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Gregory B. Phillips

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Attorney User 

Education 

2007
Order of the Coif, St. Thomas More Law Honor Society, Loyola of Los Angeles Entertainment Law Review

Honors 

cum laude

Awards & Honors 

In 2015, Mr. Phillips was recognized in World Trademark Review's "WTR 1000" as a Leading Trademark Lawyer and was recognized for his work in enforcement proceedings, and for being a respected general counsellor.

 

Telephone 

949-721-2894

Office Location(s) 

Professional Profile 

Mr. Phillips is a partner in our Orange County office. His practice includes counseling clients with their domestic and international trademark matters, including clearance, registration and enforcement; federal trademark litigation; petitioning and defending opposition and cancellation matters in front of the U.S. Trademark Trial and Appeal Board; copyright registration and enforcement; and petitioning and defending domain name disputes. 

Mr. Phillips’s practice also includes trademark and copyright licensing and due diligence projects. Mr. Phillips represents clients in several industries, including medical devices, pharmaceuticals, fashion and apparel, mobile device accessories, entertainment, automotive, nutritional supplements, sporting goods, consumer goods, industrial products, hospitality, executive placement services and restaurant services.

Mr. Phillips attends annually the Specialty Equipment Market Association (SEMA) Show in Las Vegas, and the International Trademark Association (INTA) annual meeting. Mr. Phillips is the past co-chair of the Orange County Bar Association’s Entertainment, Sports & Marketing Section, and has presented to non-profit organizations regarding intellectual property matters. Mr. Phillips is a member of both ProVisors and Bruin Professionals.

Cases, Articles, Speeches & Seminars 

Articles, Speeches & Seminars

Susan Natland and Gregory B. Phillips, Slurs, Student-Athletes and Tattoos: Key Intellectual Property Battles in Sports and Their Implications, Chapman University School of Law 2015 Entertainment & Sports Law Symposium (February 2015)

Jeff Van Hoosear and Gregory B. Phillips, Protection for Your Copyrights, Trademarks and Domain Names, Public Law Center and OneOC, Seminar for non-profit organizations (August 2014)

Lynda Zadra-Symes and Gregory B. Phillips, Understanding Trade Secrets and Trade Secret Misappropriation, IP Impact San Diego - Trademark Seminar (July 2013)

Catherine Holland and Gregory B. Phillips, Understanding Trade Secrets and Trade Secret Misappropriation, IP Impact Silicon Valley - Trademark Seminar (July 2013)

Susan Natland and Gregory B. Phillips, Advertising at the Olympics - Let the Games Begin!, published in Convergence (an International Bar Association publication), Orange County Business Journal and Law360 (July 2012)

John M. Carson and Gregory B. Phillips, Note, Nasalok Coating Corp. v. Nylok Corp., 522 F.3d 1320, 86 U.S.P.Q.2d 1369 (Fed. Cir. 2008), 30 European Intellectual Property Review 10 (Thomson/Sweet & Maxwell 2008)

Steven J. Nataupsky and Gregory B. Phillips, Protecting Your Athlete's Intellectual Property Rights, in Law of Professional and Amateur Sports, Ch. 28, (Gary Uberstine ed., 2006)

Indecent Content on Satellite Radio: Should the FCC Step In, Loyola of Los Angeles Entertainment Law Review, Vol. 26 No. 2 (2005-2006)

Professional Memberships 

Orange County Bar Association (OCBA)

Past Co-Chair (2014), Entertainment, Sports and Marketing Division

Member, Intellectual Property Division

International Trademark Association (INTA)

Past Member (2012-2015), U.S. Subcommittee of the Famous & Well-Known Marks Committee

American Bar Association (ABA)

Bruin Professionals, a UCLA Alumni Network

ProVisors, a network of trusted professional advisors

Quote 

I enjoy collaborating with my clients to bring their brands to market and protect their IP rights worldwide.
Gregory B.

Lastname 

Phillips

Photo 

Position 

Email 

gregory.phillips@knobbe.com

Additional Languages 

Nick name 

Greg

Start Date 

Friday, June 1, 2007

Jason J. Jardine

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Attorney User 

Education 

2001
Minors in Physics and Mathematics

Awards & Honors 

Outstanding Young Attorney Nominee 2011, The Daily Transcript

Order of the Barristers

Telephone 

858-707-4000

Office Location(s) 

Professional Profile 

Jason J. Jardine is a partner in our San Diego office. His practice involves all aspects of intellectual property acquisition, protection and exploitation. Primarily, he represents clients in acquiring and enforcing patents and trademarks. He works with clients across a variety of industries including chemistry, biotechnology, pharmaceuticals, neutraceuticals, medical devices, clean technology, semiconductors, metalworks/mining, action sports, and hospital and emergency responder data management.

Mr. Jardine is a past San Diego Chapter Chair of the Licensing Executives Society. He also serves as a mentor for new companies in the Center for Entrepreneurial Innovation incubator.

Mr. Jardine received his J.D. in 2004 from J. Reuben Clark School of Law, Brigham Young University and his B.S. in chemistry with minors in physics and mathematics from Brigham Young University in 2001. During law school, Mr. Jardine served as a senior editor of the BYU Law Review. Following law school, Mr. Jardine clerked for Judge G. Murray Snow on the Arizona Court of Appeals. In addition to being licensed to practice before the United States Patent and Trademark Office, Mr. Jardine is licensed to practice in Arizona, California, and Washington, D.C.

Mr. Jardine joined the firm in 2005.

Clerk Experience

Clerk for the Honorable G. Murray Snow, Arizona Court of Appeals

Additional Information 

Recently Issued U.S. Patents

D717,939 - “FACE MASK SEAL”

D716,182 - “Tie bar”

D716,181 - “Tie bar”

8,889,310  “Fuel cell system and driving method for the same”

8,883,367  “Catalyst for fuel cell, membrane-electrode including same, and fuel cell system including same”

8,883,359  “Fuel cell system and driving method of the same”

8,877,395  “Fuel cell system and operation method thereof”

8,871,396  “CO.sub.2 separator for direct methanol fuel cell system”

8,693,084 - “Interferometric Modulator in Transmission Mode”

8,691,156 - “Preferential Oxidation Reactor and Fuel Cell System Using the Same”

8,682,130 - “Method and device for packaging a substrate”

8,674,596 - “Organic light emitting display device and fabrication method for the same”

Teaching/Adjunct Professor

Guest Lecturer on U.S. Patent Matters at UCSD Extension

Language Proficiency

Spanish

Cases, Articles, Speeches & Seminars 

Speeches & Seminars

Revised Myriad Guidance from the US Patent and Trade Office (USPTO) - Now What is Patentable?, BIO Pacific Rim Summit on Industrial Biotechnology and Bioenergy, Panel Discussion, December 2014.

The Legalities of Fashion - Intellectual Property Workshop, Fashion Week San Diego, Panel Discussion, September 2013 and May 2014.

Growing Technology in Arizona: Celebrating Success in Medical and Bioscience, Arizona Technology Council and Arizona Commerce Authority, Panel Discussion, October 2012.

Effective Utilization of Patent Searches in the Wake of AIA Patent Reform Act, Licensing Executives Society Winter Meeting, Panel Discussion, March 2012.

What Every Small Business Banker Should Know About Patents, Presentation to Arizona Small Business Bankers, November 2011.

Professional Memberships 

San Diego Licensing Executives Society

American Chemical Society

J. Reuben Clark Law Society

Phi Delta Phi Legal Fraternity

Quote 

I enjoy helping clients grow and become strategically positioned for business advantage over competitors.
Jason J.

Lastname 

Jardine

Photo 

Position 

Email 

jason.jardine@knobbe.com

Additional Languages 

Start Date 

Tuesday, June 1, 2004

Salima Merani, Ph.D.

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Attorney User 

Awards & Honors 

Dr. Merani has received multiple awards and has been honored in both national and international forums for her legal accomplishments: 

  • Named "Patent Prosecution Attorney of the Year" in 2015 "LMG Life Sciences Annual Awards" by Legal Media Group (LMG). This awards ceremony recognized the industry's leading professionals, across North America and Europe, for their accomplishments over the past 12 months.
  • Recognized by Intellectual Asset Management (IAM) among the World’s Leading Patent Professionals in the "IAM Patent 1000", a guide that identifies the top patent practitioners and firms in 41 jurisdictions around the globe (2012-2015). In the 2015 guide, she was deemed "transactional cognoscenti" and "a favorite of venture capitalists".
  • Featured in the National Law Journal's 2015 "IP Hot List."
  • Named to the Daily Journal's list of the Top Intellectual Property Attorneys in 2015, 2014, 2013 and 2012. In this list, she was recognized among the Top 25 Portfolio Managers & Patent Prosecutors.
  • Named to Diversity & the Bar's 2014 "Rainmakers" List. In this list, she was highlighted among successful minority attorneys who continue to lead the industry.
  • Recognized in the 2014 and 2015 Legal 500“United States" as being an outstanding practitioner. In the 2014 guide, she was noted for her work in medical device and biotechnology patent matters.
  • Received a "Star" distinction in the 2014 and 2015 LMG"Life Sciences" survey for Intellectual Property. In this guide, she was recognized in the areas of patent prosecution, advisory, strategy and management, and was specifically credited as "a vital part of our global strategy" by a key client.
  • Named to The Recorder's "Women Leaders in Tech Law" list in 2014 and 2015. In these lists, she was recognized for demonstrating that she can lead major cases and deals within the tech industry.
  • Named to the Daily Journal's list of the Top Women Lawyers in 2014. In this list, she was recognized amongst the Top 75 Litigators & the Top 25 Corporate Transactions and Regulatory Specialists.
  • In a survey of her peers published in Los Angeles magazine and Super Lawyers magazine, Dr. Merani was named as one of Southern California’s “Rising Stars” in intellectual property law and was named one of Orange County’s top lawyers, published in OC Metro magazine.

Read below for an interview with Salima in the Women Leaders in Tech Law publication.

 

Telephone 

949-760-0404

Office Location(s) 

Professional Profile 

Salima A. Merani, Ph.D. is a partner in our Orange County office. Dr. Merani has fifteen years of experience in building patent portfolios for life sciences companies, including several medtech and biotech companies. She also has extensive experience in conducting patent due diligence for investors, such as venture capital and investment firms. 

Dr. Merani provides a unique perspective to both investors and emerging growth companies with her wide-ranging experience in US and international patent and trademark portfolio management, licensing, strategic offensive positioning, infringement analysis, IPOs, acquisitions, and managing global patent risk.

Dr. Merani’s technical experience in medical devices includes strategic guidance in the fields of aesthetics, orthopedics, cardiovascular and neuroscience, including medical implants, denervation and tissue ablation, regenerative technology, antibody technology, hypertension, diabetes, and dermatological conditions. Her technical work outside the medical arena includes a deep knowledge in the fields of cosmetic formulations and nutraceuticals.

Dr. Merani has received multiple awards and has been honored in both national and international forums for her legal accomplishments. She won the prestigious Legal Media Group’s award for "Patent Prosecution Attorney of the Year" in 2015 in the "LMG Life Sciences Annual Awards". She was featured in The National Law Journal's 2015 "IP Hot List" and deemed "a favorite of venture capitalists" in Intellectual Asset Management's 2015 "IAM Patent 1000" list. She was also granted a Star distinction in the 2015 and 2014 LMG "Life Sciences" survey for Intellectual Property.  Dr. Merani was recently recognized in The Recorder's list of Women Leaders in Tech Law, and honored in the Daily Journal's list of the Top Women Lawyers. For the past several years (2012, 2013, 2014 and 2015), Dr. Merani has been recognized in the Daily Journal's list of the Top Intellectual Property Attorneys, where she has been identified among the Top 25 Portfolio Managers & Patent Prosecutors of Intellectual Property. The Legal 500  "United States 2015" guide highlighted Dr. Merani's extensive experience in conducting patent due diligence. She has also been named as one of Orange County’s top lawyers, published in OC Metro magazine.  Dr. Merani’s accomplishments are detailed in the Awards & Honors section. 

Dr. Merani is past Vice Chair of the AIPLA (American Intellectual Property Law Association) USPTO Inter Partes Patent Proceedings Committee, which oversees the Interference, Reexamination, and Derivation subcommittees. She also served on the AIPLA’s Special Task Force on AIA (America Invents Act) Rulemaking. Dr. Merani is also a founding member of the Firm's USPTO Trials and Post Grant Proceedings Committee, and has represented clients in multiple patent disputes before the USPTO and international patent and trademark offices. She is an author and speaker on strategic patent portfolio management.

During law school, Dr. Merani served as Article Editor of the Berkeley Technology Law Journal and was an advisor for the Annual Review of Law and Technology. At Berkeley, she received an Award for Excellence in Legal Writing. Dr. Merani was a summer associate with the firm in 1999 and she joined the firm as an associate in 2000.

Cases, Articles, Speeches & Seminars 

Speeches & Seminars

Dr. Merani has been an invited speaker on various IP topics, including due diligence and the America Invents Act, at the IP Impact Silicon Valley Conference, the OCTANe Medical Device & Investor Form, the University of Southern California, and the University of California, Berkeley. 

Articles & Books

Contributor, 7 Intellectual Property Issues Startup Entrepreneurs Should Not Overlook, JD Supra Legal Perspectives (September 2015). 

Quoted in 7 Intellectual Property Mistakes Startup Entrepreneurs Often Make, JD Supra Legal Perspectives (February 2014).

Co-author, "Understanding Legal Trends in the Private Equity and Venture Capital Market, 2013 ed.: Leading Lawyers on Navigating the Current Economy, Managing Risks, and Understanding Changing SEC Regulations (Inside the Minds)," Aspatore Law Books from Thomson Reuters (2013).

Professional Memberships 

Dr. Merani is past Vice Chair of the AIPLA (American Intellectual Property Law Association) USPTO Inter Partes Patent Proceedings Committee, which oversees the Interference, Reexamination, and Derivation subcommittees.

She also served on the AIPLA’s Special Task Force on AIA (America Invents Act) Rulemaking. 

Quote 

Experienced in representing both venture capital firms & start-ups, clients value my unique strategic perspective.
Salima

Lastname 

Merani

Suffix 

Ph.D.

Photo 

Position 

Email 

salima.merani@knobbe.com

Additional Languages 

Nick name 

PhD

Start Date 

Friday, June 1, 2001

Bill Bunker

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Attorney User 

Education 

1975
Tau Beta Pi Engineering Honor Society, Most Outstanding Aerospace Engineering Student Award

Honors 

honors

Awards & Honors 

Mr. Bunker has received multiple awards and has been honored both nationally and internationally for his legal accomplishments:

  • Named among the "Top 25 Intellectual Property Portfolio Managers & Patent Prosecutors" by the Daily Journal in 2015
  • Recognized for his outstanding intellectual property legal work in the Managing Intellectual Property Magazine "IP Stars" Guide in 2013, 2014 and 2015
  • Recognized by American Lawyer Media (ALM) as a Top Rated Lawyer in Intellectual Property Law in 2013
  • Named in the 2012 International Who's Who of Patent Lawyers
  • Recognized in the 2011 IAM Licensing 250 - The World's Leading Patent and Technology Licensing Practitioners guide published by Intellectual Asset Management (IAM) magazine.
  • Nominated as the Who’s Who in California Legal for Trademark Representation in 2007
  • Named one of the top patent law experts in Euromoney Legal Media Group's Guide to the World’s Leading Patent Law Experts in September 1999 and June 2003.
  • Named one of the world's leading trademark practitioners, based on a survey of his peers, in Who's Who Legal USA: Trademarks 2006
  • Received the Boy Scouts of America – District Award of Merit; Silver Beaver Award

Telephone 

949-760-0404

Office Location(s) 

Professional Profile 

William B. Bunker is a partner in our Orange County office. He focuses on developing and executing worldwide patent and trademark protection strategies for a wide diversity of clients – from startups to multi-national corporations. He has extensive experience in the many fields of medical devices, as well as computer implemented and internet based inventions such as financial services and various forms of business methods.

Mr. Bunker frequently advises clients on clearance matters (so called “freedom to operate” or “right to practice” analyses) as well as responding to and conducting due diligence in investment and acquisition contexts. Licensing and all forms of business transactions involving IP is a substantial portion of Mr. Bunker’s practice.

Mr. Bunker has been a contributing author on intellectual property law for the Los Angeles Daily Journal, including such topics as the GATT amendments to U.S. intellectual property laws, European Community Trade Mark system, color trademarks, doctrine of equivalents, and declaratory judgment practice. Mr. Bunker has served as a legal expert witness in various intellectual property matters. 

He has lectured on intellectual property law to the World Trade Association of San Diego, the Orange County and San Diego Patent Law Associations, San Diego's High Technology Section of the C.P.A. Society, the UCSD CONNECT Program on Technology and Entrepreneurship, the High Technology Section of the Orange County Bar Association, the Tax and Business Law Section of the Riverside County Bar Association, Licensing Executives Society, and the International Bar Association.

He has lectured on various patent and intellectual property topics in Tokyo and Osaka, Japan; Santiago, Chile; Barcelona, Spain; Budapest, Hungary; Cancun, Mexico; Reykjavik, Iceland; Singapore; Buenos Aires, Argentine; Madrid, Spain; Copenhagen, Denmark; and Vancouver, Canada.

Mr. Bunker joined the firm in 1978 and became a partner in 1980.

Technical Expertise 

 

 

Additional Information 

Teaching Experience

Mr. Bunker has over 10 years of experience in teaching patents and trade secrets to law students and is currently an adjunct professor at Chapman University.

Cases, Articles, Speeches & Seminars 

Articles

"Inter Partes Review and Post-Grant Review: New Options Under the America Invents Act to Challenge Patent Validity", Orange County Business Journal (September 2012)

“Fair Conditions,” Establishing Present, Advancements in Intellectual Property Law, Supplement to the Los Angeles Daily Journal (April 1997), co-author

Ashton-Tate 'Out-Foxed' by Copyright Application Form,” California Republic, (February 1991)

“How to Handle Representations and Warranties in Transactions Involving Intellectual Property Law,” Vol. VII, No. 4, California's Continuing Education of the Bar Business Law Practitioner (Fall 1992)

“An Introduction to Computer Law,” Vol. 3, No. 1, California's Continuing Education of the Bar Business Law Practitioner (Winter 1988)

“A Model Trade Secret License Agreement: An Example from the Biotechnology Industry,” Vol. 3, No. 4, California's Continuing Education of the Bar Business Law Practitioner (Fall 1988)

“Strategic Alliances: Trade Secret Protection in Joint Ventures and Partnerships,” Vol. 2, No. 1, California's Continuing Education of the Bar Business Law Practitioner (Winter 1987)

“How to Protect Your Client's Trademark,” Vol. 2, No. 2 , California's Continuing Education of the Bar Business Law Practitioner (Spring 1987)

“A Checklist for Protecting Trademarks in the Healthcare Industry,” Vol. 2, No. 2, California's Continuing Education of the Bar Business Law Practitioner, (Spring 1987)

“A Trade Secrets Checklist for Hiring Employees from Competitors,” Vol. 1, No. 2, California's Continuing Education of the Bar Business Law Practitioner (Spring 1986)

Speeches & Seminars

Co-Moderator, “Tech transfer: JV or licensing”, IBA World Life Sciences Conference, Philadelphia, PA (June 2015)

Moderator, “What are the emerging life sciences business models and what will they be in five and ten years from now?", IBA World Life Sciences Conference, San Diego, CA (June 2014)

Panelist, "Learn How to Protect Your Intellectual Property", NVTC Small Business and Entrepreneur Committee, Fairfax, VA (March 2014)

Moderator, “Why Didn’t Someone Tell Me That?”, International Bar Association Annual Conference, Boston (October 2013)

Co-Moderator, "What are the emerging life sciences business models and what will they look like in five years and ten years from now?", IBA World Life Science Conference, Dallas, TX (May 2013)

Co-Moderator, "Tech transfer tactics: Licensing in the academic and commercial realms," IBA World Life Science Conference, Dallas, TX (May 2013)

Facilitator, "Intellectual property, e-commerce and privacy", International Bar Association Conference, Dublin, Ireland (October 2012)

Panelist, "Patenting the Unpatentable: Claim Drafting After Prometheus" and "Procedures, Pitfalls and Costs: Best Practices for Securing Foreign Patent Protection", Firm-hosted IP Impact Seminar, McClean, Virginia (May 2012)

Moderator, “Patent Reform: New Sheriff in Town”, OCBA Corporate Counsel Section (April 2012)

Presenter, "Patent Reform (AIA): What You Need to Know", IP Impact 2011: Innovative Intellectual Property Strategies for Emerging Technology Companies, McClean, Virginia (September 2011)

Presenter, "Patent Reform: What You Need to Know" and "Preparing Your IP Portfolio for Investment, Acquisition, and/or Litigation Events", IP Impact 2011: Innovative Intellectual Property Strategies for Technology and Life Science Companies, Research Triangle Park, North Carolina (September 2011)

Presenter, "Recent USPTO Programs", IP Impact 2010: Innovative Intellectual Property Strategies for Emerging Technology Companies, Research Triangle Park (September 2010)

Presenter, "Recently introduced USPTO pilot programs and initiatives that you can utilize to improve the quality of your IP portfolio", IP Impact 2010: Innovative Intellectual Property Strategies for Emerging Technology Companies, Silicon Valley, California (July 2010)

Moderator and Presenter, “User Generated Content on the Internet – Its Business Case, IP Rights, Litigation, and Relevant Statutes”, IBA all-day session, Madrid, Spain (October 2009)

Presenter, "Innovative IP Strategies for Emerging Companies”, Firm-hosted IP Impact Seminar, Research Triangle (Chapel Hill), NC (September 2009)

Moderator, “Licensing Practices:  What Has the U.S. Supreme Court Done to your Agreements?”, USC Gould School of Law, IP Institute (March 2009)

Moderator and Presenter, “Thinking Outside the Box – Creative Defenses to IP Infringement Actions”, IBA all day session, Buenos Aires, Argentina (Fall 2008)

Moderator and Presenter, “Real IP in a Virtual World – Issues Arising Out of Virtual Characters and Scenes in On-Line Video Games,” IBA all day session, Singapore (Fall 2007)

Professional Memberships 

International Bar Association – IP and Entertainment Committee

Boy Scouts of America; Orange County Council; Vice President, District Operations

Los Angeles County Patent Law Association

Orange County Patent Law Association

San Diego County Patent Law Association

Orange County Bar Association

Riverside County Bar Association

 

Quote 

I don't consider myself a patent prosecutor - rather, I am a patent strategist and IP advisor to my clients.
Bill

Lastname 

Bunker

Photo 

Position 

Email 

bill.bunker@knobbe.com

Additional Languages 

Start Date 

Thursday, June 1, 1978

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Catherine Lee

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Attorney User 

Telephone 

949-760-0404

Office Location(s) 

Professional Profile 

Catherine (Kawon) Lee is an associate in our Irvine office.  Prior to joining the firm, Ms. Lee worked as a system integration developer at Samsung SDS and as a law clerk in the Intellectual Property Group of Kim & Chang in Korea.

Ms. Lee joined the firm in 2011.

Catherine

Lastname 

Lee

Photo 

Position 

Email 

catherine.lee@knobbe.com

Additional Languages 

Start Date 

Wednesday, June 1, 2011

Ali S. Razai

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Attorney User 

Awards & Honors 

In a survey of his peers, Mr. Razai was named as one of "Southern California’s Rising Stars" in intellectual property law and featured in both Los Angeles and Super Lawyers magazine (2015).

Telephone 

949-760-0404

Office Location(s) 

Professional Profile 

Ali S. Razai is a litigation partner in our Orange County office.  

Mr. Razai has a broad intellectual property litigation practice, having handled cases involving utility patents, design patents, trademarks, trade dress, copyrights, trade secrets, false advertising, unfair competition and breach of contract throughout California and nationwide.

He has worked on a diverse range of matters involving mechanical devices, optics, medical devices, biotechnology and pharmaceuticals.  Mr. Razai has handled matters for a diverse array of clients, including Oakley, Mexicana Airlines, 99¢ Only Stores, Ranbaxy Pharmaceuticals, Ligand Pharmaceuticals, and I-Flow Corporation (a subsidiary of Kimberly-Clark).

Mr. Razai is a registered patent attorney and also has extensive experience in patent prosecution, having obtained numerous patents for clients in various technology areas, particularly biotechnology. Mr. Razai has also worked within the AgBio industry, working on patents involving carbon scrubbing exhaust through algae and using the algae as green energy. Additionally, he has worked on an internet domain name litigation matter.

Mr. Razai was seconded by the firm to act as interim in-house patent counsel at Oakley, Inc. for an extended period, during which Mr. Razai handled all of Oakley's patent matters, including prosecution, litigation and due diligence.

Prior to joining the firm, Mr. Razai was a Research Associate at the UCLA AIDS Institute studying the effect of the HIV virus on cytokine expression. After receiving his Masters in Public Health from Berkeley in 2001, he went to UCSF where he focused his research on the development of therapeutic antibodies against the neurotoxin produced by the bio-terror agent C. botulinum.  Mr. Razai's work at UCSF resulted in multiple royalty-bearing patents for a cure to botulism.

Additional Information 

Language Proficiency

Fluent in Farsi

Intermediate Level Spanish

Cases, Articles, Speeches & Seminars 

Representative Matters

Carson Cheng, et al. v. AIM Sports, Inc., et al. (C.D. Cal.)  Obtained favorable settlement for our clients, including a consent judgment and permanent injunction and confidential settlement representing claims for past damages under six design patents and one utility patent owned by our clients.  The settlement was achieved after we defeated defendants’ motions for summary judgment and obtained a court order barring defendants from challenging our expert’s multi-million dollar damages opinion at trial.

I-Flow Corp. v. Apex Med. Tech., Inc.(S.D. Cal.) Obtained a $12.4 million verdict and injunctive relief after jury trial for our client I-Flow Corp.

Articles

Razai A, et. al., Molecular Evolution Of Antibody Affinity For Sensitive Detection Of Botulinum Neurotoxin Type A.  J Mol Biol. 2005 Aug 5;351(1):158-69.

Koka PS, Brooks DG, Razai A, Kitchen CM, Zack JA., HIV Type 1 Infection Alters Cytokine mRNA Expression In Thymus.  AIDS Res. & Hum. Retroviruses. 2003 Jan 1;19(1):1-12.

PMID: 12581511 [PubMed - indexed for MEDLINE

Speeches

Speaker, "Intellectual Property Law Primer," Iranian American Bar Association (2009).

Quote 

I am as personally invested in each of my matters as the client, which results in a human element to my practice.
Ali S.

Lastname 

Razai

Photo 

Position 

Email 

ali.razai@knobbe.com

Additional Languages 

Start Date 

Thursday, June 1, 2006

Christopher L. Ross

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Attorney User 

Education 

Awards & Honors 

In a survey of his peers published in Super Lawyers magazine, Mr. Ross was named as one of Southern California’s “Rising Stars” in intellectual property law (2009-2011 & 2015).

Telephone 

949-760-0404

Office Location(s) 

Professional Profile 

Christopher L. Ross is a partner in our Orange County office.

Mr. Ross represents clients in a wide spectrum of intellectual property matters.  His work includes patent portfolio management and strategic planning, international and domestic patent prosecution and litigation, competitive landscape analysis, opinion work, licensing, development agreements, and active assertion and defensive strategies.

Mr. Ross counsels clients in a variety of technologies including those associated critical care medical devices, infusion technologies, touch and motion based fluid control, automotive accessories, and athletic/sporting goods.  His work has included matters before the U.S. Patent and Trademark Office, various U.S. District Courts, the U.S. Court of Appeals for the Federal Circuit, and various courts in Germany and China. 

Mr. Ross joined the firm in 2003 and became a partner in 2009.  

Quote 

Effective intellectual property strategy is not one-dimensional.
Christopher L.

Lastname 

Ross

Photo 

Position 

Email 

christopher.ross@knobbe.com

Additional Languages 

Start Date 

Sunday, June 1, 2003

John Sganga

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Attorney User 

Education 

1981
Phi Beta Kappa Honorary Fraternity, Tau Beta Pi Honorary Fraternity, Pi Tau Sigma Honorary Fraternity, President of Sigma Nu Fraternity

Honors 

magna cum laude

Awards & Honors 

Mr. Sganga has received multiple awards and has been honored in national forums for his legal accomplishments: 

  • Named one of The World's Leading Patent Professionals in Intellectual Asset Management (IAM) magazine's 2015 "IAM Patent 1000" guide
  • Recognized among the Top 50 Orange County Lawyers for 2015 in Super Lawyers Magazine
  • Named to the Daily Journal's list of the Top Intellectual Property Attorneys of 2014
  • Named the Best Lawyers® 2014 Litigation - Intellectual Property "Lawyer of the Year" and the 2016 Litigation - Patent "Lawyer of the Year" in Orange County
  • Recognized by American Lawyer Media as a Top Rated Lawyer in Intellectual Property Law for 2013
  • Repeatedly selected by Super Lawyers magazine in the area of Intellectual Property
  • Selected to The Best Lawyers in America® from 2007-2016, for his work in Litigation - Intellectual Property, Litigation - Patent, and Trade Secrets Law
  • Repeatedly named among the Top Attorneys in Orange County by OC Metro magazine
  • Received Martindale Hubbell AV Preeminent rating

Telephone 

949-760-0404

Office Location(s) 

Professional Profile 

John B. Sganga, Jr. is a partner in the Orange County office of Knobbe, Martens, Olson & Bear, LLP, where his practice focuses on litigating patent, trademark, trade secret, and licensing disputes.  Mr. Sganga has been litigating IP cases for 30 years, and is chair of the firm’s litigation practice group.  He has handled bench and jury trials, arbitrations, proceedings before the United States International Trade Commission, proceedings before the TTAB and PTAB, and appeals.  His litigation experience relates to a wide variety of technologies and industries including software, computers, telecommunications, video games, medical and dental devices, construction products, watercraft, engine technology, semiconductor processing equipment, and beverages.

Mr. Sganga has been published and has lectured extensively on intellectual property litigation issues. He currently is an adjunct professor at the Chapman University School of Law, teaching a course in patent litigation. He co-authors the Thomson Reuters treatise, “Pre-Litigation Patent Enforcement.” Mr. Sganga’s article “Direct Molding Statutes: Potent Weapons, But Are They Constitutional?” was published in the Journal of the Patent and Trademark Office Society, for which he was given the Rossman Award by the Patent and Trademark Office Society. Mr. Sganga has lectured on Intellectual Property Law issues for CEB, PLI, IPO, ACC-SoCal and various bar associations.

Cases, Articles, Speeches & Seminars 

Representative Matters
Articles
Speeches & Seminars

Representative Matters

JS Products v. Kabo Tool (Fed. Cir.) Invalidated patent on summary judgment for DJ plaintiff by demonstrating that micron level dimensional differences in accused tools retailed at Lowe’s were also inherently present in prior art. Argued successfully to obtain affirmance on appeal.

Kreative Power v. Monoprice, Inc.  (N.D. Cal)  Defended on-line retailer of consumer electronics against claims of infringing utility patent, design patent, and copyright relating to a pyramid-shaped power outlet/surge protector. Obtained summary judgment of invalidity and no infringement within 6 months after complaint was filed, with no need for depositions or claim construction hearing.

Inogen v. Inova  (Fed. Cir.)  Obtained affirmance of PTAB decision in favor of patentability for manufacturer of portable oxygen concentrators used for respiratory therapy.

Bierman v. Toshiba (Cal. Sup. Ct., Marin County)  Obtained summary judgment for accused defendant based on statute of limitations in case alleging trade secret misappropriation and breach of NDA, stemming from alleged confidential disclosure of software used to protect computers in the event of power loss.

John Deks Australia Pty, Ltd. v. Atlas Bolt and Screw Company (N.D. Ohio). Represented defendant in a patent and copyright infringement suit involving construction products in a five-week jury trial. Obtained directed verdict and attorney fee award on the copyright claim, and favorable judgment on the patent claim, which was upheld on appeal to the Court of Appeals for the Federal Circuit, 14 U.S.P.Q. 2d 1077 (Unpublished).

Archive Corp. v. Cipher Data Products, Inc., 12 U.S.P.Q.2d 1464 (C.D. Cal.). Represented accused infringer of patent on a computer tape drive. Successfully opposed two motions for preliminary injunction, even though the patent had been found valid and infringed in prior litigation with a third party. Obtained stay of proceedings to permit hostile takeover of patent owner, which ultimately resolved the lawsuit.

Stillwell Developments, Inc., Sleepsafe Industries, Inc. v. Chen et al., 11 U.S.P.Q.2d 1328 (C.D. Cal.). Defended claims of trade secret misappropriation relating to a portable fire alarm, and related claims of unfair competition, breach of contract and commercial fraud. Brought successful directed verdict motion, which lead to attorneys fees award for successful defense of trade secret claim.

Atari Games Corp. v. Nintendo of America, Inc., (N.D. Cal.). Represented video game manufacturer accused of infringing patents and copyrights in hardware and software used to lock out unlicensed video games. Conducted extensive discovery in Japan. Obtained voluntary dismissal of one patent infringement claim, and participated in three-week jury trial on remaining patent. 

Applied Materials, Inc. v. Advanced Semiconductor Materials of America, Inc. (N.D. Cal.). Represented defendant in post-trial proceedings in patent infringement case relating to semiconductor wafer processing equipment. Successfully obtained a stay of permanent injunction pending appeal with favorable security terms, which were upheld on appeal to Federal Circuit.

The Beam System, Inc. v. Checkpoint Systems, Inc., 42 U.S.P.Q. 2d 1461 (C.D. Cal.). Represented defendant in computer software copyright infringement lawsuit. Obtained a protective order from the court to maintain the confidentiality of client's code. Ultimately, obtained a dismissal of the entire action based upon plaintiff's violation of that court order.

Cook v. Makita USA, Inc., (Cal. Sup. Ct., Riverside). Defended against claims of trade secret misappropriation related to power tool design. Negotiated settlement shortly before trial in which plaintiff dismissed all claims without any compensation from defendant.

Cabinet Vision v. Cabnetware, (S.D. Cal.), aff’d, 2000 U.S. App. LEXIS 2030 (unpublished). Represented defendant in post-trial proceedings patent infringement action relating to computer-aided design software. Initially obtained injunction against patent owner making misrepresentations to potential customers regarding anticipated outcome of lawsuit. Later successfully obtained judgment as a matter of law overturning unfavorable jury verdicts on invalidity.

Yamaha Motor Company, Ltd. Represented personal watercraft manufacturer in a series of patent enforcement actions in both District Court and the United States International Trade Commission relating to a portfolio of dozens of patents. The actions against major competitors were each resolved by license agreement resulting in significant royalties to the client.

Gart v. Logitech, Inc., CV 98-05957 CBM (Mcx) (C.D. Cal.) Represented plaintiff in a patent infringement suit relating to the ergonomic design of computer mice. After a successful appeal regarding claim construction issues, obtained a favorable settlement of the case. Continued enforcement efforts have resulted in several other licenses with mouse manufacturers. Published opinions: 254 F.3d 1334 (Fed. Cir. 2001); 67 USPQ2d 1263 (C.D. Cal. 2003).

Zimmer Inc. v. Nobel Biocare, USA, Inc. Defended dental implant manufacturer in an arbitrated patent infringement dispute. Conducted arbitration through final hearing, obtaining a judgment of no infringement in connection with a patent that six major competitors had previously licensed and paid millions of dollars in royalty payments. Obtained attorney fee award in excess of $2 million.

Nazomi v. HTC (N.D. Cal) Defended mobile phone handset manufacturer in multi-defendant action against two patents relating to Java processing technology, obtained summary judgment of non-infringement on both patents.

University of North Dakota v. James Hardie (D. N.D.) Represented construction products manufacturer in contract dispute regarding ownership of technology relating to fillers used in reinforced concrete products. Obtained preliminary injunction against University filing patents on the technology, and summary judgment that key technology rights were not owned by the University.

Nobel Biocare USA v. Technique D’Usage Sinlab (ED Va) Brought declaratory judgment action against patentee on patents relating to computerized dental surgical planning and CAD/CAM techniques for custom dental prosthetics. Obtained summary judgment of no infringement on all four patents.

Nobel Biocare USA v. Materialise (C.D. Cal) Brought declaratory judgment action against patentee on patent relating to CAD/CAM techniques for designing and rapid prototyping custom surgical templates. Obtained summary judgment of no infringement.

Dr. Paula Small v. Nobel Biocare USA (SDNY) Defended dental implant manufacturer against patentee on two patents relating to dental implant design. Although patents survived re-exam and re-issue, obtained summary judgment of invalidity due to on-sale bar, lack of written description requirement, and re-issue recapture.

Kruse Technology Partnership v. Caterpillar (C.D. Cal) Represented inventor of patent portfolio relating to computerized fuel injection controls to improve fuel efficiency and reduce emissions. Obtained favorable claim construction after 4 day evidentiary hearing, leading to settlement with Caterpillar. Enforced patents against GM, Isuzu, and other major diesel engine manufacturers, including Cummins.

Intamin Ltd. v. Magnetar (Fed. Cir.) Represented accused patent infringer against world’s largest amusement park ride manufacturer regarding patent on eddy-current magnetic braking system. On second appeal, affirmed favorable judgment that patent was unenforceable due to unclean hands. Also obtained attorney fee award.

Acuff v.Custom Control Sensors (AAA arbitration) Represented licensee and manufacturer of aerospace pressure sensing switches in royalty dispute on technology and patent license agreement. Licensor alleged that $11M in back royalties were owed. Obtained award that licensee owed no further royalties and instead was itself owed $7M in overpaid royalties. 

Hansen Beverage Co. v. National Beverage Co. (9th Cir) In trademark infringement suit, obtained preliminary injunction against competitor of Monster Energy brand energy drink, and successfully enforced settlement agreement on appeal to 9th Circuit.

Hansen Beverage Co. v. Cytosport (C.D. Cal) In trademark infringement suit, obtained preliminary injunction against competitor of Monster Energy brand energy drink, leading to settlement on eve of trial.

Monster Energy Co. v. HRHH Hotel Casino (JAMS arbitration) Successfully enforced trademark assignment agreement from Hard Rock Hotel relating to REHAB brand, and obtained attorney fee award.

Victoria’s Secret v. Urban Decay (S.D. Ohio) Represented cosmetics company owning trademark rights in NAKED brand against Victoria’s Secret, leading to favorable settlement and Victoria’s Secret discontinuing use of NAKED on cosmetic.

Articles

“Direct Molding Statutes: Potent Weapons, But Are They Constitutional?” Journal of the Patent & Trademark Office Society, Vol. 71, No. 1, 1989.

“Copyright Law, The U.S. Joins The Berne Convention,” Orange County Lawyer, December 1989.

“Legal Protection For Works Of Art,” Orange County Lawyer, March, 1991.

“Building A Winning Paper Trail For Intellectual Property Litigation,” Orange County Business Journal, September, 1991.

“What The Japanese Businessman Should Know About U.S. Copyright Law,” Kaigai Chuzai, May 1992.

“Growing Software Intensive Companies,” ABL Key Observer Report, May 1992.

“A Primer on Patents,” Orange County Business Journal, September 1993.

“The Pitfalls Of Providing Intent-to-Use Trademark Applications As Loan Security,” Los Angeles Daily Journal, February 7, 1997; Orange County Reporter, February 10, 1997.

“Recent Developments In Intellectual Property Law,” 1996 Annual Review of the Business Law Section of the State Bar of California, 1997.

“Swap Talk: Retail-Space Operators and Internet Providers May Be Secondarily Liable for Infringement,” Los Angeles Daily Journal, September 5, 1997.

“Secondary Liability for Copyright and Trademark Infringement: Where Cyberspace and Retail Space Meet,” Orange County Lawyer, March 1998.

“Litigating Obviousness: A New Approach for Using Expert Witnesses,” Journal of the Patent and Trademark Office Society, Vol. 81, No. 3, March 1999.

“Ch. 11 – Pretrial Proceedings,” co-author with Don W. Martens, Patent Litigation, Edited by Laurence H. Pretty, PLI Press, 2000.

“Pre-Litigation Patent Enforcement,” Thomson-Reuters, co-author with Don Martens, 2008-2013.

Speeches & Seminars

"IP Year in Review," CLE Wrap-Up: Substance Abuse, Elimination of Bias & the IP Year in Review, Knobbe Martens Hosted CLE Seminar (January 7, 2016)

"The Practitioner’s Perspective: The Effect of Patent Non-Practicing Entities on Industry," Trolls or Toll-Takers: Do Intellectual Property Non-Practicing Entities Add Value to Society? 2015 Chapman Law Review Symposium, Orange, CA (January 30, 2015)

Program Chair, The Third Annual Technology Seminar – Program Chair for Using Technology in Trials Today: What is a Must and What is a Bust, The Orange County Bar Association Masers Division, Irvine, CA (November 18, 2014)

"Woke Up This Morning – My Patent’s Gone: Recent Pro-Accused Infringer Trends in Patent Law," 2014 ACC-SoCal Double Header, Anaheim, CA (August 28, 2014)

“Best Practices and Trends in U.S. Patent Litigation and Prosecution,” US Litigation and Patent Prosecution Seminar, Osaka, Japan (July 11, 2014)

“Best Practices and Trends in U.S. Patent Prosecution,” US Patent Prosecution Seminar, Tokyo, Japan (July 8, 2014)

“Trends in U.S. Patent Litigation: Pro-Accused Infringer,” US Litigation Seminar, Tokyo, Japan (July 7, 2014).

Chapman University School of Law, Adjunct Professor 2013-2014, “Patent Litigation”

ACC-SoCal Double Header, “What to do in the First 30 Days of an IP Suit” (April 2013)

JAMS “Recent Trends in Intellectual Property Litigation”, roundtable participant (July 2006)

“Rule 11 in Patent Cases,” Intellectual Property/Technology Law Section Meeting, Orange County Bar Association (March 2006)

Los Angeles Intellectual Property Lawyers Association, Annual Seminar, “One Year Down the Road: Claim Construction Post-Phillips” (May 2006)

USC Gould School of Law, 2005 Intellectual Property Institute, “You’ve Been Sued for Patent Infringement – Now What?” (May 2005)

“ADR in Intellectual Property Cases,” Orange County Patent Law Association (March 2005)

Intellectual Property Owners Association (I.P.O.), “Drafting ADR Clauses – Lessons From the Battlefield,” Washington D.C. (November 2004)

Chapman University School of Law 3rd Annual Preview of the Supreme Court: “An Update of Intellectual Property Law,” Phillips v. AWH Corp (October 2004)

“Timing Summary Judgment in Federal Court,” Orange County Barristers (September 2004)

“Fundamentals of Business Practices Litigation,” Continuing Education of the Bar (CEB), Costa Mesa, (September 2000)

Entrepreneurs Conference, Harvard Business School Association of Orange County, “Intellectual Property Protection for the Internet,” Irvine (May 2000)

William P. Gray Legion Lex Inn of Court, “Everything You Wanted to Know About Motion Practice,” Costa Mesa (May 2000)

Lead defense counsel in patent infringement case, Costa Mesa, Whittier College School of Law, Mock Trial presentation (February 2004, 2005, 2006)

Lead defense counsel in trade secrets case, Costa Mesa, Whittier College School of Law, Mock Trial presentation (February 2003)

Mr. Sganga has also lectured on Intellectual Property Law issues for Orange County Patent Law Association, Orange County Barristers, Orange County Barristers, SO/CAL/TEN (Southern California Technology Executives Network), Practicing Law Institute (PLI), and Continuing Education of the Bar (CEB). 

Professional Memberships 

Orange County Barristers

Board of Directors, President

Orange County Bar Association

Board of Directors

Community Outreach Committee, Co-founder, Chair 

Conference of Delegates to State Bar Convention, Chair of OCBA Delegation

Master’s Division, Program Chair, Secretary

Pro Bono Representations of OCBA on Intellectual Property Law Issues

Association of Business Trial Lawyers

Board of Governors Orange County Chapter, Program Chair

William P. Gray Legion Lex Inn of Court

Master Bencher

Executive Committee, Membership Chair, President 

Howard T. Markey Inn of Court

Master Bencher

Co-chair, Programs

Orange County Patent Law Association

Federal Courts Committee, Chair

Orange County Bar Foundation

Board of Directors

Ninth Circuit Judicial Conference, Lawyer Representative

Quote 

After a great day in court, I can’t believe I get paid to do something that I find so exciting.
John

Lastname 

Sganga

Photo 

Position 

Email 

john.sganga@knobbe.com

Additional Languages 

Start Date 

Friday, June 1, 1984

Allison Weimer

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Attorney User 

Telephone 

949-760-0404

Office Location(s) 

Professional Profile 

Allison L. Z. Weimer is an associate in our Orange County office.  She practices intellectual property law, including the preparation and prosecution of patent applications and patent litigation, with an emphasis on the mechanical and aerospace engineering, automotive powertrain, and medical device fields. 

Ms. Weimer holds a degree in mechanical engineering as well as an advanced degree in aerospace engineering with a concentration in fluid dynamics, thermodynamics, and combustion.  Prior to joining the firm, Ms. Weimer worked as a research engineer and project manager at Ford Motor Company, supporting alternative fuel engine design and development.

During law school, Ms. Weimer served as a Founding Editor for the school's online intellectual property journal, IP Theory, and was also a managing editor of the Federal Communications Law Journal.

Ms. Weimer was a summer associate with the firm in 2010 and joined the firm as an associate in 2011.

Professional Memberships 

American Intellectual Property Law Association (AIPLA)

American Bar Association

Allison

Lastname 

Weimer

Photo 

Position 

Email 

allison.weimer@knobbe.com

Additional Languages 

Start Date 

Wednesday, June 1, 2011

Carrie Zhang

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0
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Attorney User 

Education (raw) 

<h3>Education</h3><p>University of California, Los Angeles School of Law (J.D. 2011)</p><p>University of California, Berkeley (B.S. Chemical Engineering) with honors</p><p>     Tau Beta Pi</p>

Awards & Honors 

Ms. Zhang was named to Lawyers of Color's "Hot List" in 2014.

Telephone 

949-760-0404

Office Location(s) 

Professional Profile 

Ms. Zhang is an associate in our Irvine office.  Ms. Zhang’s practice areas include strategic patent procurement, patent portfolio management, intellectual property due diligence, patent infringement and validity analyses, IP strategy, and other related issues.  Ms. Zhang has experience prosecuting patent applications in various technologies, including semiconductor fabrication processes, such as CVD, ALD, and etch.  She also works with clients in other technology areas, including technologies in electronics, chemical, and mechanical industries.

Ms. Zhang received a B.S. in Chemical Engineering with honors from UC Berkeley, with an emphasis in semiconductor manufacturing processes.  She obtained her law degree from UCLA School of Law.  Before attending law school, Ms. Zhang was an etch process engineer at a semiconductor equipment manufacturing company in Silicon Valley.  As an etch process engineer she developed plasma etch processes for back-end-of-line via etch applications. 

Ms. Zhang worked as a summer associate at the firm in 2010 and joined the firm as an associate in 2011.

Additional Information 

Language Proficiency

Mandarin

Carrie

Lastname 

Zhang

Photo 

Position 

Email 

carrie.zhang@knobbe.com

Additional Languages 

Start Date 

Wednesday, June 1, 2011

Catherine Holland

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Attorney User 

Education 

1983
University of Innsbruck Austria (1980-81), Dean's List, Andrews Scholar

Awards & Honors 

Ms. Holland has received multiple awards and has been honored in both national and international forums for her legal accomplishments: 

  • Recognized in the World Trademark Review (WTR) 1000 as a Leading Trademark Lawyer from 2012 to 2016 
  • Recognized in Legal Media Group's (LMG)"Best of the Best USA" guide as one of the top 30 trademark practitioners in the United States (2015)
  • Recognized in Lawyer Monthly Magazine's "2015 Women in Law Awards" for her outstanding achievements in the legal profession
  • Recognized by Euromoney's Legal Media Group (LMG) as a leading Trademark Law practitioner in the "Women in Business Law" guide (2015 and 2014)
  • Recognized by American Lawyer Media as a Top Rated Lawyer in Intellectual Property Law for her outstanding legal work in intellectual property (2013)
  • Recognized in surveys conducted by Euromoney's Legal Media Group of 4,000 practitioners in 70 countries, as one of the "World’s Leading Trademark Law Practitioners" (2014, 2012, and 2006)
  • Named in the "Who's Who Legal: Trademarks" list by Law Business Research for her expertise in trademark law (2013 - 2015)
  • Named by Super Lawyers as one of the Top Women Attorneys in Southern California in the field of intellectual property law (2012 and 2013)
  • Awarded the title “Super Lawyer” in surveys of her peers conducted by Los Angeles Magazine and Super Lawyers magazine. This recognition is limited to only five percent of lawyers in Southern California. (2004 and 2007–2013)
  • Named one of Orange County’s Top Lawyers by O.C. Metro magazine (2009)
  • Awarded the Volunteer Service award by the International Trademark Association (INTA) for outstanding achievement in advancing INTA’s committee objectives.  Ms. Holland sponsored the Model State Trademark Bill in California, which was signed into law within one year of introduction.  INTA recognized this as a remarkable accomplishment for significant legislation in the state of California. (2008)
  • Earned the highest ranking (AV Preeminent) by Martindale Hubbell

Telephone 

949-760-0404

Office Location(s) 

Professional Profile 

Catherine J. Holland is a partner in our Orange County office.  She is experienced in all aspects of domestic and international trademark, unfair competition and copyright matters. Her practice includes domestic and foreign trademark selection and clearance, trademark procurement and prosecution, inter partes proceedings before the Trademark Trial and Appeal Board, intellectual property audits, intellectual property licensing, franchising, domain name disputes, counterfeit goods and customs, copyrights, entertainment law, rights of publicity, and trademark and copyright enforcement and litigation. 

Ms. Holland represents clients in a wide range of industries, including the nutritional supplement, software, hardware, motor vehicle, medical device, skincare and aesthetic, fashion and apparel, publishing, entertainment, music, financial, restaurant, and food and beverage industries. Representative clients include Nutrishop, Paris Blues, Fairtrade Organization, Hockey Monkey, Teacher Created Materials, Jean d'Arcel and Robert Lamy. For many years she has represented an international manufacturer of motor vehicles.

In surveys conducted in 2015, 2014, 2012 and 2006 by EuroMoney's Legal Media Group of 4,000 practitioners in 70 countries, Ms. Holland was named one of the “World's Leading Trademark Practitioners.” In 2004, and 2007–2013, Ms. Holland was awarded the title “Super Lawyer” in surveys of her peers conducted by Los Angeles Magazineand Super Lawyers magazine. This recognition is limited to only five percent of lawyers in Southern California.  In 2009 she was named one of Orange County’s Top Lawyers by O.C. Metro magazine. 

Ms. Holland joined the firm in 1987 and became a partner in 1991.

Additional Information 

Legislation

On behalf of the International Trademark Association, Ms. Holland sponsored the Model State Trademark Bill in the California state legislature.  The Bill was signed into law in 2007.  

Earlier in her career, Ms. Holland authored and sponsored legislation which amended the California Business and Professions Code to provide that registration of a mark in California is constructive notice of the registrant's claim of ownership of the mark.

Language Proficiency

German

Cases, Articles, Speeches & Seminars 

Representative Matters

Nutrishop, Inc.
Catherine Holland is the lead IP counsel for Nutrishop, Inc., one of the fastest growing chains of retail nutrition stores in the United States. In 2015 the company will have grown to approximately 300 locations in 36 states. Ms. Holland has directed all of the company’s intellectual property efforts, including its extensive licensing program and brand enforcement efforts.

MonkeySports, Inc.
Catherine Holland is the lead IP counsel for MonkeySports, Inc., a sports retailer who has experienced explosive growth through on-line sales in the United States and around the world.  Ms. Holland has directed the company’s brand enforcement efforts on the internet and in social media around the globe. She has also assisted in the launch of the company’s brand into clothing and nutritional supplements.

Impact Beverage, Inc.
Catherine Holland is the lead IP counsel for Impact Beverage, Inc., a dynamic new company which has brought a new sports beverage to the market across the United States. Ms. Holland has directed the company’s brand enforcement efforts on the internet and in social media around the globe. She has also assisted in the launch of the company’s brand into clothing and nutritional supplements.

Speaking

Ms. Holland has spoken extensively in the field of trademark and copyright law, including seminars sponsored by INTA, OCTANe Venture Capital, the Society of Cosmetic Chemists, law firms in Germany and England, the Orange County Patent Law Association, the Orange County and Los Angeles Bar Associations, the Orange County Business Journal, the San Diego Business Journal, and the Advertising Production Association of Orange County.  She has been a guest on the radio program “Southern California Business Focus” where she discussed basic copyright issues.

Ms. Holland has spoken extensively in the field of trademark and copyright law, including:

·         Speaker, “Intellectual Property & Technology Law Section Seminar”, Orange County Bar Association, Newport Beach, CA     (February 2016)

·         Panelist, “Washington in the West 2016”, Los Angeles Intellectual Property Law Association (LAIPLA), Los Angeles, CA (January 2016)

·         Moderator, “INTA - USPTO Roundtable: Orange County”, Knobbe Martens, Irvine, CA (May 2014)

·         Moderator, “INTA - USPTO Roundtable: Los Angeles”, Knobbe Martens, Los Angeles, CA (May 2014)

·         Panelist, Knobbe Martens IP Impact -- Trademark Seminar, Menlo Park, CA (July 2013)

·         Presenter, “Clearing Marks in the U.S.: What European Practitioners Need to Know”, Taylor Wessing Brand Forum, London,     England (March 2013)

·         Co-Speaker, “Intellectual Property Protection in the Field of Cosmetics and Personal Care Products”, Society of Cosmetic       Chemists (SCC), Los Angeles, CA (March 2013)

·         Guest on the radio program “Southern California Business Focus” where she discussed basic copyright issues

Ms. Holland has taught several courses in, and served as an adjunct professor of, intellectual property at several institutions, including: USC Business School for foreign corporations wanting to do business in the U.S.; USC Law School; UC Irvine; UC Riverside; Chapman University; and OC Community College.

Publications

"To Tweet or Not to Tweet: Social Media and Intellectual Property Issues,"Orange County Business Journal, October 2015

"Getting the Deal Through: Trademarks 2016," Law Business Research Ltd., September 2015

Quoted in "Condoms may be key to ‘.sucks’ trademark success, lawyers claim," World Intellectual Property Review (WIPR), July 2015

"Managing Intellectual Property Assets,” California Business Law Practitioner, Fall 2014

"Clearing marks in the U.S.: What European practitioners need to know,” 9th Annual Taylor Wessing Brands Forum, London, England, March 2013

“More Than a Brand Name – Monetizing the Unique Aspects of Your Company and Your Products to Increase your Bottom Line,”  Orange County Business Journal,  November 2012

Contributing thoughts to "The Avengers face a new adversary: trademark professionals", a blog post on World Trademark Review, September 2012

"Domain Name Mania - Managing the Mayhem" Orange County Lawyer Magazine, July 2009

“Managing Intellectual Property Assets,” Chapter 1 in the multi-volume treatise Intellectual Property in Business Transactions published by the California Continuing Education of the Bar, 2008 - 2014

Legal Guide to Intellectual Property, a book published by Entrepreneur Press, 2007

“What Is A Copyright” Orange County Business Journal

Professional Memberships 

American Bar Association

Franchising Forum
Women Rainmakers Committee
Member (1988 - Present) 

Orange County Bar Association

Board of Directors (1997 - 1999)
Orange County Delegation to the California State Bar Conference of Delegates (1992 - 2000), Chair (1996)
Entertainment and Sports Marketing Section
Member (1988 - Present)

International Trademark Association (INTA)

Chair – Legislation and Regulation Committee (2014-2015)
Vice-Chair – Legislation and Regulation Committee (2012-2013)
Chair - Model State Trademark Bill Committee (2010-2011)
Rights of Publicity Subcommittee (2016)
Member (1988 - Present)

Orange County Patent Law Association

Board of Directors (1992 - 1998)
President (1997)
Member (1988 - Present)

Notre Dame Club of Orange County

Board of Directors (2014 - 2016)
Member (1987 - Present)

Opera Pacific

Board of Directors (1994 - 2005)

Quote 

I love the diversity of my clients. From the tallest to the smallest, each has a protectible identity.
Catherine

Lastname 

Holland

Photo 

Position 

Email 

catherine.holland@knobbe.com

Additional Languages 

Start Date 

Monday, June 1, 1987

Susan M. Natland

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Attorney User 

Education 

1998
American Jurisprudence Award in Civil Procedure, Teaching Assistant for Legal Research and Writing
1993
with emphasis in biology, Dean’s list

Honors 

Honors

Awards & Honors 

Ms. Natland has received multiple awards and has been honored in both national and international forums for her legal accomplishments:

  • Recognized in the World Trademark Review (WTR) 1000 as a Leading Trademark Lawyer from 2012 - 2016. Ms. Natland is described as "an excellent litigator" that "cuts a dash on all manner of contentious work".
  • Selected as a “Super Lawyer” in a survey of her peers conducted by Los Angeles Magazine and Super Lawyers Magazine from 2011 through 2016. From 2013 to 2016, she was also named one of the "Top Women Attorneys" in Southern California.
  • Recognized in The Legal 500 "United States 2015" as being an outstanding practitioner. In this guide, she was noted for providing strategic protection, branding and enforcement advice to domestic and international brands, such as Urban Decay, Kate Spade New York and Arbonne.
  • Named "Best in Trademark" in Legal Media Group's (LMG) 2015 "Americas Women in Business Law Awards"
  • Recognized in Law Business Research's 2015 "Who's Who Legal 100"
  • Susan Natland Wins Client Choice Award 2014Selected in 2014 as the exclusive winner of the "Client Choice Award" in the Intellectual Property: Trademarks, California category by International Law Office (ILO). Uniquely, the Client Choice Awards are based solely on nominations and feedback from corporate in-house counsel.
  • Recognized as a leading Trademark Law practitioner in Legal Media Group's (LMG)"Guide to the World's Leading Trademark Law Practitioners" in 2014
  • Named to Legal Media Group's (LMG)"Women in Business Law" guide in 2014 and 2015
  • Named one of Orange County’s top lawyers by OC Metro magazine in the categories of copyright law and intellectual property law (2009, 2010, 2011 and 2013)
  • Named one of the top trademark attorneys in California, based on a comprehensive survey of both general counsel and private practice lawyers, in the Law Business Research"Who’s Who Legal: California"; and one of the top trademark attorneys in the world in the "Who's Who Legal: Trademarks" which referred to her as a “real trademark specialist." (2008 - 2015)
  • Nominated for the Orange County Business Journal Annual Women in Business Award (2006)
  • Named as one of Southern California’s “Rising Stars” in intellectual property law, based on survey of her peers, in Los Angeles Magazine and Super Lawyers Magazine (2005)

Telephone 

949-760-0404

Office Location(s) 

Professional Profile 

Susan M. Natland is a partner in our Orange County office. Ms. Natland focuses on all aspects of domestic and international brand protection and enforcement, advertising law, unfair competition, copyright, and data privacy and security matters.

Her practice includes domestic and foreign trademark selection and clearance, trademark procurement and prosecution, ex parte and inter partes proceedings before the Trademark Trial and Appeal Board, trademark audits, licensing, domain name disputes, counterfeit goods and customs, copyrights, entertainment law, rights of publicity, and trademark and copyright enforcement and litigation, and has even personally attended raids of counterfeit goods warehouses in China. She also advises clients on an array of electronic commerce matters, including data privacy and data security compliance and procedure, data breach response, online privacy, mobile privacy, advertising and promotions, and social media. Ms. Natland is also a registered patent attorney before the U.S. Patent and Trademark Office.

Ms. Natland represents clients in a broad spectrum of industries, including the fashion and apparel, food and beverage, automotive, cosmetics, healthcare, medical and dental, financial, computer hardware and software, telecommunications, retail including e-commerce and direct selling, and sports and entertainment industries. Representative clients include Broadcom Corporation, Urban Decay Cosmetics (L'Oreal), Arbonne International, Kate Spade New York, First American Financial Corporation, Nobel Biocare, Mazda North America, Carey Hart, and Ryan Sheckler.

Ms. Natland recently had the unique opportunity to work as virtual in-house trademark counsel for a major Internet retailer for almost two years, allowing her to take an active role in policy and business decisions and providing her with invaluable hands-on insight and understanding of business concerns and drivers.

Ms. Natland has continuously been active in the local business community, volunteering for the Los Angeles Downtown Women's Center, the Newport Beach Chamber of Commerce and participating in many local charitable events such as the Anti-Defamation League, the Public Law Center and SIMA (Surfing Industry Manufacturers Association).

Ms. Natland is currently an adjunct professor at UCLA School of Law, teaching Trademark Law, and has been a Guest Lecturer at Chapman School of Law (Music and Entertainment Law), and University of California Irvine.

Ms. Natland also serves as a Brand Ambassador for her client The Passionate Collector.

Ms. Natland joined the firm in 1998 and became a partner in 2004. Ms. Natland serves on the firm’s Diversity Committee.

Clerk Experience

Honorable Judge John T. Noonan, Judge of the U.S. Court of Appeals for the Ninth Circuit

Additional Information 

Teaching/Adjunct Professor

University of California, Los Angeles, School of Law

Whittier Law School

University of California, Irvine

Orange Coast College

Santa Ana College

Cases, Articles, Speeches & Seminars 

Representative Matters

Ms. Natland has been involved in the following litigation cases, amongst others:

Victoria’s Secret Stores Brand Management, Inc. v. Urban Decay Cosmetics, 2:12-cv-00693-GLF-MRA (2012). Represented Defendant and Counter Claimant, Urban Decay Cosmetics, in connection with declaratory judgment suit involving the NAKED mark. Case settled favorably for client resulting in complete phase-out of accused Victoria’s Secret product.

Broadcom Corp. v. BroadVoice, Inc., SACV05-431 DOC (2005).  Represented Plaintiff, Broadcom Corporation, in trademark infringement suit. Case settled favorably for client.

Ms. Natland’s Trademark Trial and Appeal Board (TTAB) experience is extensive, with some highlights noted below:

Ms. Natland successfully represented My Horse Player, Inc. in an ex parte proceeding before the Trademark Trial and Appeal Board, in which the Board's decision on appeal reversed the Examining Attorney by finding that MY HORSE PLAYER is not descriptive and is registrable on the Principal Register (TTAB 2008).

Ms. Natland successfully represented Hurley International LLC as Plaintiff in a precedential decision from the Trademark Trial and Appeal Board, finding on summary judgment that the Defendants had committed fraud on the USPTO. Hurley International LLC v. Volta 82 USPQ2d 1339 (TTAB 2007).  Listed by Allen’s Trademark Digest as one of the top ten trademark cases before the TTAB in 2007.

Ms. Natland successfully represented Jose Remacle in a precedential decision from the Trademark Trial and Appeal Board, reversing the Examining Attorney and finding that the mark BIO-CD is not descriptive and is registrable on the Principal Register. In re Remacle 66 USPQ2d 1222 (TTAB 2002).

Speeches & Seminars

Ms. Natland has spoken extensively on topics related to trademark and Internet law, including:

War Games: Recent IP Litigation, Association of Corporate Counsel (ACC) (2015)

Guest Lecturer, Chapman School of Law (Music and Entertainment Law) (2015)

Panelist, Chapman Entertainment and Sports Law Symposium, Chapman Law School (2015)

The Intersection of False Advertising Claims and the FDCA, OCBA Entertainment and Sports Section (2015)

Scams, Schemes, and Spoofs: Online Brand Protection, Association of Corporate Counsel (ACC) (2015)

The Intersection of False Advertising Claims and the FDCA, Association of Corporate Counsel (ACC) (2014)

Avoiding False Advertising & Unfair Competition, IP Impact Silicon Valley - Trademark Seminar (2013)

Financing of Litigation in Trademark Actions, International Trademark Association (INTA) Annual Meeting (2013)

Silver Linings Playbook: Best Practices in Trademark Clearance and Selection, Association of Corporate Counsel (ACC) (2013)

Swimming with Piranhas: Avoiding Trade Secret Misappropriation, False Advertising & Unfair Competition Claims, Association of Corporate Counsel (ACC) (2013)

Soarin' Over Your Trademarks: Keys to Monetizing Your Brands, Association of Corporate Counsel (ACC) (2012)

Navigating the Murky Waters of the New Top Level Domain Name Launch, Association of Corporate Counsel (ACC) (2012)

Trademark and Copyright Clearance Scenarios: A Lawyer's Day at the Happiest Place on Earth.... Association of Corporate Counsel (ACC) (2011)

Trademarks in Sports: Ambush Marketing, International Trademark Association (INTA) Annual Meeting (2011)

Keywords and Trademarks, Association of Corporate Counsel (ACC) (2010)

Brand Power:  How to Develop and Protect a Profitable Brand, The Entrepreneurship Institute's Presidents' Forum (2007) (panelist)

Careers in Trademark Law, International Trademark Association Annual Meeting (INTA) (2006)

Brand Searching and Clearance in the Internet Age, International Trademark Association (INTA) Annual Meeting (2005) 

Trademark Trial and Appeal Board Practices, Practicing Law Institute (2004)

Trademark Year in Review, OCPLA/SDIPLA Spring Seminar (2003)

Trademarks and the Internet, National Association of Legal Secretaries (2003)

Dilution and the Victoria’s Secret Case, Orange County Paralegal Association (2003)

Articles

In addition, Ms. Natland has published numerous articles related to copyright, trademark and Internet law, including:

When the cost of default is $1.2 million, World Trademark Review, February 2016

Alert: California and the EU’s Changing Privacy Laws, December 2015

GoDaddy victorious in dispute over OSCARS and ACADEMY AWARDS marks, World Trademark Review, September 2015

Nuisance Repeat Filing Resolution: An Interview with the Enforcement Committee, INTA Bulletin, April 2015

Tacking isn't tacky - narrow doctrine saves defendant, World Trademark Review, January 2014

SPI in high spirits after suit against STOLI marks is dismissed for lack of standing, World Trademark Review, September 2013

No shades of grey: TTAB finds "white" deceptive for black tea, World Trademark Review, April 2013

Madrid Protocol registrations not insulated from petition to cancel based on abandonment, World Trademark Review, October 2012

Advertising at the Olympics - Let the Games Begin!, Convergence (an International Bar Association publication), Orange County Business Journal and Law360, July 2012

Ninth Circuit recognizes protectable trade dress for skull-shaped vodka bottle, World Trademark Review, June 2012

Time to Review – Achieving Best Practices in Trademark Audits, World Trademark Review, March 2012

Mark for Coffee House Likely to Cause Confusion with Coffee Certification Mark, World Trademark Review, March 2012

Nearly $300,000 awarded to plaintiff in keyword case against competitor, World Trademark Review, February 2011

Eighth Circuit: actual confusion is not a prerequisite to monetary relief, World Trademark Review, January 2011

Common U.S. Marines Slogan Remains in Public Domain, World Trademark Review, October 2010

Use of Identical Mark is Circumstantial Evidence of Dilution, World Trademark Review, July 2010

A TTAB Finds Mark Disparaging For Use with Wine, World Trademark Review, April 2010

Plaintiff Has Its Cake, May Not Eat It Too, World Trademark Review, December 2009

Trademark “Squatter” Enjoined From Using JAPONAIS Mark, World Trademark Review, September 2009

Eight-year delay bars claim that REDSKINS mark disparages Native American, World Trademark Review, July 2009

Heartbrand beefs with Yahoo!, World Trademark Review, May 2009 

Hershey Garners Sweet Victory Against Furniture Company, World Trademark Review, December 2008

Hobbit Sleeps on Rights, Says Court, World Trademark Review, August 2008

Google’s Motion to Dismiss AdSense Complaint Rejected, World Trademark Law Report, July 2008

Focus on Fraud: Still Treacherous Territory in the U.S., INTA Bulletin, June 2008

The Importance of Trademark Audits, INTA Bulletin, March 2008

HOT WHEELS summary judgment spins out in Ninth, World Trademark Law Report, 2007

TTAB applies more lenient Section 2(d) test in FIRST NIAGARA, World Trademark Law Report, July 2007

Trademark Management: The Whole Truth and Nothing But the Truth, World Trademark Review, April 2007

Jonathan Livingston Seagull Claims Survive Summary Judgment Motion, World Trademark Law Report, April 11, 2007

Trademark Audits – what you need to know, World Trademark Review, May 2006

LAWYERS.COM Generic for Online Legal Database, World Trademark Law Report, March 2, 2006

No Second Bite of the Apple for SNAP Mark Owner, World Trademark Report, December 14, 2005

Infamous Mustang Ranch Name Still Up in the Air, World Trademark Report, September 9, 2005

Brand Searching and Clearance in the Internet Age (contributing author), International Trademark Association, May 18, 2005

Duck Quacking Sound Mark Shot Down by District Court, World Trademark Law Report, April 26, 2005

Nissan Dilution Case Driven Back to the District Court, World Trademark Law Report, October 7, 2004

No New Home for Disputed ‘TahoeLuxuryProperties’ Domain Name, World Trademark Law Report, July 12, 2004

Master Card’s ‘Priceless’ Ads Not Infringed by Political Broadcasts, World Trademark Law Report, April 6, 2004

Fake Gucci Bags Too Good to Recall, World Trademark Law Report, February 12, 2004

MBNA Forfeits MONTANA SERIES and PHILADELPHIA CARD, World Trademark Law Report, November 19, 2003

Default Respondent Prevails in UDRP Action, World Trademark Law Report, September 17, 2003

In Re MBNA America Bank, N.A., Federal Circuit Case Digest, September 2003

In Re The Boulevard Entertainment, Inc., Federal Circuit Case Digest, August 2003

Enterprise Rent-A-Car Company v. Advantage Rent-A-Car, Inc., Federal Circuit Case

Professional Memberships 

International Trademark Association (INTA)

INTA Leadership Development Committee (2014 – Present)

Project Team Co-Chair for Leadership Academy (2014 – Present)

INTA Enforcement Committee (2006 - 2013)

Chair of Enforcement Committee (2012 – 2013)

Vice Chair of Enforcement Committee (2010 – 2011)

Chair of Opposition & Cancellation Standards and Procedures Subcommittee (2008 - 2010)

INTA Small and Medium-Enterprises Task Force (2010 - 2011)

INTA 2011 Annual Meeting Project Team (2010 - 2011)

INTA 2005 Annual Meeting Project Team (2005)

INTA Roundtable Committee (2004 - 2006)

INTA Anti-Counterfeiting and Enforcement Committee (2002 - 2004)

Orange County Patent Law Association (OCPLA)

Chair of Trademark Committee

Orange County Bar Association

Quote 

Providing clear, practical legal advice and creative business solutions is at the core of my practice.
Susan M.

Lastname 

Natland

Photo 

Position 

Email 

susan.natland@knobbe.com

Additional Languages 

Start Date 

Monday, June 1, 1998

Scott Raevsky

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0
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Attorney User 

Education 

2006
Research Editor - Law Review, ABA-BNA Award for Excellence in the Study of Intellectual Property Law

Honors 

cum laude
2002
Eta Kappa Nu Honorary Fraternity

Telephone 

949-760-0404

Office Location(s) 

Professional Profile 

Scott Raevsky is a partner in our Orange County office.  He has experience in patent protection for companies in the information technology and electronic medical device areas.

Mr. Raevsky's practice includes strategic patent procurement, counseling on patent infringement and validity issues, and intellectual property due diligence.  Mr. Raevsky represents a variety of companies in such areas as information technology management, electronic commerce and personalization, mobile applications, machine-readable codes, medical patient monitoring, and cardiac pacing and defibrillation.  Mr. Raevsky also has extensive experience with digital signal processing, with clients in the fields of home and portable audio, patient monitoring, and radar. 

Mr. Raevsky has also developed software tools for performing competitive patent analysis and strategic patent procurement.

Prior to joining the firm, Mr. Raevsky worked as a patent agent, preparing patent applications for inventions related to hard disk drives and RAID control.  He also previously worked as a web application programmer.

Mr. Raevsky joined the firm in 2006 and became a partner in 2012.

Additional Information 

Language Proficiency

Laotian

Cases, Articles, Speeches & Seminars 

Articles

Co-author, "PTAB At The Fed. Circ.: Lessons From 2015,"Law360 (February 2016)

Speeches

Speaker, "Patent Strategy for Business Analytics", at the USC Second International Conference on Business Analytics (April 2014) 

Lecture, "What Businesses Need to Know about Recent Changes in U.S. Patent Law", USC Marshall School of Business (October 2013)

Speaker, "What Businesses & Engineers Need to Know about Recent Changes in U.S. Patent Law", Orange County IEEE (June 2013)  

Scott

Lastname 

Raevsky

Photo 

Position 

Email 

scott.raevsky@knobbe.com

Additional Languages 

Start Date 

Thursday, June 1, 2006

Theodore G. Papagiannis

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0
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Attorney User 

Education 

2005
Fritz B. Burns Scholar
1994
Tau Beta Pi, Chi Epsilon, Phi Kappa Phi Honor Societies

Honors 

summa cum laude

Telephone 

949-721-6395

Office Location(s) 

Professional Profile 

Mr. Papagiannis is a partner in our Orange County office.  He advises companies on developing comprehensive intellectual property portfolios and strategies.  Theodore has extensive experience in representing venture capital firms and other clients in IP due diligence matters.  Mr. Papagiannis has served as a program committee member of CleanTech OC since the trade association’s inception in 2010.

Prior to joining the firm, Theodore worked as a civil and environmental engineer for nearly a decade.  Mr. Papagiannis is a licensed Professional Engineer in the State of California.

Mr. Papagiannis joined the firm in 2005. 

Additional Information 

Language Proficiency

Greek

Professional Memberships 

Professional Memberships

Board of Directors, CleanTech OC (2016)

Quote 

The best part of my job is counseling and working closely with intelligent, innovative & highly motivated clients.
Theodore G.

Lastname 

Papagiannis

Photo 

Position 

Email 

theodore.papagiannis@knobbe.com

Additional Languages 

Nick name 

Ted

Start Date 

Wednesday, June 1, 2005

Federal Circuit Review | February 2016

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Federal Circuit Upholds Grant of Summary Judgment Under Section 101 for Claims Directed to Anonymous Loan Shopping

InMortgage Grader, Inc. v. First Choice Loan Services Inc., Appeal No. 2015-1415, the Federal Circuit affirmed a district court’s summary judgment ruling that claims directed to anonymous loan shopping were invalid under 35 U.S.C. § 101.

At the district court level, plaintiff Mortgage Grader moved to strike defendants’ § 101 defense as untimely because the defense was not asserted in their initial invalidity contentions as required by the court’s standing patent rules. The district court denied the motion to strike, finding that the defense was properly asserted after the Supreme Court’s decision in Alice, which was a substantial change in law. The Federal Circuit upheld this decision under the abuse of discretion standard.

The Federal Circuit also held that the district court did not err in granting summary judgment to defendants under § 101. The Federal Circuit stated that the district court correctly applied the two-step framework set out in Mayo and Alice. First, the Federal Circuit determined that the asserted claims were directed to the abstract idea of “anonymous loan shopping” and that the series of steps covered by the claims “could all be performed by humans without a computer.” Second, the Court determined that the claims lacked an “inventive concept” because the claims only recite a method of using this abstract idea using generic computer components.

 


 

Same PTAB Panel Can Begin and End IPR Reviews

In Ethicon Endo-Surgery, Inc. v. Covidien LP, Appeal No. 2014-1771, the Federal Circuit upheld the USPTO’s practice of having the same PTAB panel institute and issue the final decision in an IPR.

Covidien petitioned for IPR of an Ethicon patent. A PTAB panel granted the petition, and later that same PTAB panel found all claims of the Ethicon patent obvious in view of the prior art. Ethicon appealed, arguing that under the AIA, separate panels must institute an IPR and issue the IPR’s final decision. Ethicon also argued that because the PTAB is initially exposed to a limited record it may prejudge the case before seeing the full record. This allegedly raises “serious due process concerns.”

The Federal Circuit held that where no other issues of procedural fairness are alleged, the USPTO’s assignment of a single panel to both institute and issue a final decision in an IPR does not violate due process. The Federal Circuit also determined that nothing in the structure or legislative history of the AIA reflects a congressional intent for separate PTAB panels to institute and issue the final decision for an IPR. On the merits, the Federal Circuit affirmed the PTAB’s finding that all claims of Ethicon’s challenged patent were obvious in view of the prior art.

Judge Newman dissented, concluding that the AIA requires that the PTO Director make the institution decision and the PTAB issue the final decision. 

 


 

Federal Circuit Upholds a District Court’s Claim Construction and Grant of Summary Judgment of Non-Infringement and No Invalidity for Indefiniteness

In Akzo Nobel Coatings, Inc. v. Dow Chemical Co., Appeal Nos. 2013-1331, -1389, Akzo sued Dow Chemical for infringing a patent related to extruding material at high pressure. After a combined claim construction and early summary judgment hearing, the district court granted Dow’s motion for summary judgment of non-infringement both literally and under the doctrine of equivalents. Akzo appealed the district court’s claim construction and summary judgment rulings. Dow Chemical cross-appealed the district court’s conclusion that the asserted claims are not invalid for indefiniteness.

The claims at issue require a “pressurized collection vessel.” Akzo argued that the district court’s construction of this term improperly required material to accumulate in the vessel. The Federal Circuit disagreed, noting that accumulation is required to give meaning to the claim term “collection” and to remain consistent with the examples provided in the specification. 

Regarding infringement, Akzo’s expert declaration and other proffered evidence did not explain how material accumulated in the vessel of the accused products, as the court’s construction required. Thus, the Federal Circuit found Akzo had failed to raise a genuine issue of material fact as to whether the accused product contained a “pressurized collection vessel” or performed the same function as the asserted claims in substantially the same way. Accordingly, the Federal Circuit affirmed the district court’s summary judgment rulings of no direct infringement and no infringement under the doctrine of equivalents.

Regarding Dow’s cross-appeal, the Federal Circuit further affirmed the district court’s holding that the claims were not indefinite, finding that the district court did not clearly err in relying on an expert declaration that one of skill in the art would interpret a limitation requiring “viscosity below 10 Pa.s” to be measured at room temperature in the absence of a specified temperature. 

 


 

Federal Circuit Dismisses an Appeal of an Inter Partes Reexamination for Lack of Standing Where the Appellant Failed to Establish that it was the Successor-in-Interest to the Original Petitioner

In Agilent Technologies, Inc. v. Waters Technologies Corp., Appeal No. 2015-1280, the Federal Circuit dismissed Agilent’s appeal of an inter partes reexamination for lack of standing.

Waters sued Aurora SFC Systems, Inc. for patent infringement. Aurora filed an inter partes reexamination request citing new prior art. Shortly thereafter, Agilent acquired “substantially all” of Aurora’s assets, but did not disclose this to the PTO. Approximately a month after the asset purchase the examiner issued its Action Closing Prosecution and rejected all claims over the new prior art. Waters filed its response, and Aurora submitted third-party comments. The examiner then issued a Right of Appeal Notice rejecting all remaining claims of the patent. Waters filed a notice of appeal to the Board and Aurora filed a cross-appeal. After filing the cross-appeal, Aurora filed a request to change the real party in interest from Aurora to Agilent, but Aurora did not withdraw its counsel from the reexamination proceeding. The Board reversed all of the examiner’s claim rejections. The Board listed Aurora as the third-party requester in the caption of the decision. 

Agilent appealed the Board’s decision. Waters moved to dismiss the appeal, arguing that Agilent was not a third-party requestor under 35 U.S.C. § 315(b) and therefore lacked standing to appeal. Agilent argued that it qualified as a third-party requester because it was Aurora’s privy and successor-in-interest. 

The Federal Circuit held that privies do not have standing to appeal reexamination decisions because privies are not explicitly mentioned in 35 U.S.C. § 141 or 35 U.S.C. § 315(b), whereas other sections of the patent laws specifically reference privies. The court then declined to address whether a successor-in-interest qualifies as a third-party requestor because Agilent did not prove that it was in fact Aurora’s successor-in-interest. The Federal Circuit reasoned that Aurora had continued to participate in the reexamination after its assets were acquired by Agilent and that Aurora was still a party to the related litigation. The Federal Circuit also pointed out that, in the litigation, Aurora had opposed Waters’ motion to amend its complaint to add Agilent as a party.  Because Aurora was still a party to the litigation, the Federal Circuit held that Agilent had not properly “stepped into the shoes of Aurora” to be deemed a successor-in-interest.

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Michael Guiliana

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Attorney User 

Telephone 

949-760-0404

Office Location(s) 

Professional Profile 

Michael A. Guiliana is a partner in our Orange County office.

Mr. Guiliana’s practice includes strategic patent procurement, patent portfolio management, general counseling on infringement and licensing issues, litigation, negotiations and alternative dispute resolution, as well as other related issues.  Mr. Guiliana currently represents clients in a wide range of technologies, including medical devices, photovoltaic and thermal solar systems, and automotive arts. 

In his practice before the United States Patent and Trademark Office, Mr. Guiliana has conducted hundreds of personal interviews with U.S. Patent Examiners and has presented oral arguments in numerous appeals before the Board of Patent Appeals and Interferences.

Mr. Guiliana joined the firm in 1999 and became a partner in 2005.

Industry Experience (raw) 

<h3>Technical Areas of Emphasis</h3><p>Medical Devices and Procedures</p><p>Nanotechnology</p><p>Semiconductor Fabrication</p><p>Materials Engineering</p><p>Photovoltaic and Thermal Solar Systems</p>

Cases, Articles, Speeches & Seminars 

Speeches and Seminars

Panelist, "Writing the Script for an Effective Patent Portfolio," Association of Corporate Counsel (ACC) - Southern California DoubleHeader, November 2015.

Moderator, "SMART Worker," Calit2 Igniting Technology Event, University of California Irvine, May 2015.

Moderator, "The Internet of Things," Calit2 Igniting Technology Event, University of California Irvine, November 2014.

Moderator, "Proof-of-Concept Services," Calit2 Igniting Technology Event, University of California Irvine, November 2013.

Moderator, "From Pitch to Rich," Calit2 Igniting Technology Series Panel Discussion, University of California Irvine, June 2013.

Panelist, "Venture Science: Crossing Disciplines," Creating Innovation, Calit2 Igniting Technology Series Panel Discussion, University of California Irvine, November 2012.

Moderator, "Energy Empowerment: Get Smart About Efficiency," Calit2 Igniting Technology Series Panel Discussion, University of California Irvine, November 2010.

Guiliana, M., Benedict, M., Reisman, J., "Pharmaceutical Patent Applications in China, Europe and America," Intellectual Property Office of Jiangsu Province, Pharmaceutical News and Wuxi Intellectual Property Office, WuXi, China May 26-29, 2010.

Moderator, "Calit2 TechPortal," CalIt2 Igniting Technology Series Panel Discussion, University of California Irvine, May 2010.

Moderator, "Network Generation: Transforming the Global Infrastructure to Address Evolving Demands," Calit2 Igniting Technology Series Panel Discussion, University of California Irvine, November 2009.

Moderator, "The Clean Energy Challenge," Calit2 Igniting Technology Series Panel Discussion, University of California Irvine, May 2009.

Moderator, "H2Ology: Tapping into Technology to Solve Water Woes," Calit2 Igniting Technology Series Panel Discussion, University of California Irvine, November 2008.

Moderator, "Web 3.0: The Next Transformation of the Internet Experience," Calit2 Igniting Technology Series Panel Discussion, University of California Irvine, June 2007.

Guiliana, M., "Ten Things You Need to Know About Intellectual Property," Society of Automotive Engineers Southern California Chapter Conference, Irvine, California, February 2005.

Instructor, Intellectual Property for the High Technology Industry, UCI Extension 2 Day Course, 2006-2009.

Representative Matters

Ex Parte Bradley G. Vernon and Patrick D. Arnold, United States Board of Patent Appeals and Interferences, Appeal No. 2009-013984: Represented patent applicant in appeal of rejection of utility patent application, resulting in all rejections being overturned. 

Kruse Technology Partnership v. Cummins, Inc., SACV 10-01066 JVS: Represented plaintiff in patent infringement litigation, negotiated settlement, January 2011.

Kruse Technology Partnership v. General Motors, CV 09-4970 JVS and Kruse Technology Partnership v. DMAX, SACV 09-00458 JVS: Represented plaintiff in patent infringement litigation, negotiated settlement after formal mediation, November 2010.

Kruse Technology Partnership v. Isuzu, SACV 09-3710 JVS: Represented plaintiff in patent infringement litigation, negotiated settlement of patent infringement litigation via formal mediation, August 2010.

Ex Parte K. Michael Harris, United States Board of Patent Appeals and Interferences, Appeal No. 2009-006390: Represented patent applicant in appeal of rejection of design patent application, resulting in all rejections being overturned, and resulting in issuance of U.S. Design Patent No. 7,866,242.

Kruse Technology Partnership v. Caterpillar, CV 04-10435 PA: Represented plaintiff in patent litigation over diesel engine combustion technology, defeated Caterpillar’s summary judgment of non-infringement and invalidity, negotiated settlement before trial, December 2008.

Ex Parte Robert M. Todd, United States Board of Patent Appeals and Interferences, Appeal No. 2006-3291: Represented patent applicant in appeal of rejection of utility patent application, resulting in all rejections being overturned, and resulting in issuance of U.S. Patent No. 7,270,377.

In Re Stuart J. Ledingham, United States Board of Patent Appeals and Interferences, Appeal No. 2003-1862: Represented patent applicant in appeal of rejection of design patent application, resulting in all rejections being overturned, and resulting in issuance of U.S. Design Patent No. 503333.

Yamaha Motor Company, Ltd. V. Bombardier 60 USPQ2d 1541 (C.D. Cal. 2001) 59 USPQ2d 1088 (C.D. Cal. 2001), Represented plaintiff personal watercraft manufacturer in a series of patent enforcement actions in both District Court and the United States International Trade Commission relating to a portfolio of dozens of patents.  These actions were resolved by license and settlement agreements resulting in significant royalties to the client.

Professional Memberships 

American Intellectual Property Law Association (AIPLA)

International Association for the Protection of Intellectual Property (AIPPI)

Orange County Patent Law Association (OCPLA)

Orange County Bar Association

American Society of Mechanical Engineers (ASME)

Society of Automotive Engineering (SAE)

Michael

Lastname 

Guiliana

Photo 

Position 

Email 

michael.guiliana@knobbe.com

Additional Languages 

Nick name 

Mike

Start Date 

Sunday, June 1, 1997

John King

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Attorney User 

Education 

1993

Honors 

with honors
1986
Emphasis in computer architecture and software, Phi Kappa Phi Honorary Fraternity, Eta Kappa Nu Honorary Fraternity

Honors 

with honors

Awards & Honors 

Mr. King was selected for inclusion in the "Southern California Super Lawyers" list from 2012-2016 and was recognized for his work in intellectual property litigation by Super Lawyers Magazine. 

Mr. King was recognized in The Legal 500 "United States 2015" as being an outstanding practitioner. In this guide, he was noted for his work in patent prosecution.

Mr. King was named one of Orange County’s Top Patent Attorneys multiple times by O.C. Metro magazine. 

Mr. King was named one of The World’s Leading Patent Professionals in the "IAM Patent 1000" published by Intellectual Asset Management (IAM) magazine (2012 - 2015).

 

Telephone 

949-760-0404

Office Location(s) 

Professional Profile 

John R. King is a partner in the firm’s Orange County office.  Mr. King’s practice is concentrated in strategic counseling, licensing, and patent procurement for both early stage and established companies.  He has extensive experience in patenting novel technologies, developing strategies to protect a market niche, conducting patent landscape reviews, performing venture capital due diligence, preparing opinions, and dealing with the intellectual property challenges that face new companies.

Mr. King chairs Knobbe Martens' patent prosecution committee and has successfully counseled numerous start-up companies during the early stages of development, including:

  • Broadband Storage, Inc. (acquired by Adaptec)
  • Corollary, Inc. (acquired by Intel)
  • Endeavors Technology (acquired by Tadpole) 
  • FileNet, Inc. (acquired by IBM)
  • InterWorks Computer Products (acquired by Sanmina)
  • Kofax Image Products (acquired by DICOM Group)
  • Linfinity Microelectronics (acquired by Microsemi)
  • McCaw Cellular Communications (acquired by AT&T Wireless) 
  • Quest Software (acquired by Dell)
  • SRS Labs (acquired by DTS, Inc.)
  • XYPoint (acquired by TeleCommunicaiton Systems)

Mr. King also assists larger clients in building their patent portfolios including companies, such as CommVault, Micron Technologies, PIMCO, and Skyworks Solutions. Mr. King works with a variety of industries including audio processing, computer graphics, computer software and hardware, data storage, database technologies, financial transactions, GPS technologies, healthcare information technology, networking, online businesses, RFID tagging, semiconductors, statistical modeling, telecommunications, wireless communications, video gaming, and video processing.

Cases, Articles, Speeches & Seminars 

Inter Partes Review Proceedings

Kinetic Technologies, Inc. v. Skyworks Solutions, Inc., Case IPR2014-00529 (2014).  Successfully convinced the Patent Trial and Appeals Board to not institute the Inter Partes Review proceeding.

Kinetic Technologies, Inc. v. Skyworks Solutions, Inc., Case IPR2014-00530 (2014).  Successfully convinced the Patent Trial and Appeals Board to not institute the Inter Partes Review proceeding.

Kinetic Technologies, Inc. v. Skyworks Solutions, Inc., Case IPR2014-00690 (2014).  Successfully prevailed in validating all challenged claims.

Canon Inc. v. Intellectual Ventures I LLC, Case IPR2014-00536 (2014).  Successfully convinced the Patent Trial and Appeals Board to not institute the Inter Partes Review proceeding.

Canon Inc. v. Intellectual Ventures I LLC, Case IPR2014-00537 (2014).  Successfully convinced the Patent Trial and Appeals Board to not institute the Inter Partes Review proceeding.

Canon Inc. v. Intellectual Ventures I LLC, Case IPR2014-00757 (2014).  Successfully prevailed in validating all challenged claims.

Google Inc. v. Intellectual Ventures II LLC, Case IPR2014-00787 (2014).  Successfully prevailed in validating certain challenged claims.

Canon Inc. v. Intellectual Ventures I LLC, Case IPR2014-00952 (2014).  Successfully convinced the Patent Trial and Appeals Board to not institute the Inter Partes Review proceeding.

International Business Machines Corp. v. Intellectual Ventures I LLC, Case IPR2014-01516 (2014).  Successfully convinced the Patent Trial and Appeals Board to not institute the Inter Partes Review proceeding.

International Business Machines Corp. v. Intellectual Ventures I LLC, Case IPR2014-00587 (2014).  Successfully prevailed in validating all challenged claims.

Great West Casualty Company, BITCO General Insurance Corporation, and BITCO National Insurance Company v. Intellectual Ventures II LLC, Case IPR2015-01706 (2016). Successfully convinced the Patent Trial and Appeals Board to not institute the Inter Partes Review proceeding for certain claims.

Great West Casualty Company, BITCO General Insurance Corporation, and BITCO National Insurance Company v. Intellectual Ventures II LLC, Case IPR2015-01706 (2016). Successfully convinced the Patent Trial and Appeals Board to not institute the Inter Partes Review proceeding for certain claims.

Covered Business Method Proceedings

PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Intellectual Ventures I LLC, Case CBM2014-00032 (2014). Challenged the broad interpretation of the financial product or service requirement needed to institute a Covered Business Method proceeding.  Successfully convinced the Patent Trial and Appeals Board to not institute the CBM proceeding. 

J.P. Morgan Chase & Co., JP Morgan Chase Bank, Nat’l Ass’n, Chase Bank USA, Nat’l Ass’n, Chase Paymentech Solutions LLC, and Paymentech LLC v. Intellectual Ventures II LLC, Case CBM2014-00160 (2015). Successfully convinced the Patent Trial and Appeals Board to not institute the CBM proceeding.

Motorola Mobility LLC, v. Intellectual Ventures I LLC, Case CBM2015-00005 (2015). Successfully filed a motion to terminate the CBM proceeding.

Great West Casualty Company, BITCO General Insurance Corporation, and BITCO National Insurance Company v. Intellectual Ventures II LLC, Case CBM2015-00171 (2016). Successfully convinced the Patent Trial and Appeals Board to not institute the CBM proceeding.

Motorola Mobility LLC, v. Intellectual Ventures I LLC, Case CBM2015-00174 (2016). Successfully convinced the Patent Trial and Appeals Board to not institute the CBM proceeding. 

Speeches and Seminars

Mr. King has published a number of articles on intellectual property law and has lectured frequently on patent strategies and other intellectual property law topics.

"Alice-Proofing Patent Claims Under Section 101,"Telecommunication and Software Patent Practice Update, New Jersey Intellectual Property Law Association, Iselin, New Jersey.

“Post Grant Procedures & Strategies,” Orange County Patent Law Association, Irvine, California.

"What Businesses And Engineers Need To Know About Recent Developments in Patent Law,"OCTANe Strategic Growth Series, Irvine, California.

"Post Grant Patent Challenges," 37th Annual Intellectual Property Institute, The State Bar of California, San Diego, California.

Look Before You Leap – Avoiding Intellectual Property Problems When Starting A New Information Technology Business," OCTANE Software Information Technology Seminar, Irvine, California.

The American Invents Act – How Changes To The Patent Law Can Help Emerging Companies,"  Patent Strategies Seminar, Irvine, California

"Cease and Desist Strategies – Preparing For Licensing Negotiations,"Orange County Patent Law Association, Irvine, California. 

“Defending the Crown Jewels: How to Manage and Protect Intellectual Property,” Harvard Business School Entrepreneurs Conference, Anaheim, California

Patent Claim Drafting Techniques That Enhance Enforcement And Increase Licensing Revenue,"  Orange County Patent Law Association, Seminar, Irvine, California

“Patent Allowance, Now What? Continuation Strategies That Significantly Increase Patent Value,” Orange County Patent Law Association, Costa Mesa, California 

“Protecting Innovative Medical Products,” Harvard Business School Entrepreneurs Conference, Irvine, California

“Tailoring a Patent Portfolio to Increase Licensing Revenue,” Orange County Licensing Executive Society, Irvine, California.

“Limiting Language and Alternative Embodiments: What to Do and What to Avoid,” Orange County Patent Law Association, Costa Mesa, California.

“Transforming Proprietary Knowledge Into Competitive Business Tools,” Chapman University, Orange, California.

“Profiting from Technology Innovation,” Harvard Alumni Association, Irvine, California.

“Protecting Intellectual Property – A Venture Capitalist’s Perspective,” Harvard Business School Entrepreneurs Conference, Irvine, California.

“Patent Strategies to Enhance Your Competitive Position,” Harvard Business School Entrepreneurs Conference, Irvine, California.

“Intellectual Property Protection for Startups,” Harvard Business School Entrepreneurs Conference, Irvine, California.

“Patent Preparation and Drafting for the International Company,” International Intellectual Property Seminar, Newport Beach, California.

Professional Memberships 

Past President, Orange County Patent Law Association

American Intellectual Property Law Association

Intellectual Property Organization

Licensing Executives Society

John

Lastname 

King

Photo 

Position 

Email 

john.king@knobbe.com

Additional Languages 

Start Date 

Tuesday, June 1, 1993

Salima Merani, Ph.D.

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Attorney User 

Awards & Honors 

Dr. Merani has received multiple awards and has been honored in both national and international forums for her legal accomplishments: 

  • Recognized in 2016 as the exclusive winner of the "Client Choice Award" in the Intellectual Property: Patents, California category by International Law Office (ILO). "Client Choice Awards" are based solely on nominations and feedback from corporate in-house counsel. 
  • Named "Patent Prosecution Attorney of the Year" in 2015 "LMG Life Sciences Annual Awards" by Legal Media Group (LMG). This awards ceremony recognized the industry's leading professionals, across North America and Europe, for their accomplishments over the past 12 months.
  • Recognized by Intellectual Asset Management (IAM) among the World’s Leading Patent Professionals in the "IAM Patent 1000", a guide that identifies the top patent practitioners and firms in 41 jurisdictions around the globe (2012-2015). In the 2015 guide, she was deemed "transactional cognoscenti" and "a favorite of venture capitalists".
  • Featured in the National Law Journal's 2015 "IP Hot List."
  • Named to the Daily Journal's list of the Top Intellectual Property Attorneys in 2015, 2014, 2013 and 2012. In this list, she was recognized among the Top 25 Portfolio Managers & Patent Prosecutors.
  • Named to Diversity & the Bar's 2014 "Rainmakers" List. In this list, she was highlighted among successful minority attorneys who continue to lead the industry.
  • Recognized in the 2014 and 2015 Legal 500“United States" as being an outstanding practitioner. In the 2014 guide, she was noted for her work in medical device and biotechnology patent matters.
  • Received a "Star" distinction in the 2014 and 2015 LMG"Life Sciences" survey for Intellectual Property. In this guide, she was recognized in the areas of patent prosecution, advisory, strategy and management, and was specifically credited as "a vital part of our global strategy" by a key client.
  • Named to The Recorder's "Women Leaders in Tech Law" list in 2014 and 2015. In these lists, she was recognized for demonstrating that she can lead major cases and deals within the tech industry.
  • Named to the Daily Journal's list of the Top Women Lawyers in 2014. In this list, she was recognized amongst the Top 75 Litigators & the Top 25 Corporate Transactions and Regulatory Specialists.
  • In a survey of her peers published in Los Angeles magazine and Super Lawyers magazine, Dr. Merani was named as one of Southern California’s “Rising Stars” in intellectual property law and was named one of Orange County’s top lawyers, published in OC Metro magazine.

Read below for an interview with Salima in the Women Leaders in Tech Law publication.

 

Telephone 

949-760-0404

Office Location(s) 

Professional Profile 

Salima A. Merani, Ph.D. is a partner in our Orange County office. Dr. Merani has fifteen years of experience in building patent portfolios for life sciences companies, including several medtech and biotech companies. She also has extensive experience in conducting patent due diligence for investors, such as venture capital and investment firms. 

Dr. Merani provides a unique perspective to both investors and emerging growth companies with her wide-ranging experience in US and international patent and trademark portfolio management, licensing, strategic offensive positioning, infringement analysis, IPOs, acquisitions, and managing global patent risk.

Dr. Merani’s technical experience in medical devices includes strategic guidance in the fields of aesthetics, orthopedics, cardiovascular and neuroscience, including medical implants, denervation and tissue ablation, regenerative technology, antibody technology, hypertension, diabetes, and dermatological conditions. Her technical work outside the medical arena includes a deep knowledge in the fields of cosmetic formulations and nutraceuticals.

Dr. Merani has received multiple awards and has been honored in both national and international forums for her legal accomplishments. She won the prestigious "2016 Client Choice Award" for Intellectual Property (Patents, California) by International Law Office (ILO), as well as Legal Media Group’s award for "Patent Prosecution Attorney of the Year" in 2015 in the "LMG Life Sciences Annual Awards". She was featured in The National Law Journal's 2015 "IP Hot List" and deemed "a favorite of venture capitalists" in Intellectual Asset Management's 2015 "IAM Patent 1000" list. She was also granted a Star distinction in the 2015 and 2014 LMG "Life Sciences" survey for Intellectual Property.  Dr. Merani was recently recognized in The Recorder's list of Women Leaders in Tech Law, and honored in the Daily Journal's list of the Top Women Lawyers. For the past several years (2012, 2013, 2014 and 2015), Dr. Merani has been recognized in the Daily Journal's list of the Top Intellectual Property Attorneys, where she has been identified among the Top 25 Portfolio Managers & Patent Prosecutors of Intellectual Property. The Legal 500  "United States 2015" guide highlighted Dr. Merani's extensive experience in conducting patent due diligence. She has also been named as one of Orange County’s top lawyers, published in OC Metro magazine.  Dr. Merani’s accomplishments are detailed in the Awards & Honors section. 

Dr. Merani is past Vice Chair of the AIPLA (American Intellectual Property Law Association) USPTO Inter Partes Patent Proceedings Committee, which oversees the Interference, Reexamination, and Derivation subcommittees. She also served on the AIPLA’s Special Task Force on AIA (America Invents Act) Rulemaking. Dr. Merani is also a founding member of the Firm's USPTO Trials and Post Grant Proceedings Committee, and has represented clients in multiple patent disputes before the USPTO and international patent and trademark offices. She is an author and speaker on strategic patent portfolio management.

During law school, Dr. Merani served as Article Editor of the Berkeley Technology Law Journal and was an advisor for the Annual Review of Law and Technology. At Berkeley, she received an Award for Excellence in Legal Writing. Dr. Merani was a summer associate with the firm in 1999 and she joined the firm as an associate in 2000.

Cases, Articles, Speeches & Seminars 

Speeches & Seminars

Dr. Merani has been an invited speaker on various IP topics, including due diligence and the America Invents Act, at the IP Impact Silicon Valley Conference, the OCTANe Medical Device & Investor Form, the University of Southern California, and the University of California, Berkeley. 

Articles & Books

Contributor, 7 Intellectual Property Issues Startup Entrepreneurs Should Not Overlook, JD Supra Legal Perspectives (September 2015). 

Quoted in 7 Intellectual Property Mistakes Startup Entrepreneurs Often Make, JD Supra Legal Perspectives (February 2014).

Co-author, "Understanding Legal Trends in the Private Equity and Venture Capital Market, 2013 ed.: Leading Lawyers on Navigating the Current Economy, Managing Risks, and Understanding Changing SEC Regulations (Inside the Minds)," Aspatore Law Books from Thomson Reuters (2013).

Professional Memberships 

Dr. Merani is past Vice Chair of the AIPLA (American Intellectual Property Law Association) USPTO Inter Partes Patent Proceedings Committee, which oversees the Interference, Reexamination, and Derivation subcommittees.

She also served on the AIPLA’s Special Task Force on AIA (America Invents Act) Rulemaking. 

Quote 

Experienced in representing both venture capital firms & start-ups, clients value my unique strategic perspective.
Salima

Lastname 

Merani

Suffix 

Ph.D.

Photo 

Position 

Email 

salima.merani@knobbe.com

Additional Languages 

Nick name 

PhD

Start Date 

Friday, June 1, 2001

Jeff Van Hoosear

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Attorney User 

Education 

1983
Dean's List, Martha Peterson Award, Phi Beta Kappa Honor Society

Honors 

cum laude

Awards & Honors 

From 2012 to 2016, Mr. Van Hoosear has been recognized in the World Trademark Review 1000 as a Leading Trademark Lawyer and was ranked for his expertise in providing trademark prosecution and clearance to apparel and sporting goods producers, both in the United States and abroad.

Mr. Van Hoosear was recognized in The Legal 500 "United States 2015" as being an outstanding practitioner. In this guide, he was noted for leading a "well-rounded" trademarks group.

Mr. Van Hoosear was recognized in the 2015 "Who's Who Legal 100" by Law Business Research.

In 2014, Mr. Van Hoosear received the "Best USA Lawyer - Unfair Competition" award in the 2014 "Legal Awards" by Acquisition International.

In 2012 and 2014, Mr. Van Hoosear was recognized in the Guide to the World's Leading Trademark Law Practitioners. 

Mr. Van Hoosear has been repeatedly nominated as one of the world’s leading trademark practitioners in the "Who's Who Legal: Trademarks" list by Law Business Research.

Telephone 

949-760-0404

Office Location(s) 

Professional Profile 

Jeffrey L. Van Hoosear is a partner in the Orange County office.  He focuses on international trademark and unfair competition matters.  His practice also includes domestic and foreign trademark selection and clearance, trademark and copyright prosecution, proceedings before the Trademark Trial and Appeal Board, intellectual property licensing, domain name and website content issues and state rights of publicity.

Mr. Van Hoosear represents a number of clients in the apparel and sporting goods industries, and also represents clients in the food and beverage, automotive, aesthetics, fashion, financial, insurance, software, and entertainment industries.  Representative clients include Quiksilver, C1RCA, BB Dakota, 7 Diamonds, Pacific Life, SchoolsFirst, First American, House Foods and Bandai.

Additional Information 

Teaching Experience

University of Irvine

Trademark and Copyright Law

Rancho Santiago College

Trademark and Copyright Law

Cases, Articles, Speeches & Seminars 

Mr. Van Hoosear has spoken extensively in the field of trademark and copyright law.

Speeches & Seminars

"The Social Network: Current Legal Issues in Social Media," Association of Corporate Counsel (ACC) - Southern California DoubleHeader (November 2015)

"Intellectual Property Workshop," FAB Authority, San Diego, CA (July 2015)

UCI School of Law Intellectual Property Essentials, Workshop Instructor, Irvine, CA (March 2015)

“Protecting Your Copyrights, Trademarks and Domain Names”, Presented at the OneOC and Public Law Center “Branding Impact” Series, Santa Ana, CA (February 2015)

“The Legalities of Fashion”, Presented at San Diego Fashion Week, San Diego, CA (September 2013)

“Trade Secret, Trademark, False Advertising and Unfair Competition Issues”, Served as Panelist at IP Impact - Trademark Seminar - Silicon Valley, Menlo Park, CA (July 2013)

“Trade Secret, Trademark, False Advertising and Unfair Competition Issues”, Served as Panelist at IP Impact - Trademark Seminar, San Diego, CA (July 2013)

“Trade Secret, Trademark, False Advertising & Unfair Competition Issues”, Served as Panelist at IP Impact Seminar, San Diego, CA (June 2013)

Association of Corporate Counsel (ACC) – In House Counsel Conference, Participant, Beverly Hills, CA (January 2013)

“Avoiding Trade Secret Misappropriation, False Advertising & Unfair Competition Claims”, Participated in the Association of Corporate Counsel (ACC) – Southern California In-House Counsel Conference, Los Angeles, CA (January 2013)

“Hiring Competitor’s Top Talent & Being Fiercely Competitive Without Exposing Your Company”, Participated in the Association of Corporate Counsel (ACC) – Southern California In-House Counsel Conference, Los Angeles, CA (January 2013) 

"Soarin' Over Your Trademarks - Keys to Monetizing Your Brands", Presenter at the American Corporate Counsel (ACC) SoCal Double Header, Anaheim, CA (May 2012)

"Jungle Cruise: Navigating the Murky Waters of the New Top Level Domain Name Launch", Presenter at the American Corporate Counsel (ACC) SoCal Double Header, Anaheim, CA (May 2012)

"The New gTLD Program: What, When, and Why", Presented to the Orange County Patent Law Association, Irvine, CA (April 2012)

Articles & Books

Co-author, "Yosemite Case Suggests No 'Iconic Names Exception' For TMs,"Law360 (March 2016)

"To Tweet or Not to Tweet: Social Media and Intellectual Property Issues," Orange County Business Journal (October 2015)

Co-author, Getting the Deal Through: Trademarks 2016, published by Law Business Research Ltd. (September 2015)

"Google Inc. v. Oracle America Inc.,"Orange County Business Journal - Intellectual Property Supplement (July 2015)

Protecting Your Company’s Intellectual Property through an IP Audit: a Guide for Small to Mid-Sized Businesses,” Book Co-Author (Published 2013)

“From Trademark to Registration: Getting it Right the First Time,” Orange County Lawyer (April 2012)

"Industry Joins the Fight for the Red Sole,"Managing Intellectual Property (January 2012)

Professional Memberships 

American Bar Association

Chicago Bar Association

Orange County Bar Association

International Trademark Association (INTA)

Quote 

My clients appreciate that in addition to knowing trademark law, I know their industry as well.
Jeff

Lastname 

Van Hoosear

Photo 

Position 

Email 

jeff.vanhoosear@knobbe.com

Additional Languages 

Start Date 

Sunday, June 1, 1986
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