Microban Systems, Inc. v. Skagit Northwest Holdings, Inc.
Represented subsidiaries of Microban International Inc. in suit against licensee for breach of license agreement for MICROBAN trademark and trademark infringement for use outside scope of license. Successfully settled after cross-motions for summary judgment. (W.D. Wash. 2015-2016)
Blue Cross and Blue Shield Association v. Zoom Management, Inc.
Defended Zoom Care clinics against trademark infringement claims of Blue Cross and Blue Shield Association. Successfully settled after exchange of survey experts’ reports. (W.D. Wash. 2015-2016)
Clean Energy Management Solutions, LLC v. Cascade Energy, Inc.
Defended Cascade Energy Inc. against patent infringement claim involving energy management information systems. Successfully negotiated dismissal of all claims before answering the complaint. (E.D. Tex. 2016)
RFJ Licensing, LLC v. Icom America, Inc.
Defended Icom America Inc. against claim of patent infringement directed at linking distant two-way radio relay stations across a computer network. Obtained dismissal of all claims with prejudice. (N.D. Tex. 2016)
Full Sail Brewing trademark enforcement
Representing Full Sail Brewing in numerous proceedings in the Trademark Trial and Appeal Board to oppose applications seeking to register trademarks confusingly similar to Full Sail’s SESSION trademarks. Successfully defeated or settled all proceedings. (TTAB Ongoing)
Willamette View Inc. v. Willamette View Foundation
Represented nonprofit operator of continuing care retirement community in trademark and trade name infringement claim against charitable foundation. Successfully settled after opposing defendant’s motion to dismiss. (D. Or. 2016)
The Pokémon Company International, Inc. v. RageOn, Inc.
Represented the Pokémon Company International in copyright infringement action against online seller of merchandise bearing images of Pokémon characters. Successfully settled after opposing defendant’s motion to dismiss on alleged fair use defense. (W.D. Wash. 2015)
iovation, Inc. v. IOvations, Inc.
Representated internet fraud prevention and authentication company iovation in claim for infringement of its IOVATION trademark. Successfully settled at close of discovery. (D. Mass. 2014-2015)
Edge Games, LLC v. Houghton Mifflin Harcourt Publishing Company
Defended textbook publisher on claims of trademark infringement, unfair competition, and false advertising. Successfully settled. (C.D. Cal. 2015)
Phoenix Licensing v. Carnival Corp. and Phoenix Licensing v. Holland America Line
Defended Carnival Cruise Lines and Holland America Line against a non-practicing entity asserting infringement of patents related to computerized generation of customized direct marketing materials. Successfully settled. (E.D. Tex. 2013-2015)
Defense of licensees against copyright infringement
Defense of licensees of Attachmate software against copyright infringement and breach license claims for alleged overinstallation of software. Includes pre-litigation dispute resolution for licensees in such areas as banking, consumer products, and health care. Also defended licensees in several copyright infringement lawsuits (see below). (2008-2015)
Grupo Bimbo S.A.B. de C.V. v. Snak-King Corp.
Defended Snak King against claims that its TACO-LITOS rolled tortilla chips infringe trade dress, trademark and utility patent rights asserted by Bimbo, seller of TAKIS rolled tortilla chips. (C.D. Cal. 2014-2015)
Legit Organics LLC v. Celisac LLC
Asserted claim for infringement of LEGIT for organic candy bars against company using LEGIT PIZZA on gluten-free dough mix. Defendant abandoned mark shortly after suit filed. (D. Or. 2014)
Wang v. Young d/b/a BIANG!
Asserted trademark infringement claim on behalf of owner and operator of well-known New York City Chinese noodle restaurant BIANG! against Seattle-area restaurant of same name. Obtained consent decree. (W.D. Wash. 2014)
Ring & Pinion, Inc. v. ARB Corp.
Represented patentee ARB Corp., a designer and manufacturer of equipment for off-road vehicles, in defense of declaratory judgment action and infringement counterclaims with respect to ARB’s patent for a locking differential. After prevailing on claim construction issues, the plaintiff changed its proposed design around ARB’s patent. Following successful appeal to the Federal Circuit, obtained summary judgment of infringement of all claims. Ring & Pinion Service Inc. v. ARB Corp. Ltd., 743 F.3d 831 (W. D. Wash.; Fed. Cir. 2014)
Trident Seafoods Corp. v. Triton Seafoods LLC
Represented Trident in trademark infringement action over confusingly similar TRITON SEAFOODS mark. Obtained permanent injunction. (W. D. Wash. 2013-2014)
Mercer Publishing LLC v. Houghton Mifflin Harcourt Co.
Represented Houghton Mifflin Harcourt in defense of copyright infringement claims brought by publisher of study guides for HMH’s CogAT test, and in arbitration over alleged breach of previous settlement agreement between parties. Successfully settled. (W. D. Wash. and arbitration 2013)
Seamless Web Application Technologies LLC v. Providence Health & Services
Defended Providence against claims by software developer for copyright infringement, trade secret misappropriation, and quantum meruit liability. Successfully settled. (D. Or. 2012-2013)
Bike Alert plc v. JT Sports, LLC
Represented owner of JT RACING mark in opposition and cancellation proceedings regarding rights to JT RACING and JT SPROCKETS marks. Successfully settled. (TTAB 2010-2013)
Eagle View Technologies, Inc. v. Aerialogics LLC
Defended aerial measurement service provider against infringement suit on three patents directed to computerized system for extracting three dimensional measurements from aerial photographs. Case stayed pending Patent Office reexamination based on significant new prior art uncovered. (W.D. Wash. 2012-2013)
Leatherman Tool Group, Inc. v. Coast Cutlery Corp.
Represented Leatherman Tool Group in a false advertising claim against its competitor Coast Cutlery for false statements made by Coast regarding the steel used in its knives. (D. Or. 2011-2012)
Zweibrüder Optoelectronics v. Coast Cutlery Corp.
Represented Leatherman’s Zweibrüder subsidiary, designer and manufacturer of LED lights, in a dispute with Coast, Zweibrüder’s former distributor, over ownership of trademarks and unfair competition. (D. Or. 2011-2012)
Industrial Software Solutions – Wonderware LLC v. Pacwest Integration, Inc.
Represented plaintiff in claim for infringement of PACWEST mark for integration services in connection with operations management software; successfully settled. (W.D. Wash. 2012)
Ergo, LLC. v. Pacific Cycle, Inc.
Prosecution claim for infringement of patent covering ergonomic bicycle seat and defense of false marking counterclaim. Successfully settled after obtaining favorable claim construction ruling. (W.D. Wash. 2009-2011)
Frank Russell Company v. Factor Advisors, LLC
Represented Frank Russell in a declaratory judgment action seeking confirmation of Frank Russell’s right to use the term “factor” as part of the name of an exchange traded fund. Successfully settled. (W.D. Wash. 2011)
Jovanovich v. Redden Marine Supply, Inc.
Defense of commercial fishery supply company against alleged infringement of patent for multicolored fishing nets. After prevailing on claim construction, plaintiff voluntarily dismissed complaint with prejudice. (W.D. Wash. 2010-2011)
RovAir, Inc. v. Clearwire Communications, LLC
Defended Clearwire against trademark infringement claim involving the mark RovAir for wireless broadband services. Case successfully settled. (D. Mass. 2011)
United States Playing Card Co. v. Angel Playing Cards Co., Ltd
Represented the leading manufacturer of playing cards in eight consolidated trademark opposition and cancellation proceedings in the United States, Canada, and Singapore challenging card back designs used by a competitor, Angel Playing Cards, and defending against a cancellation counterclaim. Case successfully settled. (TTAB 2009-2011)
Anderson v. Pearson plc et al.
Defended the U.K., Canadian, and U.S. publishers of Penguin Books, and their corporate parent, against a copyright infringement claim arising from use of photo on the cover of a book that had not been published or sold in the U.S. The case settled satisfactorily after extensive jurisdictional discovery and filing and arguing a motion to dismiss for lack of personal jurisdiction. (D. Alaska 2010)
Attachmate Corporation v. The Public Health Trust of Miami-Dade County Florida v. University of Miami
Represented third-party defendant University of Miami against claims of indemnification, contribution, breach of contract, and negligence, in action by software publisher Attachmate for copyright infringement and breach of license agreement arising out of alleged unauthorized copying of software. Obtained favorable settlement among all parties before client incurred significant discovery and litigation expenses. (W.D. Wash. 2010)
Psihoyos v. NBC Universal, Inc. and Getty Images
Defended a copyright infringement claim arising from NBC Universal's use of video footage of a bank of video screens, which it had licensed from Getty Images, and which the plaintiff claimed was substantially similar to his photograph '500 TVs,' depicting a bank of television screens. The case successfully settled after filing a motion to dismiss for failure to state a claim based on lack of substantial similarity to the defendant's photograph. (S.D.N.Y. 2010)
Attachmate Corporation v. Sentry Insurance
Defense of claims for copyright infringement and breach of license agreement arising out of alleged copying of software. Obtained dismissal of breach of license claim as preempted by Copyright Act; case successfully settled shortly thereafter. 90 U.S.P.Q.2d 1648 (W.D. Wash. 2009)
Aztec Fabrication, Inc. v. Compeau's, Inc.
Represented plaintiff Aztec Fabrication, Inc., manufacturer of Phantom Jet Boats, in trademark infringement and cybersquatting claim against terminated distributor. Case settled successfully. (E.D. Wash. 2009)
Information Builders, Inc. v. Omni Development Inc.
Represented software manufacturer in opposition proceedings before the Trademark Trial and Appeal Board. Omni's attempted registration of OMNIFOCUS trademark in connection with personal task management software was opposed by Information Builders, the holder of a number of marks containing the term 'focus.' After mounting a 'crowded-field' defense and proving numerous third-party uses, obtained settlement that allows Omni to use OMNIFOCUS mark. (T.T.A.B. 2007-2009)
JSA Technologies, Inc. v. Informed Decisions Corp. d/b/a CASHNet
Defended payment processing software company against claim for infringement of a patent involving Internet payment and value transfer systems. After a crowd sourcing search uncovered new prior art, case settled favorably. (D. Del. 2009)
Attachmate Corporation v. Carnival Corp.
Defense of copyright infringement and breach of license claims brought by Attachmate for alleged overinstallation of software. Case successfully settled. (W.D. Wash. 2007-2008)
Getty Images (US) Inc. v. Visions of Tomorrow, Inc. and Minden Pictures, Inc.
Represented the world's leading provider of stock photography in arbitration and litigation with two image partners regarding Getty Images' licensing of their images through a new product. The case centered on the image partners' claims that Getty Images breached its contracts with them and violated copyright by licensing the images. After significant discovery and motion practice, the case settled satisfactorily. (S.D.N.Y. and arbitration, 2010)
ProteoTech, Inc. v. Unicity International, Inc.
Represented plaintiff, owner of patent on nutraceutical product, in patent and trademark infringement litigation against former licensee. Won partial summary judgment on issue of first impression with regard to sub-licensing of non-exclusive license agreements; case settled thereafter. (W.D. Wash. 2008)
Trinity Glass International, Inc. v. ODL, Inc.
Represented plaintiff in action seeking a declaratory judgment that defendant's patent on a hurricane-proof window is invalid or not infringed. Case ended in confidential settlement after providing prior art to defendant. (W.D. Wash. 2008)
Dibbs v. The Franklin Mint, et al.
Defense of copyright infringement action involving use of photographs in promotional materials for model airplanes. Obtained favorable confidential settlement. (W.D. Wash. 2007)
Guthy-Renker Corporation v. Halogent LLC d/b/a Exposed Skin Care
Trademark, false advertising and copyright infringement dispute over defendant's keying search engine advertisements to searches on plaintiff's PROACTIV trademark, and content of defendant's website. Successfully settled. (C.D. Cal. 2007)
PotatoFinger, Inc. v. Snack Alliance, Inc.
Represented defendant in trade dress dispute over appearance of potato chip bag, and defeated motion for preliminary injunction. Case subsequently settled. (N.D. Ga. 2007)
Trinity Glass International, Inc. v. Burns, Morris & Stewart, L.P.
Obtained summary judgment of non-infringement after obtaining more favorable claim construction than in previous litigation on same patent; patentee subsequently abandoned its appeal without any settlement being entered into. (W.D. Wash. 2005)
Q-Pharma, Inc. v. Andrew Jergens Company
Successfully defended on appeal district court’s denial of Rule 11 sanctions and of attorneys’ fees under 35 U.S.C. § 285. 360 F.3d 1295 (Fed. Cir. 2004)
Seattle Gourmet Foods, Inc. v. The Bon, Inc.
Represented former manufacturer of Frango chocolates in trademark, trade dress, trade secret and false advertising dispute involving rights to make a competing chocolate under the Frederick & Nelson trademark. Case ended in confidential settlement. (King Cnty. (Wash.) Super. Ct. 2004)