaintiff, a pet services provider, in an action alleging infringement of plaintiff’s trademark by a dog walking service. Case resulted in a favorable settlement for the client.

Joltid Limited v. Skype Technologies, SA (Northern District of California)

Represented plaintiff Joltid Limited in a high-profile copyright infringement litigation against Skype Technologies, SA, Skype, Inc., eBay Inc. and various Skype investors Shresulting in a favorable settlement.

Academy of Motion Pictures Arts & Sciences

Represented the Academy of Motion Picture Arts and Sciences in various copyright and trademark matters relating to OSCAR and ACADEMY AWARDS.

Bally Gaming

Represented well-known casino gaming company in several matters against online gaming competitors infringing plaintiff’s copyrights, trademarks and patents.

Air2Water, LLC, et. al. v. Aqua Sciences, Inc., et. al. (Los Angeles Superior Court)

Represented defendant in a trade secret matter relating to innovative water technology.

1Global Place v. Verisign (Arbitration)

Represented 1GlobalPlace, an Internet start-up company, in a successful arbitration against Verisign, a major Internet services company, concerning the contractual interpretation of an “earnout” provision in the merger agreement under which Verisign acquired 1GlobalPlace.