Representative Experience of the Intellectual Property Practice Group
Doing the Impossible (Raychem)
A high-end maker of electronic components asked us to prosecute a pending patent application on the “NOLF” clip, ubiquitous in the telecommunications industry.At the time, copycats had obtained opinions that it was impossible to obtain broad patent coverage for the clip. Despite this, we obtained broad patent coverage. This allowed the company to generate millions of dollars of high-margin sales for their entire product line in the telecommunications connector market.
Patenting Success (Cera)
A start up company’s success depended on obtaining a patent for its microliter separation device. In exchange for an exclusive buying arrangement, a prospective customer with significant potential had agreed to pay a large bonus when a patent issued. We successfully obtained the patent. The start-up got the bonus, and now sells millions of dollars of this product annually.
Protecting the Unprotected
A major international construction company was unable to protect its mark, having its application rejected by the U.S. trademark office. After abandoning its application, the company retained us to do better. We were able to overcome surname and likelihood of confusion rejections, and obtain federal registration. Also, we put a stop to third party infringers, and are well down the road to obtaining international registrations for this valuable mark.
Timed Right for Copyright Protection
Obtained a copyright registration for our client’s high-priced “truck clock.” A competitor emerged, selling an infringing product at a substantially lower price, and destroying our client’s market. On a contingency basis, we brought a copyright infringement suit that resulted in our client obtaining a substantial recovery, and an end to the infringement.
Successfully & Economically Resolving a Copyright Suit
A client was recently sued for copyright infringement. We presented to the plaintiff our analysis of the case, identifying the weak points of the plaintiff’s case. This quickly resulted in a settlement for significantly less than the original demand. Moreover, we were able to obtain insurance coverage for our client, so the insurance company paid most of the settlement and attorney fees.
A Counterfeiter Pays
The sales of a food product importer were threatened by a counterfeit product- a similar product in packaging identical to that of our client. We put an immediate stop to the counterfeiting via an ex parte seizure order. In one of the few anti-counterfeiting cases to actually go to a jury trial, the jury awarded our client damages in the six figures, including punitive damages, which were collected.
An Artist’s Rights
Represented long-term artist client, Kent Twitchell, in his lawsuit against the U.S. Government and 12 other defendants for the desecration of his 70-foot tall landmark mural, which settled for $1.1 million. This settlement is believed to be the largest under the seldom invoked Federal Visual Artists Rights Act (VARA) or the California Art Preservation Act (CAPA). It sets an important precedent benefiting other artists by making it clear that when it comes to public art, an artist’s rights must be respected, or significant liability will ensue.
Keeping Trade Secrets to Yourself
A software company was concerned that employees were stealing trade secrets. Previously, we had helped the client establish a trade secret protection program, including marking documents appropriately, developing policy manuals, and strengthening employment and consulting agreements. This program allowed us to identify and document employee violations. The employees were terminated, and we sent out strongly worded warning letters to those terminated. The trade secrets have since remained secret.
Successfully & Economically Resolving a License Agreement Dispute
A client was sued by its licensee with regard to a license agreement. We arranged for a prompt mediation, and as a result of the arguments we presented during the mediation, the plaintiff never served the complaint on our clients, instead dismissing the lawsuit.
Navigating a Legal Tower of Babel-(Beckman)
Represented a biotechnology client before the European Patent Office where two competitors were challenging a patent grant to our client. Our attorney and our technical expert argued the matter, which took place in three languages, and, if one considers Scottish a foreign language, four. As allowed by the EPO, we amended claims on the fly. The EPO granted our client the patent, and the competitors signed royalty-bearing agreements with our client.