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Hannah Zhang

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Telephone 

206-405-2000

Office Location(s) 

Professional Profile 

Hannah Zhang is an associate in our Seattle office. She practices intellectual property law, with an emphasis on patent procurement in the areas of computer and information technology, physics, and medical devices.

Ms. Zhang graduated from the University of Washington, School of Law. Ms. Zhang earned her bachelors degree in Physics from Tsinghua University, Beijing China. She also holds a Master of Science degree in Computer Science from McGill University, Montreal Canada, and a Master of Engineering degree in Medical Engineering from the University of Washington.

Prior to attending law school, Ms. Zhang worked at Microsoft Corporation as a patent analyst, program manager, and software engineer for more than 14 years. While living in China, Ms. Zhang was a research associate in the Institute of Chemistry, Chinese Academy of Sciences.

Additional Information 

Language Proficiency

Fluent in Mandarin

Hannah

Lastname 

Zhang

Photo 

Position 

Email 

hannah.zhang@knobbe.com

Additional Languages 

Start Date 

Monday, June 1, 2015

Kimberly J. Miller, Ph.D.

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Attorney User 

Education 

2005
Warren Family Scholarship
2002
Dissertation Title: "Synthetic and Mechanistic Studies of Palladium(II) Catalysts for the Formation of C-C, C-N, C-O, and C-S Bonds" Dr. Ralph and Charlene Bauer Research Fellowship
1997
National Science Foundation Solid-State Summer Program Fellow Iota Sigma Pi, Minor in Women's Studies

Honors 

with honors

Awards & Honors 

Dr. Miller has received the following awards for her legal accomplishments:

Kimberly Miller - San Diego Business Journal - 2015 Best of the Bar

  • Named to The Recorder's 2015 "Women Leaders in Tech Law" list for her achievements and demonstration of leadership within the tech industry.
  • Recognized in The Legal 500 "United States 2015" as being an outstanding practitioner. In this guide, she was noted for her patent licensing and transactional work.
  • Named in the Intellectual Asset Management (IAM) magazine 2015 "IAM Patent 1000" as one of The World's Leading Patent Professionals
  • Named to the San Diego Business Journal (SDBJ) 2014 and 2015 "Best of the Bar" lists
  • Giles Rich Intellectual Property Moot Court Competition, Western Regional Winner and National Semi-Finalist (2005)

Telephone 

858-707-4000

Office Location(s) 

Professional Profile 

Kimberly J. Miller is a partner in the San Diego office of Knobbe Martens. Her practice includes portfolio management, strategic IP portfolio development, due diligence and market clearance, and licensing matters. Additionally, Dr. Miller’s practice includes obtaining and advising clients with respect to design patents. Her clients include individual inventors, venture funded start-ups, university spin-offs and publicly traded companies, and her practice spans a variety of technical disciplines, including chemistry, pharmaceuticals, polymers and biotechnology. She is a leader of the firm’s International Department and has conducted patent prosecution in over 45 foreign jurisdictions. 

Dr. Miller’s notable successes include her representation of Alios BioPharma, Inc., which led to a $1.75 billion deal with Johnson & Johnson.  She led the Knobbe diligence team and worked closely with Alios to zealously protect Alios’ interests in its negotiations.  Additionally, she played a key role in the development and implementation of a licensing deal with Vertex Pharmaceuticals, Inc., that resulted in Vertex obtaining rights to two hepatitis C drug candidates from Alios in a transaction worth up to $1.5 billion, said to be the largest preclinical licensing deal in history. Dr. Miller was key in developing IP strategies for Alios, filing Alios’ patent applications, analyzing potential third party risks and strategies for market clearance, and assisting Alios in the due diligence aspects of the deals with Johnson & Johnson and Vertex.  Dr. Miller also assisted Alios with Series B financing that resulted in Alios raising $41M in Series B financing for the development of their respiratory portfolio.

As a speaker on both intellectual property matters and gender in the legal field, Dr. Miller has organized and participated in various presentations on these topics. She is a member of the Lawyers Club where she organizes an annual monthly luncheon, and is active with the Association of Corporate Counsel and Athena in San Diego.

Cases, Articles, Speeches & Seminars 

Articles, Speeches & Seminars

"Cost-Effective Patent Searching in Small Molecule Drug Development," 251st American Chemical Society National Meeting & Exposition, San Diego, CA, March 13-17, 2016

K.J. Miller, "Practical Steps for Building a Strong Life Science Patent Portfolio,"Bloomberg BNA - Life Sciences Law & Industry Report (March 2015)

K. J. Miller, M. M. Abu-Omar, Eur. J. Org. Chem., 2003, 2003, 1294-1299

K. J. Miller, T. T, Kitagawa, M. M. Abu-Omar, “Hydroalkoxylation Reactions Catalyzed by Palladium(II) Complexes”, 222nd National Meeting of the American Chemical Society, Chicago, IL, August 2001.

K. J. Miller, T. T. Kitagawa, M. M. Abu-Omar, Organometallics, 20, 2001, 4403-4412.

K. J. Miller, J. H. Baag, M. M. Abu-Omar, Inorg. Chem, 38, 1999, 4510-4514.

K. J. Miller, J. H. Baag, M. M. Abu-Omar, “Palladium(II) Schiff-base Complexes and their Catalytic Reactivity,” 217th. National Meeting of the American Chemical Society, Anaheim, CA, March 1999.

I. J. Ball, S.-C. Huang, K. J. Miller, R. A. Wolf, R. B. Kaner, Synthetic Metals, 102, 1999, 1311-1312.

I. J. Ball; S.-C. Huang, K. J. Miller, J. Y. Shimano, R. A. Wolf, R. B. Kaner, “The Pervaporation of Ethanol/Water Feeds with Polyaniline Membranes,” International Conference on Synthetic Metals, Montpelier, France, July 1998.

Professional Memberships 

American Chemical Society

American Intellectual Property Law Association (AIPLA)

Association of Corporate Counsel - San Diego Chapter

Athena San Diego

Lawyers Club of San Diego

Kimberly J.

Lastname 

Miller

Suffix 

Ph.D.

Photo 

Position 

Email 

kimberly.miller@knobbe.com

Additional Languages 

Nick name 

PhD

Start Date 

Wednesday, June 1, 2005

Bryan W. Wahl, M.D.

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Attorney User 

Education 

2005
Barbee Fellowship in Law and Medicine; American Jurisprudence Awards in Healthcare Law, Technology & Policy, and International Law; Prosser Awards in Evidence and Professional Responsibility
1999
Alpha Omega Alpha Medical Honor Society, Appleton & Lange Outstanding Medical Student Award, Pacific-Asian Merit Scholarship, E.E. Black Community Service Award

Awards & Honors 

Recipient of the "Innovator Awards" by The Recorder  for his work on KnobbeMedical (2014).

Named one of the Top 20 Under 40 attorneys in California by the Daily Journal (2012).

Named as one of the Top 25 Intellectual Property Portfolio Managers in California by the Daily Journal (2012 and 2013).

Named as one of the Top 100 Intellectual Property attorneys in California by the Daily Journal (2012 and 2013).

Named to the 50 Lawyers on the Fast Track list by The Recorder (2012).

Named as one of twelve Rising Stars by the Minority Corporate Counsel Association(2013).

Named as one of Southern California’s Rising Stars in intellectual property law in a survey of his peers, and featured in both Los Angeles and Super Lawyers magazine (2013- 2015).

Telephone 

949-760-0404

Office Location(s) 

Professional Profile 

Bryan W. Wahl is a partner in our Orange County office. He focuses on intellectual property protection, infringement studies, financings, and strategic transactions especially with respect to medical devices, biotechnology, and pharmaceuticals, and has counseled clients from the pre-Series A stage through exit. Dr. Wahl has represented clients in a variety of technical fields including aesthetic, bariatric, cardiovascular, gynecologic, imaging, neurologic, orthopedic, and pulmonary devices. He has been involved in the intellectual property strategy and acquisitions of clients CoreValve, Inc. (acquired by Medtronic, Inc. for $700 M), OrthoScan, Inc. (acquired by ATON GmbH), Embrella Cardiovascular, Inc. (acquired by Edwards Lifesciences for $43 M), Sapheon, Inc. (acquired by Covidien for $238 M), and Interface Catheter Solutions (acquired by Nitinol Devices & Components). 

Prior to joining the firm, Dr. Wahl entered medical school after one undergraduate year, and received his medical degree with honors from the University of Hawaii John A. Burns School of Medicine in 1999.  He completed an internal medicine residency in the UCLA-affiliated Cedars-Sinai Medical Center program in Los Angeles in 2002, and is board certified in Internal Medicine.  Dr. Wahl earned his law degree from the University of California, Berkeley School of Law (Boalt Hall) in 2005.  In law school, he received three American Jurisprudence Awards, two Prosser Awards, and the Barbee Fellowship, researching conflicts of interest of hospital institutional review boards, and also was a summer extern for the Honorable Ronald T.Y. Moon, Chief Justice of the Hawaii Supreme Court.

Dr. Wahl joined the firm in 2005. In 2012, he was recognized by the Daily Journal as one of the top 20 under 40 attorneys in California. Dr. Wahl was also named by the Daily Journal in both 2012 and 2013 as one of the top 25 Intellectual Property Portfolio Managers in California, as well as one of the top 100 intellectual property attorneys in California. In addition, he was recognized by The Recorder in its 2012 inaugural listing of 50 Lawyers on the Fast Track, as a Rising Star by the Minority Corporate Counsel Association in 2013, and as a Southern California Rising Star in intellectual property law in 2013, 2014, and 2015 surveys of his peers, featured in Los Angeles and Super Lawyers magazine. In 2013, Super Lawyers magazine also highlighted Dr. Wahl in a special supplement entitled "My Lawyer, the Doctor."

In addition to his law practice at the firm, Dr. Wahl also continues to practice inpatient internal medicine as a hospitalist in both Southern California as well as the Bay Area.

Clerk Experience

Summer extern to the Honorable Ronald T.Y. Moon, Chief Justice, Hawaii Supreme Court, 2003.

Cases, Articles, Speeches & Seminars 

Speeches & Seminars

Wahl B.“Enhancing Commercialization and Monetization of Your Intellectual Property,” Doheny Eye Institute Innovation & & Entrepreneurship Ideation to Commercialization CME Conference, Pasadena, CA (March 12, 2016). 

Yee T., Wahl B. "Protecting Trademarks and Patents in China: What You Need to Know," 16th Annual U.S.-China Trade Conference, Chicago, IL (November 5, 2015).

Wahl B., Yee T. "IP Value Creation - Role and Practice of the Entrepreneurial General Counsel," University of California, Irvine - School of Law, Irvine, CA (February 10, 2015).

Wahl B., Yee T. "Intellectual Property Rights in China After a Half Century of Industrialization," Fifteenth Annual U.S.-China Trade Conference, Chicago, IL (November 18, 2014)

Adams R., Yu J., Wahl B., Yee T. “Starts and Exits: The Life Cycles of Life Science Startups,” Private Equity Conference - Financing Innovation and Technology in Healthcare Conference, Chicago, IL (March 14, 2014).

Townes N., Wahl B., Yee T. “Intellectual Property Essentials and Value Creation,” Orange County Bar Association – Business and Corporate Law Section, Irvine, CA (February 26, 2014)

Lee S., Wahl B. Key Issues Facing Medical Device Prosecutors Today, presentation and CLE webinar, Irvine, CA (June 4, 2013). 

Lee S., Wahl B. Key Issues Facing Medical Device Prosecutors Today, Stanford Biodesign-Bay Area In-House Medical Device Association, Stanford, CA (May 23, 2013). 

Wahl B. Protecting Your Medical Inventions, University of Hawaii John A. Burns School of Medicine, Honolulu, HI (May 6, 2013).

Chaput B., Ippolito F., Wahl B., Yee T.  “Protecting and Leveraging your Clients’ IP Rights and New Patent Law Implications,” State Bar of California 85th Annual Meeting, Monterey, CA (October 13, 2012). 

Pai F., Singeo L., Wahl B., Yee T. “Addressing Your Clients’ Intellectual Property Needs in Business Transactions,” State Bar of California 84th Annual Meeting, Long Beach, CA (September 18, 2011).

Singeo L., Tse G., Wahl B., Yee T. “Addressing Your Clients’ Intellectual Property Needs,” State Bar of California Cyber Institute, Irvine, CA (webinar) (January 27, 2011).

Pai F., Singeo L., Wahl B., Yee T. “Addressing Your Clients’ Intellectual Property Needs,” State Bar of California 83rd Annual Meeting, Monterey, CA (September 25, 2010).

Wahl B. “Intellectual Property: Turning an Idea Into a Patent,” Western Angiographic & Interventional Society 38th Annual Meeting, Kapalua, HI (September 25, 2008).

Wahl, B. Atrial Fibrillation. Grand Rounds, Cedars-Sinai Medical Center, Los Angeles, CA, March 4, 2002.

Articles

von Hoffmann, G., Wahl, B. Beginning the Patent Process. Modern Aesthetics (July/August 2014).

von Hoffmann, G., Wahl, B. Evaluating Freedom to Operate. Endovascular Today (June 2014).

von Hoffmann, G., Wahl, B. Beginning the Patent Process. Endovascular Today (May 2014).

Carson JM, Wahl, B. Case comment: code Laboratory Corp. v. Metabolite Labs, Euro. Intel. Prop. Rev. 2007, 29(7), 94.

Lau CY, Wahl, B., Foo WK.  Ring vaccination versus mass vaccination in event of a smallpox attack.  Hawaii Med J, Feb 2005, 64(2), 34-36.

Bryan W.

Lastname 

Wahl

Suffix 

M.D.

Photo 

Position 

Email 

bryan.wahl@knobbe.com

Additional Languages 

Start Date 

Wednesday, June 1, 2005

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

Thomas Y. Yee

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Attorney User 

Education 

1999
Focus in Biomedical Imaging (Computer Science and Electrical Engineering)

Awards & Honors 

In a survey of his peers published in Super Lawyers magazine, Mr. Yee was named as one of Southern California's "Rising Stars" in intellectual property law (2014).

Telephone 

949-760-0404

Office Location(s) 

Professional Profile 

Thomas Y. Yee, a partner in our Orange County office, focuses on optimizing the commercial value of the intellectual property of our clients.  Leveraging his diverse business experiences, Mr. Yee counsels clients on strategic actions for patent portfolio development, intellectual property transactions and licensing, and trademark portfolio procurement. 

The clients that Mr. Yee serves vary from sole inventors and medium-size companies to large multi-national corporations, all in a diverse set of industries, including medical devices, financial services, internet startups, automotive, electronics, software, medical informatics, biotech, warehousing logistics and components, religious institutions, sporting goods, and baby products.  Mr. Yee advises business leaders across the U.S. and around the world, such as in Honolulu and Hong Kong, as well as other parts of China and Europe.

Prior to joining the firm, Mr. Yee was one of the youngest managers in the Internet division of the American Express Company, where he was responsible for a re-engineering initiative of the worldwide website for the company.  Mr. Yee also conducted due diligence for the founders of a New York City based venture capital firm, Silicon Alley Seed Investors, specifically evaluating $1-2 million investments in early stage startups. 

Additionally, Mr. Yee served as a business development manager at a Silicon Alley financial services software company, TradingNews.  At Walker Digital, the Internet incubator that created Priceline.com, Mr. Yee worked on the creation of two startup companies, where he was responsible for managing business development work with the company’s development partner, Bain Consulting in Boston, and for overseeing the technical development work with the company’s software development teams in New York and Atlanta.

Additional Information 

Representative Pro Bono Activity

  • Guardianship Matter: Assisted a maternal aunt in a guardianship matter involving two teenage nieces
  • Marital Dissolution Matter: Investigated a marital dissolution matter as relating to potential fraudulent accounting by an abusive ex-spouse
  • Corporate Law Matter: Handled corporate law entity matter relating to removal of a corporate suspension status
  • Trademark Matter: Developed trademark protection strategy for non-profit organization focused on congenital heart disease in infant children
  • Scholarship: Helped found the OCDTF Scholarship Program for University of California-Irvine Law School students

Cases, Articles, Speeches & Seminars 

Speeches & Seminars

Sganga, J., Yee T., “Trends in U.S. Patent Litigation,” U.S. Patent Litigation Seminar, Tokyo, Japan (February 4, 2016).

Yee T., Sganga, J., “Trends and Advanced Strategies in U.S. Patent Prosecution,” U.S. Patent Prosecution Seminar, Tokyo, Japan (February 3, 2016).

Sganga, J., Yee T., “Trends in U.S. Patent Litigation,” U.S. Patent Litigation Seminar, Osaka, Japan (February 2, 2016).

Yee T., Sganga, J., “Trends and Advanced Strategies in U.S. Patent Prosecution,” U.S. Patent Prosecution Seminar, Osaka, Japan (February 1, 2016).

Yee T., Wahl B. "Protecting Trademarks and Patents in China: What You Need to Know," 16th Annual U.S.-China Trade Conference, Chicago, IL (November 5, 2015). 

Wahl B., Yee T. "IP Value Creation - Role and Practice of the Entrepreneurial General Counsel," University of California, Irvine - Law School, Irvine, CA (February 10, 2015).

Wahl B., Yee T. "Intellectual Property Rights in China After a Half Century of Industrialization," Fifteenth Annual U.S.-China Trade Conference, Chicago, IL (November 18, 2014).

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

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

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

Adams R., Yu J., Wahl B., Yee T. “Starts and Exits: The Life Cycles of Life Science Startups,” Private Equity Conference - Financing Innovation and Technology in Healthcare Conference, Chicago, IL (March 14, 2014).

Townes N., Wahl B., Yee T. “Intellectual Property Essentials and Value Creation,” Orange County Bar Association – Business and Corporate Law Section, Irvine, CA (February 26, 2014)

Chaput B, Ippolito F, Wahl B, Yee T. “Protecting and Leveraging your Clients’ IP Rights and New Patent Law Implications,” State Bar of California 85th Annual Meeting, Monterey, CA (October 13, 2012).

Pai F., Singeo L., Wahl B., Yee T. “Addressing Your Clients’ Intellectual Property Needs in Business Transactions,” State Bar of California 84th Annual Meeting, Long Beach, CA (September 18, 2011).

Singeo L., Tse G., Wahl B., Yee T. “Addressing Your Clients’ Intellectual Property Needs,” State Bar of California Cyber Institute, Irvine, CA (webinar) (January 27, 2011).

Pai F., Singeo L., Wahl B., Yee T. “Addressing Your Clients’ Intellectual Property Needs,” State Bar of California 83rd Annual Meeting, Monterey, CA (September 25, 2010).

Quote 

My time with startups, large corporations, and VC's shapes the counsel and strategies I provide to our clients.
Thomas Y.

Lastname 

Yee

Photo 

Position 

Email 

thomas.yee@knobbe.com

Additional Languages 

Nick name 

Tom

Start Date 

Wednesday, June 1, 2005

John Sganga

$
0
0

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

“Trends in U.S. Patent Litigation,” US Patent Litigation Seminar, Osaka & Tokyo, Japan (February 2 & 4, 2016)

“Trends and Advanced Strategies in U.S. Patent Prosecution,” U.S. Patent Prosecution Seminar, Osaka & Tokyo, Japan (February 1 & 3, 2016)

"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

Ned Israelsen

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0
0

Attorney User 

Education 

1981
Order of the Coif, First Place Northeast Region Giles S. Rich Moot Court, George Washington Law Review

Honors 

high honors top 10%
1978
Phi Kappa Phi, College of Science Outstanding Student, Chemistry Department Outstanding Student, Sigma Xi Research Fellowship, National Merit Scholar, American Academy of Achievement National, Student Leader of the Year (1973)

Honors 

magna cum laude, top 1%

Awards & Honors 

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

  • Listed in The World's Leading Patent Professionals, Intellectual Asset Management (IAM) magazine "IAM Patent 1000" (2014 and 2015).
  • Named a "Pharmaceutical Patent Prosecution Attorney of the Year,"LMG Life Sciences (2013).
  • Selected as a San Diego "Lawyer of the Year,"Best Lawyers (2013).
  • Named a "Life Science Star" by LMG Life Sciences (2013 - 2015). 
  • Named one of SD Metro Magazine’s “Top 25 San Diego Attorneys" (2013).
  • Named as one of the "Top Lawyers in San Diego" by San Diego Magazine (2013).
  • Recognized as a "Top 25 Leading Biotech Lawyers in California" by Daily Journal (2011).
  • Recognized as a "Top 25 California IP Portfolio Managers" by Daily Journal (2011).
  • Selected as a "Top 100 Lawyer in California" by Daily Journal (2010).
  • Selected to the 2009 - 2016 editions of The Best Lawyers in America® for his work in Patent Law.
  • Listed in both Super Lawyers Magazines – San Diego Edition (2011, 2014 - 2016) and Corporate Counsel Edition (2007-2010). 
  • Selected as one of 120 most influential San Diegans by the San Diego Daily Transcript (2006).
  • Named by the Euromoney Legal Media Group as one of the top patent law experts in the Guide to the World’s Leading Patent Law Experts.
  • Selected as one of the San Diego Top Intellectual Property Attorneys by the San Diego Daily Transcript (2005, 2007-2013). 

Telephone 

858-707-4000

Office Location(s) 

Professional Profile 

Ned Israelsen was the managing partner in our San Diego office for over 20 years. His major areas of practice include advising startup companies and established businesses in the biotechnology, pharmaceutical, and medical areas, including worldwide patent protection strategies; avoidance of third party intellectual property; portfolio building; due diligence; intellectual property opinions; and licensing.

His clients include: venture-financed startup companies; newly-public companies; major biopharmaceutical companies; not-for-profit institutions and educational institutions; and governmental research organizations.

Prior to joining the firm, Mr. Israelsen served as a law clerk and technical advisor to the Honorable Jack R. Miller of the Court of Appeals for the Federal Circuit, which has jurisdiction over all patent appeals in the U.S.

Mr. Israelsen joined the firm in 1983 and became a partner in 1985.

Cases, Articles, Speeches & Seminars 

Mayo v. Prometheus, U.S. Supreme Court, SDIPLA Amicus Brief (2011)

“Drafting Patents for Litigation and Licensing,” ABA Section of Intellectual Property Law, BNA Books 2008-2010 (coauthor)

Therasense v. Becton Dickinson– Court of Appeals for the Federal Circuit, Co-author, SDIPLA Amicus Brief (2010)

 “New Patents for Old Drugs:  Label-Based Strategies in the United States,”  Pharma Focus Asia 10-2009

"Whole-Genome Sequencing v. Gene Patents: The Coming Showdown," Intellectual Property Owners Webinar, October 2010

“Gene Patents: What to do After Myriad,” Intellectual Property Owners Webinar, May 2010

“Drug Repositioning Summit: Finding New Routes to Success, New Patents for Existing Drugs,” Cambridge Healthcare Institute 10-2008

“Repositioned Drug Patent Opportunities and the Role of the FDA Label,” Boston IV Meeting 2008

“IP in Biotechnology Startups: Post-Diligence Issues and Strategies,” BIO International Convention 2008

“The Growing Role of IP Diligence in Corporate Formation, Funding, IPOs,” San Diego Daily Transcript, Marcy 27, 2008

KSR v. Teleflex– U.S. Supreme Court, Co-author, SDIPLA Amicus Brief (2007)

Ned Israelsen and Christopher Sweeney, “New Opportunities Beckon for Big Pharma,” www.managingip.com, March 2005.

“Protecting Biotechnology Inventions with Patents: Permissible Subject Matter and Scope of Claims.”

“Comments Of The San Diego Intellectual Property Law Association On Notice Of Proposed Rulemaking By United States Patent And Trademark Office,” (New Rules on Continuation Application Practice) May 1, 2006

“Forget everything you thought you knew about protecting your IP: Pharmaceuticals require an entirely different patent strategy,”  San Diego Daily Transcript, March 29, 2006

Lecturer at Utah State Bar Mid-Winter Institute seminar 2005

“Festo and Biotechnology Patent Prosecution: Consequences for the Practical Patent Practitioner.” 21 Biotechnology Law Report 540, No. 6, December 2002.

“Making, Using, and Selling Without Infringing: An Examination of 35 USC Section 271(e) Ad The Experimental Use Exception to Patent Infringement,” AIPLA Quarterly Journal, Vol. 16, No. 3 & 4, 1988-1989

Professional Memberships 

American Intellectual Property Law Association (AIPLA)

San Diego Intellectual Property Law Association (SDIPLA)

SDIPLA Amicus Committee

San Diego Bar Association

Orange County Bar Association

Federal Circuit Bar Association

American Chemical Society (ACS)

UCSD Connect

Tech Coast Angels (Board Member and Treasurer)

Adjunct Professor of Intellectual Property Law, California Western School of Law (1999-2002)

Adjunct Professor of Patent Law, Loyola Marymount University (1985-1987)

Quote 

I like the challenge of integrating legal, scientific, and business issues to find an optimum IP strategy.
Ned

Lastname 

Israelsen

Photo 

Position 

Email 

ned.israelsen@knobbe.com

Additional Languages 

Start Date 

Monday, June 1, 1981

Kerry S. Taylor, Ph.D.

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0

Attorney User 

Education 

2003
Berkeley Center for Law and Technology Certificate, Prosser Award in International Intellectual Property, American Jurisprudence Award in Biotechnology & Chemical Patent Law
1996
Lucille P. Markey Award, Thesis title "Crystallographic analysis of de novo designed peptides and a thermophilic beta-glucosidase used in protein engineering"
1994
magna cum laude

Awards & Honors 

Named to the San Diego Daily Transcript's 2014 "Top Attorney" list for his IP Transactional work.

Telephone 

858-707-4000

Office Location(s) 

Professional Profile 

Kerry S. Taylor is a partner in our San Diego office.  Dr. Taylor has been practicing since 1998 in areas including Inter Partes Reviews, patent prosecution, strategic planning and counseling relating to infringement and licensing issues, and intellectual property due diligence studies.

Dr. Taylor is very active in our firm’s Inter Partes Review practice.  He has lead our firm’s efforts in Inter Partes Review in the life sciences, biotechnology and chemistry, representing both Patent Owner and Petitioner in these proceedings.  Dr. Taylor also is active in patent prosecution and portfolio strategy development for various clients in the life sciences, pharmaceuticals and polymer chemistry industries.

Dr. Taylor received his doctorate degree in biochemistry and molecular biology from the University of Chicago where he worked in the field of structural biology, using primarily x-ray crystallographic techniques to study protein engineering and design.  He was awarded the Lucille P. Markey award for his work.  After receiving his doctorate degree, Dr. Taylor performed post-doctoral studies at the University of California at Berkeley directed to structural analysis of protein-ligand interactions.

Dr. Taylor joined the firm in 2005 and became a partner in 2010.  Prior to joining the firm, Dr. Taylor worked as an associate at Fish & Richardson PC.  Before law school, Dr. Taylor worked as a patent agent at Campbell & Flores LLP.

Additional Information 

Representative Patents

U.S. Patent No. 6,207,392 “Semiconductor Nanocrystal probes for biological applications and process for making and using such probes”

U.S. Patent No. 6,268,478 “Intracellular vitamin D binding protein”

U.S. Patent No. 6,818,750 “Card proteins involved in cell death regulation”

U.S. Patent No. 6,867,051 “Point of care diagnostic systems”

U.S. Patent No. 7,294,479 “Compositions, kit and one-step method for monitoring compounds having anti-factor Xa and/or anti factor IIa activities”

Cases, Articles, Speeches & Seminars 

Representative Matters

Ariosa Diagnostics, Inc. v. Illumina, Inc., Case IPR2014-01093 (2016). Represented Illumina in an IPR proceeding defending a patent directed to noninvasive prenatal screening methods.  Obtained final written decision upholding the validity of all challenged claims.

Roche Molecular Systems Inc. v. Illumina, Inc., Case IPR2015-01091 (2015). Defended Illumina against a petition for IPR regarding a patent for noninvasive prenatal screening methods.  Obtained decision denying petition and rejecting all challenges raised against Illumina’s claims.

Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., Case IPR2013-00517 (2015). Represented Illumina in an IPR proceeding defending a patent directed to DNA sequencing-by-synthesis.  Obtained final written decision upholding the validity of all challenged claims.

BioGatekeeper, Inc. v. Kyoto University, Case IPR2014-01286 (2015). Represented Kyoto University against a petition for IPR regarding a patent co-invented by Nobel Prize laureate Professor Shinya Yamanaka directed to induced pluripotent stem cells.  Obtained decision denying petition and rejecting the challenge raised against Kyoto University's patent.

Ranbaxy Labs., Ltd. and Ranbaxy, Inc. v. Vertex Pharms., Inc., Case IPR2013-00024 (2013). Represented Ranbaxy in an IPR proceeding challenging a patent relating to fosamprenavir (the active ingredient in Lexiva®).  Achieved favorable case-dispositive settlement for client.

Articles, Speeches & Seminars

Presented on "Aftershocks of the AIA's Post Grant Proceedings: Its Advocates & Critics," at the Thomas Jefferson School of Law Intellectual Property Symposium in San Diego, CA (March 2016).

Presented on "The Evolving World of Biosimilars" at the University of Chicago Alumni Club of San Diego: Biotech Speaker Series (April 2015).

Presented on "Patent Trial and Appeal Board - Multi-Petition Challenges of a Patent" at the University of San Diego School of Law Fifth Annual Patent Law Conference in San Diego, CA (January 2015).

Presented on “Intellectual Property Seminar for Executives and IP Managers" in Tokyo, Japan (November 2013).

Presented on "Strategies for Taking Advantage of the America Invents Act, Resolving the Tension Between Patentable Subject Matter & Joint Infringement" in Tokyo, Japan (October 2012). 

K.S. Taylor, D. Chung, R.M. Garavito, N. Pagratis, D. Demirjian, M. Casadaban, “Preliminary crystallographic studies on a b-galactosidase from Thermus acquaticus” American Crystallographic Association Annual Meeting, 1991.

K.S. Taylor, M.-Z. Lou, T.-M. Chin, N.C. Yang, R.M. Garavito, “Structure of a de novo designed helical peptide” American Crystallographic Association Annual Meeting, 1995.

K.S. Taylor, M.-Z. Lou, T.-M. Chin, N.C. Yang, R.M. Garavito, “A Novel, Multilayer Structure of a Helical Peptide” Protein Science 5:414-421 (1996).

K. S. Taylor, TrafFix Devices, Inc. v. Marketing Displays, Inc., 17 BERKELEY TECH. L.J. 205 (2002).

Eric Furman, Kerry Taylor, "Approaching Intellectual Property Protection for Biotechnology Companies in an Increasingly Competitive Market - The Over-Arching Issues You Need to Know"Aspatore Books (US) 2006.

E.S. Furman and K.S. Taylor, “Approaching IP protection for biotechs in increasingly competitive market.” San Diego Daily Transcript (October 19, 2006).

Quote 

Developing IP strategies aimed at furthering my client’s business goals is my constant focus.
Kerry S.

Lastname 

Taylor

Suffix 

Ph.D.

Photo 

Position 

Email 

kerry.taylor@knobbe.com

Additional Languages 

Language 

Profile Content 

 

ケリー S. テイラー、Ph.D.

法務分野

特許権利化

技術分野

バイオテクノロジー
化学

経歴

サンディエゴ・オフィスのパートナー。当事務所に入所する前は、フィッシュリチャードソン P.C.Fish & Richardson PC)にてアソシエイトとして勤務。ロー・スクール入学前は、キャンベルフロアーズ LLPCampbell & Flores LLP)にて特許弁理士として勤務。

2005 年に当事務所に入所。

学歴

カリフォルニア大学バークレー校ボールトホール法科大学院(2003 年、法務博士号)
バークレーセンター法務・技術分野修了
国際知的財産におけるプロッサー賞
バイオテクノロジーおよび化学特許法における米国法律学賞

シカゴ大学(1996 年、生化学および分子生物学専攻、博士号)
ルシール P. マーキー賞
学位論文表題「Crystallographic analysis of de novo designed peptides and a thermophilic beta-glucosidase used in protein engineering (タンパク質工学で使用される新規創製したペプチドと好熱性β-グルコシダーゼの結晶解析)」
ウィートンカレッジ(化学理学士号) 主席級

担当した米国特許

米国特許第 6,207,392 号「Semiconductor Nanocrystal probes for biological applications and process for making and using such probes(生物学的利用のための半導体ナノ結晶プローブおよびかかるプローブの製造・使用のためのプロセス)」
米国特許第 6,268,478 号「Intracellular vitamin D binding protein(細胞内ビタミン D 結合タンパク質)」
米国特許第 6,818,750 号「Card proteins involved in cell death regulation(細胞死制御に関与する Card タンパク質)」
米国特許第 6,867,051 号「Point of care diagnostic systems(ポイントオブケア診断システム)」
米国特許第 7,294,479 号「Compositions, kit and one-step method for monitoring compounds having anti-factor Xa and/or anti factor IIa activities(抗 Xa 因子および/または抗 IIa 因子活性を持つ化合物をモニターするための組成、キットおよび一段階法)」

登録/資格

カリフォルニア州弁護士会State Bar of California
米国特許商標局において特許弁護士登録

論文

K.S. TaylorD. ChungR.M. GaravitoN. PagratisD. DemirjianM. Casadaban、「Preliminary crystallographic studies on a b-galactosidase from Thermus acquaticus」、米国結晶学会年次会議、1991 年。

K.S. TaylorM.-Z. LouT.-M. ChinN.C. YangR.M. Garavito、「Structure of a de novo designed helical peptide」、米国結晶学会年次会議、1995

K.S. TaylorM.-Z. LouT.-M. ChinN.C. YangR.M. Garavito、「A Novel, Multilayer Structure of a Helical Peptide」、Protein Science 5:414-4211996年)

K.S.Taylor、「TrafFix Devices, Inc. v.Marketing Displays, Inc.17 BERKELEY TECH.L.J. 2052002年)

Eric FurmanKerry Taylor、「Approaching Intellectual Property Protection for Biotechnology Companies in an Increasingly Competitive Market - The Over-Arching Issues You Need to Know」、Aspatore Books(米国)2006

E.S. Furman および K.S. Taylor、「Approaching IP protection for biotechs in increasingly competitive market.」、San Diego Daily Transcript20061019日)

 

Nick name 

PhD

Start Date 

Sunday, June 1, 2003

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

"Trademark Licensing: Social Media and Quality Control,"New York Law Journal, April 2016

"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

Trademark Licensing: Social Media and Quality Control | New York Law Journal

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Trademark licensors are scrambling to keep up with the evolving use of social media as a tool for business advertising. As technology changes, so must the provisions in a trademark license.

A fundamental tenet of trademark law is that the trademark owner must control the use of her mark. This is fairly simple when the trademark owner sets up her own shop and does her own advertising.

Quality control can become more challenging when the owner licenses others to manufacture goods or offer services using her mark. In those situations the owner must have a licensing agreement which contains quality control provisions and the right to terminate the agreement if the licensee does not comply with those provisions.

If there is no quality control, it is called a "naked license." As intriguing as this concept sounds, it might be more appropriate to call it a "kiss of death license." A licensor could lose all of her rights in a trademark if she has not controlled her licensee's use of her trademark. This means that anyone, including her licensee, can use the mark freely without paying royalties to the former trademark owner. Brrrrrr. No licensor wants to be on that particular nude beach.

An equally serious problem is that a licensee's unsupervised use of a mark in advertising may damage the goodwill and reputation of the trademark owner's brand. If the licensor does not exercise control over advertising, she may find that a thoughtless or disgruntled licensee has published content that is inconsistent with the image the trademark owner wishes to convey or, worse, tarnishes the brand. A licensee may also post content that inadvertently infringes the trademark rights or the rights of publicity of others, thereby exposing the trademark owner to litigation and potential damages.

To prevent these problems, most license agreements provide that the trademark owner must pre-approve all advertising incorporating the mark. The licensee must submit all proposed advertising to the licensor, who has a period of time to approve it, typically 10 or 15 days. This system works well for print, radio and television advertising

Today, the use of social media by businesses to advertise their goods and services has made a 10-day window unworkable. Licensees want and need to have the ability to communicate with their customers using the media preferred by those customers. Five years ago, having a website was a necessity. Today most licensees want to promote their business using Facebook, Twitter and Instagram. The backbone of those systems is that they operate in the "now," not the "10-days-from-now."

This evolution in the way businesses advertise their goods and services has led to an evolution in the way licensors implement quality control over their licensees. It is unlikely that most licensors are available 24/7 to instantly approve all requests by a licensee before the licensee posts or tweets something in social media. Licensors are struggling to accommodate this new reality. The challenge is to devise a system that allows licensees to engage in day-to-day interaction with others via social media, and gives the licensor the ability to control the goodwill and quality of her brand.

One solution is to dramatically shorten the pre-approval window for social media advertising. A licensor may require a licensee to submit any potential posts or tweets to the licensor. If no rejection is received by the licensor within 24 hours, the licensee may post the content. If licensees find this system unworkable, another solution is to eliminate the need for pre-approval in certain situations. The licensor may agree that the licensee can use Twitter and Facebook to advertise the licensed services without obtaining prior approval of the licensor. In either of these scenarios, the licensor would reserve the right to delete tweets and delete or amend posts at any time.

The reality is that by the time the licensor becomes aware of an unsuitable use of her mark, the tweet or post may have been read, forwarded, retweeted or saved by thousands of people. There is no practical way to avoid this. One way to deal with the problem, however, is to also have a provision in the agreement that the licensee will be in material breach and liable for damages if the licensor has to rectify a licensee's social media activity more than three times in a given time period. Provisions like this should provide some incentive for a licensee to be mindful when it uses the trademark in social media.

A licensor should regularly review the Internet and her licensee's social media sites, so that she can shut down a problem as soon as possible. She should enroll her mark in a service like Google Alerts that will notify her when her mark appears on the Internet.

One of the benefits of social media is that it allows the licensor the opportunity to conduct due diligence before signing up a licensee. The licensor should review the social media accounts of every potential licensee. This will give the licensor the opportunity to evaluate the licensee's past use of social media, and the advisability of allowing the licensee to use the licensor's trademarks without prior approval.

Licensors and licensees can use a combination of the above methods to address the goals of utilizing social media to maximize sales and allowing the licensor the necessary control to maintain the good will and value of her trademark. As social media continues to evolve, licensors will need to continue to find creative solutions to maintain quality control over the use of their marks by licensees.

Reprinted with permission from the April 4, 2016 edition of the New York Law Journal© 2016 ALM Media Properties, LLC. All rights reserved.

Further duplication without permission is prohibited. ALMReprints.com– 877-257-3382 - reprints@alm.com.

Associated Industry Group 

Type

Publications
Monday, April 4, 2016

Shorter Headline Homepage

Trademark Licensing: Social Media and Quality Control

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Diane M. Reed

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Attorney User 

Awards & Honors 

Recent recognition includes:

World Trademark Review: Recognized as a Leading Trademark Lawyer from 2013 to 2016, she was acknowledged for her remarkable flair in constructing multifaceted licensing agreements and developing robust, resilient trademark portfolios. She spends much of her time negotiating manufacturing and distribution agreements for brand owners and was commended for her "procurement of watertight worldwide protection." 

American Lawyer Media: Recognized as a Top Rated lawyer in Intellectual Property Law for 2013.  

Telephone 

949-760-0404

Office Location(s) 

Professional Profile 

Diane M. Reed is a partner in our Orange County office. Ms. Reed focuses her practice on licensing, distribution, development, manufacturing agreements, domestic and international trademark and copyright counseling and enforcement, worldwide trademark portfolio development and management, and on due diligence investigations.

Diane works with clients in numerous industries, including food & beverage, consumer product, software, medical device, professional services, clothing and entertainment industries. Representative clients include Monster Energy, Toshiba America Information Systems, Partners In Leadership, Hunter Industries, and Western Digital.

Extern Experience

Extern for Justice Sheila Prell Sonenshine, California Court of Appeals, 1990

Practice Areas (raw) 

Legal Areas of Emphasis

Trademarks and Domain Names

Intellectual Property Licensing

Copyrights

Trademark and Copyright Due Diligence

Trademark Oppositions and Cancellations

International Trademark and Copyright Matters

Cases, Articles, Speeches & Seminars 

Articles

TTAB finds confusion between Winebud wine and Bud beer, World Trademark Review (Novembe 2015)

Rights in Bob Marley's name and likeness trump free speech where defence not properly pleaded, World Trademark Review (May 2015)

Winery Fails to Prove That Wines and Apple Juices Are Related Goods, World Trademark Review (March 2015)

Consumers will not confuse ZOMBIE CINDERELLA with WALT DISNEY'S CINDERELLA, World Trademark Review (January 2015)

Target prevents registration of mark with three-ring design, World Trademark Review (August 2014)

The importance of registering trademarks: junior user obtains broader rights than senior user, World Trademark Review (June 2014)

Speeches & Seminars

"All You Can Eat: IP Rights in the Food and Restaurant Industries," American Bar Association Section of Intellectual Property Law - 31st Annual Intellectual Property Law Association (April 2016)

"War Games: Recent IP Litigation," Association of Corporate Counsel (ACC) - Southern California DoubleHeader (November 2015)

Avoiding Trade Secret Misappropriation, False Advertising & Unfair Competition Claims, Association of Corporate Counsel (ACC) - Southern California In-House Counsel Conference (January 2013) 

Hiring Competitor’s Top Talent & Being Fiercely Competitive Without Exposing Your Company, Association of Corporate Counsel (ACC) - Southern California In-House Counsel Conference (January 2013) 

Quote 

I strive to help my clients build their business over the long-term.

Bar Admissions 

Diane M.

Lastname 

Reed

Photo 

Position 

Email 

diane.reed@knobbe.com

Additional Languages 

Start Date 

Friday, June 1, 1990

Zach Jun Hyuk Hong

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Attorney User 

Telephone 

949-760-0404

Office Location(s) 

Professional Profile 

Zach Jun Hyuk Hong is an associate in our Orange County office.  He specializes in intellectual property law, with an emphasis on U.S. and foreign patent prosecution and patent portfolio management in the chemical, medical device, healthcare IT, and software fields.

Mr. Hong worked as a summer associate with the firm in the summer of 2010 and first joined the firm in 2011.

Additional Information 

Language Proficiency

Fluent in Korean

Bar Admissions 

Zach Jun Hyuk

Lastname 

Hong

Photo 

Position 

Email 

zach.hong@knobbe.com

Additional Languages 

Nick name 

Zach

Start Date 

Wednesday, June 1, 2011

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:

  • Named a "Top Attorney in Orange County" by Orange Coast Magazine for her professional achievement in 2016
  • 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

Victoria’s Secret Stores Brand Management, Inc. v. Urban Decay Cosmetics, 2:12-cv-00693-GLF-MRA (S.D. Ohio)

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 (C.D. Cal) 

Represented Plaintiff, Broadcom Corporation, in trademark infringement suit. Case settled favorably for client.

Illumina, Inc. v. Meridian Bioscience, Inc. (TTAB)

Represented Illumina in oppositions and cancellation actions against Meridian Bioscience's registrations and applications for the marks ILLUMIGENE and ILLUMIPRO. Received complete victory after full trial briefing and trial decision on the merits by the Trademark Trial and Appeal Board.

Illumina, Inc. v. Boston Scientific Neuromodulation Corporation (TTAB)

Represented Illumina in opposition proceeding relating to Boston Scientific's application for the mark ILLUMINA 3D. Case settled favorably for client. 

My Horse Player, Inc. (TTAB)

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.

Hurley International LLC v. Volta (TTAB).

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. Listed by Allen’s Trademark Digest as one of the top ten trademark cases before the TTAB that year.

Jose Remacle (TTAB)

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.

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

Christopher M. DiLeo

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Attorney User 

Education 

1999
with concentration on Public Policy

Telephone 

858-707-4000

Office Location(s) 

Professional Profile 

Christopher M. DiLeo is an associate in our San Diego office. His practice focuses on acquiring, monetizing, and enforcing IP rights. His primary emphasis is protection strategies for computer, software, and network systems. He also advises clients on data privacy and terms of use. Mr. DiLeo's clients span a variety of industries including education, telecommunications, pharmaceuticals, clinical research tools, gaming and game development, product designs, biomedical devices, and artificial intelligence systems. 

Prior to joining the firm, Mr. DiLeo worked as an IT consultant and software engineer for 10 years.  As a technical lead, manager, and individual contributor, Mr. DiLeo gained experience working with diverse clients ranging from Fortune 500 companies to venture funded start-ups.  While attending University of San Diego School of Law, Mr. DiLeo served as the Chief Executive Editor of the San Diego International Law Journal.

Mr. DiLeo worked as a summer associate with the firm in 2009 and joined the firm in 2010.

Cases, Articles, Speeches & Seminars 

Ron Schoenbaum & Christopher M. DiLeo, Medical Privacy – An Overview, Knobbe Martens Olson & Bear LLP, Mar. 29, 2016.

Christopher M. DiLeo, Preserving Patent Term in View of Pfizer v. Lee, Knobbe Martens Olson & Bear LLP, Feb. 19 and 26, 2016.

Christopher M. DiLeo, Invited Speaker, Intellectual Property Workshop, FAB Authority/Fashion Week SD, July 16, 2015. 

Christopher M. DiLeo, Guest Lecturer, Computer and Software Law, UCSD Extension, Mar. 10, 2015. 

Christopher M. DiLeo, Globalization and Direct Infringement, Knobbe Martens Olson & Bear LLP, Dec. 5 and 12, 2014.

Christopher M. DiLeo, How Much is Enough? Patent Pleading Sufficiency under Form 18, Knobbe Martens Olson & Bear LLP, May 24 and 31, 2013.

Christopher M. DiLeo, Making Sense of Therasense, Knobbe Martens Olson & Bear LLP, Mar. 2 and 9, 2012.

Kerry S. Taylor & Christopher M. DiLeo, A Closer Look at the America Invents Act, IP Professionals Connection, Dec. 8, 2011.

Christopher M. DiLeo, Case Reviews: Classen Immunotherapies, Inc. v. Biogen IDEC, No. 2006-1634,-1649 (Fed. Cir. Aug. 31, 2011) and Board of Trustees, Stanford Univ. v. Roche Molecular Sys., Inc., No. 09-1159 (U.S. June 6, 2011), Knobbe Martens Olson & Bear LLP, Sept. 30 and Oct. 7, 2011.

Kathleen R. Mekjian & Christopher M. DiLeo, Crowdsourcing and Patent Reform – Steps Toward a Participatory Examination Process, Int’l Bar Ass’n Convergence (Sept. 2011).

John M. Carson & Christopher M. DiLeo, Funai Electric Co. v Daewoo Electronics Corp., 2011 E.I.P.R. 126 (2011).

Paul A. Stewart, Christopher M. DiLeo, and Wendy K. Peterson, Are You Engaging in the Unauthorized Practice of Law in Other States?, Orange County Bar Ass'n (Feb. 2011).

Christopher M. DiLeo, Case Reviews: Visa Int’l Service Ass’n v. JSL Corp., 95 U.S.P.Q.2d 1571 (9th Cir 2010) and Shell Co. (Puerto Rico) Ltd. v. Los Frailes Service Station Inc., 95 U.S.P.Q.2d 1539 (1st Cir 2010), Knobbe Martens Olson & Bear LLP, Dec. 10 and 17, 2010.

Christopher DiLeo, Comment, Bazaar Transnational Drafting: An Analysis of the GNU General Public License Version Three Revision Process, 10 San Diego Int’l L.J. 193 (2008).

Christopher DiLeo& John Rieffel, Evolving Optimal Histogram Parameters for Object Recognition, 3837 Proc. Int’l Soc’y for Optical Engineering 194 (1999).

Professional Memberships 

American Bar Association

La Jolla Bar Association

Phi Delta Phi Legal Fraternity

San Diego Bar Association, Client Relations Committee

Quote 

I enjoy my role as a biographer of my client's ideas.
Christopher M.

Lastname 

DiLeo

Photo 

Position 

Email 

Christopher.DiLeo@knobbe.com

Additional Languages 

Start Date 

Tuesday, June 1, 2010

Ed Schlatter

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Attorney User 

Education 

1982
Phi Kappa Phi Honorary Society, Alpha Pi Mu Honorary Society, Phi Eta Sigma Honorary Society

Honors 

Graduated with highest honors

Awards & Honors 

Mr. Schlatter has received multiple awards for his legal accomplishments: 

  • Recognized by American Lawyer Media as a Top Rated Lawyer in Intellectual Property Law (2013)
  • Named as one of “O.C.’s Top Lawyers” by OC Metro magazine in the both the category of Intellectual Property Law and the category of Patent Applications (2009, 2012 - 2015)
  • Named as one of Southern California’s Super Lawyers in intellectual property law in a survey of his peers published in the Los Angeles magazine and Super Lawyers magazine
  • Consistently recognized by Martindale-Hubbell as an AV Preeminent Rated lawyer

Telephone 

949-760-0404

Office Location(s) 

Professional Profile 

Edward A. Schlatter is a partner in the Orange County office of Knobbe Martens, where his practice focuses on developing and executing worldwide patent and trademark protection strategies for a wide array of clients. Mr. Schlatter has been practicing for nearly 30 years and is the chair of the firm’s mechanical engineering practice group.  In addition to securing patent protection and managing the patent portfolios of his clients, a substantial portion of Mr. Schlatter’s practice is focused on clearance matters, pre-litigation patent and trademark assertion and defense, licensing and strategic counseling regarding on-going litigation. Mr. Schlatter also has extensive experience in Inter Partes and Ex Parte Patent Reexamination proceedings and Trademark Opposition and Cancellation proceedings and has represented clients in a number of Inter Partes Review proceedings.

Mr. Schlatter currently represents clients in diverse technologies, including automotive products, bicycles, golf equipment, oil drilling and intervention equipment, Internet applications and medical devices. Mr. Schlatter also represents clients in connection with a wide array of consumer, industrial equipment and building products. Mr. Schlatter also has an extensive trademark practice, representing companies in connection with a variety of goods and services, including restaurants, medical devices, consumer products and internet services.

Mr. Schlatter joined the firm in 1985 and became a partner in 1989.

Cases, Articles, Speeches & Seminars 

Speeches & Seminars

"Do You Have a Design Worth a Billion Dollars? Design Patents: A Valuable Asset and a Powerful Enforcement Tool", Panelist, OCTANe, Irvine, CA (April 22, 2014).

Articles

Schlatter, Edward A. "The Administration of Justice Committee", Orange County Lawyer Magazine published by the Orange County Bar Association (October 2012)

Professional Memberships 

Conference of California Bar Associations

  • Board and Officer Positions (2003 - Present)
  • Chair (2008)

Orange County Bar Association

  • Member, Board of Directors
  • Member, Appointments Committee (2015 - Present)
  • Co-Chair of the Administration of Justice Committee  (2009-2013)

Orange County Bar Foundation

  • Member, Executive Committee (2013 - Present)
  • Member, Board of Directors (2011 - Present)

SchoolPower: Laguna Beach Educational Foundation

  • Member, Board of Trustees (2011 - 2015)

State Bar of California

  • Co-Editor of New Matter, the official publication of the State Bar of California Intellectual Property Section (1993-1994)

Orange County Barristers

  • Board of Directors (1991-1992)
  • Secretary (1993)

Orange County Bar Association Delegation to the California State Bar 

  • Chair (2002)

Orange County Patent Law Association

Life Science Industry Council of Orange County

  • Board Member

Quote 

My greatest satisfaction is working with passionate people and protecting their innovation.
Ed

Lastname 

Schlatter

Photo 

Position 

Email 

ed.schlatter@knobbe.com

Nick name 

Edward

Start Date 

Saturday, June 1, 1985

Jon Gurka

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Attorney User 

Education 

1996
Best overall Frederick Green Moot Court Competition, Recipient of Rickert Award for excellence in Oral Advocacy, Member of the National Moot Court Team and Moot Court Bench

Honors 

magna cum laude
1989
Eta Kappa Nu - Electrical Engineering Honorary Society

Awards & Honors 

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

  • Recognized by the Daily Journal as one of the Top 75 Intellectual Property Litigators in California in 2015.
  • Recognized by The Legal 500 for Patent Litigation in 2014 and 2015. In 2015, he was also highly recommended for having extensive experience in trade dress, unfair competition and contract breach matters.
  • Recognized for his outstanding intellectual property legal work in the 2013, 2014 and 2015 Managing Intellectual Property magazine "IP Stars" Guides.
  • Recognized as one of the leading patent litigators in Intellectual Asset Management (IAM) magazine's "IAM Patent 1000" guide of the The World’s Leading Patent Professionals (2012 - 2015), a guide that identifies the top patent practitioners and firms in 41 jurisdictions around the globe.
  • Named as one of Southern California’s “Rising Stars” in intellectual property litigation in a survey of his peers, published in Los Angeles magazine and Super Lawyers magazine, in 2006 and 2007.
  • Named in OC Metro magazine. In its August 2009 issue, Mr. Gurka was named as one of “O.C.’s Top Lawyers” in the category of Intellectual Property Law and Copyright Infringement. In 2010 and 2011, he was again recognized as a top lawyer in the area of Copyright Infringement.  In 2014 and 2015, he was named a top lawyer in the category of Intellectual Property.

Telephone 

949-760-0404

Office Location(s) 

Professional Profile 

Jon W. Gurka is a partner in our Orange County office. 

Mr. Gurka has a broad intellectual property litigation practice, having handled cases involving patent, trademark, trade dress, copyright, trade secret, unfair competition and breach of contract matters. His current practice primarily involves handling complex patent litigation cases. 

He has worked on a diverse range of matters involving semiconductor processing and manufacturing, computer hardware and software systems, microprocessor control systems, electro-mechanical control systems, complex digital signal processing techniques, computer numerical control machines and systems, telecommunications, medical devices and surgical procedures, and thermodynamic systems and processes.

Mr. Gurka has significant trial experience, including serving as lead counsel on behalf of Inventio AG and Schindler Elevator Corporation against Otis Elevator Co. involving Schindler’s patented Schindler ID® elevator system. 

In 2014, he served as trial counsel for Masimo Corporation in a three-week jury trial against Philips Electronics North America Corp. and Philips Medizin Systeme Böblingen GmbH.  Masimo obtained a $466 million verdict based on infringement of its patents covering pulse oximetry technology.  The verdict was featured in The National Law Journal's "Top Verdicts of 2014" as the top intellectual property verdict and number 5 verdict overall, and was also listed as the "Top IP Award of 2014" by Law360.  Mr. Gurka had a primary role at trial of handling the defense against Philips’ counterclaim patent for which Philips sought $169 million in damages.  The jury rejected Philips’ infringement case on all theories and awarded zero damages.

In 2015, the Daily Journal recognized Mr. Gurka as one of the Top 75 Intellectual Property Litigators in California.

Previously, Mr. Gurka served as trial counsel for Masimo in a five-week jury trial against a division of Tyco Healthcare. Masimo obtained a $134.5 million verdict based on infringement of its pulse oximetry patents. After post-trial motions, the court increased the award to $164 million. The damages verdict was upheld on appeal and the case ultimately settled. 

Mr. Gurka also served as trial counsel on behalf of Advanced Thermal Sciences, a subsidiary of B/E Aerospace, against Applied Materials, Inc. After a two-week bench trial, the court issued a ruling finding in favor of Advanced Thermal on all substantive issues.

Before joining the firm, Mr. Gurka worked as a Senior Information Management Consultant with Andersen Consulting, now Accenture, working in software application development.

Cases, Articles, Speeches & Seminars 

Representative Matters/Clients

Plaintiff Cases

Masimo Corp. v. Shenzhen Mindray Bio-Medical Tech. Co. Ltd. and Mindray DS USA: Currently representing Masimo in patent litigation in California involving numerous patents on pulse oximetry technology.

Select Comfort Corp. v. Gentherm, Inc.: Currently representing Gentherm in patent litigation in Minnesota involving patents directed to climate controlled beds.

Masimo Corp. v. Philips Electronics North America Corp et al.: Represented Masimo in a three-week jury trial involving multiple patents on pulse oximeter medical devices.  Obtained a $466 million verdict based on infringement of Masimo’s patents covering Masimo’s pioneering read-through-motion pulse oximetry technology.  The verdict is the largest IP verdict of 2014 through October.  Mr. Gurka had a primary role at trial of handling the defense against Philips’ counterclaim patent for which Philips sought $169 million in damages.  The jury rejected Philips’ infringement case on all theories and awarded zero damages.

Schindler Elevator Corp. and Inventio AG v. Otis Elevator Co.: Lead trial counsel for Schindler and Inventio involving Schindler’s patented Schindler ID® elevator system.  After a two-week jury trial, the jury answered all 33 questions in Schindler’s favor.  Previously represented Schindler in a successful appeal overturning an erroneous claim construction and obtained reversal of noninfringement ruling. See 593 F.3d 1275 (Fed. Cir. 2010).  After remand, successfully defeated Otis’ renewed motion for summary judgment of noninfringement, along with all other related motions. See 2010 U.S. Dist. LEXIS 110313 (S.D.N.Y. Oct. 6, 2010).  On second appeal, Federal Circuit invalidated the patent for obviousness. No. 2011-1615 (Fed. Cir. 2012).

Advanced Thermal Sciences v. Applied Materials, Inc.: Trial counsel for plaintiff in two-week bench trial involving thermal heating and cooling of semiconductor equipment. Court ruled in favor of Advanced Thermal on all substantive issues. See 2010 WL 2015236 (C.D.Cal.)

Toshiba Corp. and Toshiba America Information Systems: Represented Toshiba in patent litigation in various jurisdictions, including an action before the U.S.I.T.C. against Wistron Corp. Recently obtained a consent summary judgment after favorable claim construction against a patent troll. See 2009 WL 2243126 (E.D. Tex. 2009).

Fisher & Paykel Appliances v. LG Electronics: Represented Fisher & Paykel in patent infringement suit in N.D. Illinois involving direct drive washing machines.

Kruse Technology Partnership v. General Motors, Isuzu, and Caterpillar: Represented plaintiff in patent litigation in C.D. California over diesel engine combustion technology.

Broadcom Corp. v. BroadVoice, Inc.: Represented Broadcom in trademark infringement suit and obtained settlement through litigation.

Mallinckrodt, Inc. v. Masimo Corp: Represented Masimo in a five and a half week jury trial involving multiple patents on pulse oximeter medical devices and obtained a $164 million damage award. Claim construction ruling at 254 F. Supp. 2d 1140; summary judgment rulings at 292 F. Supp. 2d 1201 (C.D. Cal. 2003); 300 F. Supp. 2d 923 (C.D. Cal. 2004).

Defense Cases

Flexera Software LLC: Currently representing Flexera in various intellectual property matters regarding their product lines, including advising Flexera on matters involving non-practicing entities asserting patents against Flexera customers.

SoftVault Systems, Inc. v. Dassault Systemes Solidworks, Corp.: Currently representing Dassault in patent litigation in the Northern District of California involving patents directed to computer systems.

Bascom Research LLC v. BroadVision, Inc.: Lead counsel for BroadVision in patent litigation suit involving multiple patents asserted against BroadVision’s ClearVale enterprise social networking suite.

Digitech Image Technologies, LLC v. General Imaging Company: Lead counsel for General Imaging in patent litigation suit involving a digital image processing system patent.

Credit Management Services v. Fisher & Paykel Financial Services, CDR arbitration proceeding filed in San Francisco: Represented Fisher & Paykel in challenging the jurisdiction of the arbitration panel and obtained a dismissal with prejudice of the entire arbitration.

Samsung Electronics/Samsung Telecommunications: Represented Samsung entities in patent litigation in Nevada (satellite receivers) and W.D. Texas (cell phones).

St. Clair Intellectual Property Consultants v. General Imaging Co.: Represented General Imaging in patent litigation in Delaware involving digital camera technology.

Articles, Speeches & Seminars

Annual supplement to Chapter 186, "Court of Appeals for the Federal Circuit" in 8 West's Federal Forms - National Courts (West Pub. 1995), contributor

Speaker 2004 LSI Conference in Seattle: Calculating & Proving Patent Damages

Professional Memberships 

American Bar Association - Intellectual Property Law Section

Co-Chair, Federal Trial Practice and Procedure Committee 601 (2004-06)

Ad Hoc Subcommittee on Jurisdiction of Federal Circuit for Immigration Appeals (2006)

ABA/IPL Task Force: Study of National Academies of Sciences Patent Reform Recommendations (2005)

ABA/IPL Patent Reform Task Force (2005)

Intellectual Property Owners Association (IPO)

American Intellectual Property Law Association (AIPLA)

Federal Circuit Bar Association

Federal Bar Association, Orange County Chapter

Board of Directors, 1999-2004

Quote 

Each case requires a unique legal strategy shaped to accomplish the client’s business goals.
Jon

Lastname 

Gurka

Photo 

Position 

Email 

jon.gurka@knobbe.com

Start Date 

Saturday, June 1, 1996

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 

Mr. Van Hoosear was named a 2016 "World IP Leader" by World Intellectual Property Review (WIPR).

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

Start Date 

Sunday, June 1, 1986

Corporate-Sponsored Research Agreements With Universities | The Intellectual Property Strategist

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Corporate-sponsored research plays a crucial role in performing foundational research in new technology areas. These research projects are also mutually beneficial. Corporate sponsors (Sponsors) receive a cost-effective opportunity to explore new technology areas with leading academics and talented students. In turn, universities benefit from Sponsors providing research funding and industry expertise. Read more below.

Associated Practice Area 

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Publications
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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

Panelist, "How Applicants Can File and Prosecute a Quality Application," USPTO Patent Community Symposium - Midwest, Detroit, MI (April 2016)

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

Start Date 

Thursday, June 1, 1978

Lynda Zadra-Symes

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Attorney User 

Education 

1988
Annual Sweet & Maxwell award for highest results 1985-1988
1989
Inns of Court Studentship Award, Duke of Edinburgh Award

Awards & Honors 

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

  • Recognized among the world's leading practitioners of patent law in Who's Who Legal's 2016 edition of the international "Who's Who Legal: Patents" list 
  • Recognized in the World Trademark Review (WTR) 1000 as a Leading Trademark Lawyer from 2012 to 2016
  • Recognized in the 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 Law Business Research's "Who's Who Legal 100" (2015)
  • Recognized in Lawyer Monthly Magazine's "2015 Women in Law Awards" for her outstanding achievements in the legal profession.
  • Shortlisted for two individual practice area awards, “Best in Copyright” and “Best in Trademark,” for Euromoney Legal Media Group’s (LMG) 2015 “Americas Women in Business Law Awards”
  • Named as one of the World’s Leading Trademark Law Practitioners in Legal Media Group's  "Women in Business Law" guide (2010 - 2015)
  • Named as one of the world’s leading trademark practitioners in the Law Business Research "Who's Who Legal: Trademarks" list, based on a survey of her peers (2006, 2007, and consecutively from 2009 – 2015)
  • Nominated by in-house counsel and her peers around the world to appear in Euromoney Legal Media Group's Guide to the World's Leading Trademark Law Practitioners (2006, 2007, 2012, and 2014)
  • Named as a Top Women Attorney in Southern California by Super Lawyers (2012 and 2013)
  • Selected by Super Lawyers magazine for intellectual property litigation (2004, and consecutively from 2008 - 2013)
  • Nominated as one of the World’s Leading Patent Practitioners by Who’s Who Legal, based on a survey of her peers (2011 and 2012)
  • Nominated for the Orange County Business Journal Women In Business Awards (2006 and 2007)

Telephone 

949-760-0404

Office Location(s) 

Professional Profile 

Lynda Zadra-Symes is a litigation partner in the firm's Orange County Office.  She represents clients through all stages of U.S. litigation, from pre-suits through trial and appeal, in federal courts throughout the country and before the Trademark Trial and Appeal Board.  Her practice involves all types of intellectual property, including patents, trade secrets, trademarks, copyrights, false advertising, unfair competition, rights of publicity franchising and labeling. She also advises on issues relating to customs and anti-counterfeiting, international trademarks and copyrights, advertising, social media, competition and passing off.

Ms. Zadra-Symes is a Domain Name Dispute Panelist arbitrator for the World Intellectual Property Organization (“WIPO”) in Geneva, Switzerland, and has arbitrated numerous domain name disputes.  She is a former Co-Chair of the International Bar Association (“IBA”) committee for Intellectual Property and Entertainment Law, and has conducted numerous presentations on a variety of intellectual property matters internationally. Ms. Zadra-Symes is also a listed Mediator with the International Trademark Association’s (INTA) Trademark Mediators Network.

Ms. Zadra-Symes was called to the Bar of England and Wales as a barrister in November 1989.  She is a member of the Honourable Society of the Inner Temple (Inn of Court) and undertook her barrister training at One Essex Court, London with a barrister specializing in intellectual property law.  Ms. Zadra-Symes was admitted to the California Bar in 1991. 

Prior to commencing her legal studies, Ms. Zadra-Symes worked for three years at the World Intellectual Property Organization ("WIPO") in Geneva, Switzerland.

Ms. Zadra-Symes joined the firm in 1990 and became a partner in 1996.

Cases, Articles, Speeches & Seminars 

Representative Litigation Matters
Articles
Speeches

Representative Litigation Matters

Ms. Zadra-Symes acted for parties involved in the following cases, amongst others:

Monster Energy Co. v. Monster Escorts LLC (M.D. Ga. 2015). Represented Monster Energy Company in trademark and copyright infringement action against vehicle escort company. Obtained consent judgment of infringement and permanent injunction.

Lizalde, et al. v. Advanced Planning Services, Inc., First Allied Securities, Inc., et al., (2013). Represented one of defendants in copyright infringement action filed in the US District Court for the Southern District of California. Obtained favorable settlement for client.

Andrew Zuckerman v. Lenny USA et al., 2:12-cv-03249, C.D.Cal. (2013). Represented defendant in copyright infringement case filed in US District Court for Central District of California. Obtained favorable settlement for defendant.

Sweet People (dba Miss Me) v. ITC Girl Inc. (2013). Represented defendant in copyright and trademark infringement action filed in US District Court for the Central District of California. Obtained favorable settlement for client.

James R. Glidewell Dental Ceramics, Inc., Dba Glidewell Laboratories V. Keating Dental Arts, Inc., WL 655314 (CD Cal. 2013)Represented defendant Keating Dental Arts Inc. in a trademark dispute brought by Glidewell Laboratories. Glidewell claimed that Keating Dental’s trademark KDZ BRUXER for dental crowns infringed Glidewell’s registered trademark BRUXZIR for dental crowns. The court held that “bruxing” is a common dental term, that Glidewell’s BRUXZIR mark is a weak mark, and that there was no likelihood of confusion between Keating's KDZ BRUXER trademark and Glidewell’s BRUXZIR trademark.

Monster Energy Company v. HRHH Hotel/Casino, LLCet al., 2014 WL 293773 (CD Cal. 2013)Represented Monster Energy in an arbitration against HHHH Hotel/Casino. Monster Energy prevailed on its claims for breach of contract and obtained all of its requested declaratory relief, including a declaration that Monster Energy acquired by assignment and is the owner of all rights in the mark REHAB worldwide for all beverages, and that Hard Rock is precluded from using the REHAB trademark for beverages. Monster Energy also prevailed on its claim for damages and attorneys’ fees and costs.

Sweet People Apparel Inc., dba Miss Me, and RCRV, Inc. dba Rock Revival v. Machine Jeans Inc. and The Wet Seal Inc. (2012). Represented defendants in copyright action filed in US District Court for Central District of California. Obtained favorable settlement for client.

PBEV, LLC v. Hansen Beverage Company d/b/a Monster Beverage Company, Case No. 7:10-cv-3526 (N.D. Ala. 2011). Represented energy drink manufacturer in trademark litigation. Case settled favorably for client.

Hansen Beverage Company v. Cytosport Inc., 2009 U.S. Dist. LEXIS (C.D. Cal.). Represented Plaintiff in obtaining preliminary injunction involving MONSTER ENERGY trademark.

Deckers Outdoor Corporation vs. Bon-Ton Stores, Inc., 2:08-cv-08074-ODW-VBK (C.D. Cal. 2009). Represented Defendant Bon-Ton Stores, Inc. in design patent infringement litigation involving boot designs. Obtained transfer of litigation to client's preferred venue and ultimately favorable settlement for client.

Deckers Outdoor Corporation vs. Aldo U.S. Inc., et al., 2:08-cv-07289-R-FFM (C.D. Cal. 2009). Represented Defendants Bon-Ton Stores, Inc. and Alloy Media, LLC in design patent infringement litigation involving boot designs. Case settled favorably for clients. 

Robert, Jr., Inc. v. Run Athletics International, LLC, 09-cv-1180 R (JCx) Central District of CA (C.D. Cal. 2009). Represented defendant in patent infringement litigation involving shoe design. Case settled favorably for defendant.

Amirsys, Inc. v. Structurad, LLC et al., 2:07-CV-573-DB (D. Utah 2007). Represented plaintiff in copyright infringement suit involving subscription website relating to radiology content, resulting in mediated settlement.

Parallax Group International, LLC v. BJ's Wholesale Club, Inc.,and, Venture Products, LLC, 07cv4211 SJO (Ex) (C.D. Cal. 2007). Represented defendant in design patent infringement litigation involving children's playmats. Case settled favorably for clients. 

Robert Hidey Architects, Inc. v. Richard John Cardoza and Ritner Group, Inc., SACV 8:07-00292-JVS (ANx) (C.D. Cal. 2007 ). Represented defendant in copyright infringement case involving architectural drawings; case resolved through mediated settlement.

Winn, Inc. v. Compgrip USA Corp., 2007 WL 1417633 (C.D. Cal.) Represented Plaintiff in obtaining summary judgment of patent infringement.

Automobile Club of Southern California v. The Auto Club, Ltd., 2007 U.S. Dist. LEXIS 19221 (represented plaintiff in defeating summary judgment motion claiming trademark invalidity and non-infringement); See also 2007 U.S. Dist. LEXIS 19230 (represented plaintiff in obtaining summary judgment that defendants were unfairly competing by operating as a motor club in California without a license from the Department of Insurance).

Express, LLC v. Fetish Group, Inc., 424 F. Supp. 2d 1211, (C.D. Cal. 2006) (obtained summary judgment of copyright infringement in defendant’s lace and embroidery design on clothing); See also 464 F. Supp 2d 965 (obtained summary judgment dismissing plaintiff’s fraud and unfair competition claims).

Broadcom Corp. v. BroadVoice, Inc., SACV05-431 DOC (2005) (represented plaintiff in trademark infringement suit and later obtained settlement through mediation).

Mattel, Inc. v. Simba Toys GmbH & Co. KG et al., (CV-03-9388 MMM) (2003): represented defendant in copyright and trade dress infringement suit resulting in mediated settlement.

Winn Inc. v. Eaton Corporation, 272 F. Supp. 2d 968 (C.D. Cal. 2003) (represented Plaintiff in successfully defeating defendant's motion for summary judgment of non-infringement and invalidity of Plaintiff's patents relating to golf club grips).

Ford Motor Co., Carroll Shelby et al. v. Superformance International Replicars, Inc., 251 F. Supp. 2d 983, (D. Mass. 2002) (represented defendant in obtaining summary judgment dismissing Carroll Shelby’s claims to trade dress rights in shape of Cobra vehicle).

Ford Motor Co. v. Ultra Coachbuilders Inc., 57 U.S.P.Q. 2d 1356 (C.D. Cal. 2000) (represented defendant in defeating Ford Motor Co.’s motion for preliminary injunction against limousine manufacturer’s retention of Ford emblems on converted automobiles; denial of injunction upheld on appeal by 9th Circuit).

Modtech, Inc. v. Designed Facilities Construction, Inc., 48 U.S.P.Q. 2d 1208 (C.D. Cal. 1998) and 51 U.S.P.Q.2d 1206 (C.D. Cal. 1999) (represented plaintiff in obtaining preliminary injunction enforcing copyrights in architectural drawings; obtained contempt order following defendant’s violation of injunction).

Terri Lee Associates et al. v. Doll City, USA, SACV-97-6 (AHS) (C.D. Cal. 1998), represented plaintiff in trademark and rights of publicity case involving collectible dolls; case resolved through mediated settlement after issuance of preliminary injunction in plaintiff's favor.

Beam System, Inc. v. Checkpoint Systems, Inc. et al., 42 U.S.P.Q. 2d 1461 (C.D. Cal. 1997) (represented one of defendants in obtaining dismissal of copyright infringement claims involving computer software).

Asia Entertainment Inc. v. Nguyen, 40 U.S.P.Q.2d 1183 (C.D. Cal. 1996) (obtained summary judgment of copyright infringement in favor of plaintiff involving music and sound recording copyrights; after subsequent trial, attorney fees awarded in favor of client, Asia Entertainment).

Dogloo, Inc. v. Doskocil Mfg. Co., Inc., 893 F. Supp. 911 (C.D. Cal. 1995) (represented plaintiff in obtaining preliminary injunction enforcing trade dress rights in shape of dog kennel).

Essie Cosmetics, Inc. v. Dae Do International, Ltd. et al., 808 F. Supp. 952 (E.D.N.Y. 1992) (represented plaintiff in obtaining preliminary injunction enforcing trade dress rights in shape of nail polish bottle).


Articles

Contributing author, United States Chapter, Trade Secret Protection: A Global Guide, published by Global Law and Business (January 2016)

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

Co-author, Kluwers Advertising Treatise - United States Chapter, Wolters Kluwer Law & Business (September 2015)

Contributing author, Licenses and Insolvency, A Practical Guide to the Effects of Insolvency on IP License Agreements, published by International Bar Association (October 2014)

Co-author, Supreme Court Decision POM Wonderful LLC v. Coca-Cola Co: What You Need to Know, Knobbe Martens Firm Alert (June 2014)

Contributing thoughts in "Legal Perspective on Negative Online Reviews: What Both Sides Should Consider Before Jumping Into the Fray," JD Supra Perspectives (February 2014)

Contributing author, Trademark Surveys, Volume 1, Designing, Implementing and Evaluating Surveys, published by ABA Section of Intellectual Property Law (2013) 

Law360 Q&A with Knobbe's Lynda Zadra-Symes, Law360 (June 2013)

Author, The Current State of Copyright Exhaustion in the U.S., Presented at the AIPLA 2013 Spring Meeting (May 2013)

Author, Anti-counterfeiting strategies in the United States, North American Regional Forum News (Newsletter of the International Bar Association Legal Practice Division) (April 2013)

Contributing author, "International Design Protection", Globe Law and Business (May 2012)

Author, Avoiding IP Troubles Online, The Patriot (February 2012)

Author, The potential pitfalls of comparative advertising, World Trademark Review (2010)

Author, Controlling Counterfeit Trade in Tangible Products Over the Internet (2006)

Author, Sounds, Smells, Shapes and Colors: Protection and Enforcement of Nontraditional Trademarks in the U.S. (2005)


Speeches

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

"The Legalities of Fashion - Intellectual Property Workshop," Fashion Week San Diego (September 2013)

"Understanding Trade Secrets and Trade Secret Misappropriation," IP Impact San Diego - Trademark Seminar (July 2013)

"What You Need to Know About Copyright Exhaustion Without Getting Exhausted," AIPLA 2013 Spring Meeting (May 2013)

"You've Just Been Sued - What to do in the First 30 Days," Association of Corporate Counsel (ACC) - Southern California DoubleHeader (April 2013)

"Avoiding Trade Secret Misappropriation, False Advertising & Unfair Competition Claims," Association of Corporate Counsel (ACC) - Southern California In-House Counsel Conference (January 2013)

"Hiring Competitor’s Top Talent & Being Fiercely Competitive Without Exposing Your Company," Association of Corporate Counsel (ACC) - Southern California In-House Counsel Conference (January 2013)

"Winning at the Outset: Improving Chances of Success on a Preliminary Injunction Motion," AIPLA (October 2010)

"Controlling Counterfeit Trade in Tangible Products Over the Internet," Worldwide Piracy Prevention Conference (2006)

Professional Memberships 

International Bar Association (IBA)

International Trademark Association (INTA)

American Intellectual Property Law Association (AIPLA)

Orange County Patent Law Association 

Inner Temple Inn of Court, London

Quote 

My international legal background provides me with valuable insight when enforcing my clients' global IP rights.
Lynda

Lastname 

Zadra-Symes

Photo 

Position 

Email 

lynda.zadrasymes@knobbe.com

Start Date 

Thursday, June 1, 1989
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