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Michael Guiliana

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Attorney User 

Telephone 

949-760-0404

Office Location(s) 

Professional Profile 

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

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

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

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

Industry Experience (raw) 

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

Cases, Articles, Speeches & Seminars 

Speeches and Seminars

Speaker, "'Here's Another Fine Mess Youv'e Gotten Me Into - Best Practices for Employee, Contractor and Consulting Agreements," Association of Corporate Counsel (ACC) - Southern California DoubleHeader, April 2016.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Representative Matters

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

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

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

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

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

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

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

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

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

Professional Memberships 

American Intellectual Property Law Association (AIPLA)

International Association for the Protection of Intellectual Property (AIPPI)

Orange County Patent Law Association (OCPLA)

Orange County Bar Association

American Society of Mechanical Engineers (ASME)

Society of Automotive Engineering (SAE)

Michael

Lastname 

Guiliana

Photo 

Position 

Email 

michael.guiliana@knobbe.com

Nick name 

Mike

Start Date 

Sunday, June 1, 1997

Best Practices for Employee, Contractor and Consulting Agreements

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Partner Michael Guiliana presented on "Best Practices for Employee, Contractor and Consulting Agreements" at the Association of Corporate Counsel - Southern California Chapter "DoubleHeader" event.

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Susan M. Natland

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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 2016 "World IP Leader" by World Intellectual Property Review (WIPR). 
  • 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 has also had the valuable 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 business decisions and providing her with hands-on practical experience and insight into business drivers and concerns.

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:

"What We've Got Here is a Failure to Communicate" – False Advertising in the Social Media Space, Association of Corporate Counsel (ACC) (2016)

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:

Amazon's clear labelling defeats MTM trademark claims, World Trademark Review, April 2016

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

Start Date 

Monday, June 1, 1998

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

  • Named a 2016 "World IP Leader" by World Intellectual Property Review (WIPR).
  • 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 (2012-2016).
  • 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.
  • Recognized in the 2015 "Who's Who Legal 100" by Law Business Research.
  • Received the "Best USA Lawyer - Unfair Competition" award in the 2014 "Legal Awards" by Acquisition International.
  • Recognized in the Guide to the World's Leading Trademark Law Practitioners from 2012-2014.
  • 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

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 for his outstanding intellectual property legal work in Managing Intellectual Property "IP Stars" Guide from 2013 to 2016.
  • 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 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

Steve Jensen

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Attorney User 

Education 

1987
Emphasis in computer architecture, Minor in Mathematics, Phi Kappa Phi Honorary Society

Honors 

magna cum laude

Awards & Honors 

  • Recognized for his outstanding intellectual property legal work in Managing Intellectual Property "IP Stars" Guide from 2013 to 2016.
  • Recognized by American Lawyer Media as a Top Rated Lawyer in Intellectual Property Law for 2013.

Telephone 

949-760-0404

Office Location(s) 

Professional Profile 

Stephen C. Jensen is a partner in our Orange County office. Mr. Jensen’s practice emphasizes intellectual property litigation, competitive strategy, negotiation, licensing, infringement and validity analysis, financings, acquisitions, joint development and other strategic technology related transactions. He has handled cases involving virtually all aspects of intellectual property, and has negotiated technology related agreements between companies worldwide.

Mr. Jensen represents clients in a wide range of technologies, such as medical devices and instrumentation, semiconductors, computer hardware and software, complex digital signal processing, telecommunications including wireless, antennas, video and audio processing, optics, solid state cooling and heating, control systems, and other areas. In 2003, he was named by the Daily Journal as one of the top 20 lawyers under 40 in California.

He served on the Board of Directors of Sedline, Inc, a company with non-invasive brain function monitoring products.  He was also the Senior Vice President of OEM Business and Business Development at Masimo Corporation.

Prior to law school, Mr. Jensen worked for Hughes Aircraft in the microwave phased array antenna field, where he was involved in development of radar systems.

Mr. Jensen joined the firm in 1990 and became a partner in 1994.

Cases, Articles, Speeches & Seminars 

Representative Matters

Hygia Health Services v. Masimo Corporation (N.D. Ala 2009).  Represented Masimo in declaratory judgment case involving patent, trademark, and unfair competition disputes relating to reprocessing of Masimo’s original medical products.  Obtained favorable settlement and permanent injunction.

Stewart Land Group LLC v. First American Title Insurance Company (2:08-cv-00476-DB) (2008).  Defended First American Title in patent infringement, breach of contract and misappropriation of trade secrets case relating to orthorectified aerial survey images.  Obtained dismissal.

Ingersoll Machine Tools v. CG Tech (3:06-cv-50212) (N.D. Ill 2007).  Defended CG Tech in dispute involving claims of federal unfair competition, Copyright infringement, misappropriation of trade secret, deceptive trade practices and civil conspiracy relating to machine tool simulation software.  Case dismissed with prejudice.

Credit Management Services v. Fisher & Paykel Financial ServicesFisher & Paykel, (ICDR Arbitration 2007).  ICDR arbitration in San Francisco. Defended Fisher & Paykel Financial Services in intellectual property dispute regarding credit management software.  Obtained a dismissal of the entire arbitration.

HLP v. PetArk, (CV-05-0893) (C. D. Cal 2006).  Represented Plaintiff in Copyright Infringement and Unfair Competition case relating to pet shelter and pet adoption management software (including payment processing), and related internet systems.  Obtained preliminary injunction and subsequent favorable settlement.

Intelligent Computer Solutions, Inc. v. Voom Technologies, Inc., (CV-05-5168) (C. D. Cal 2005).  Represented defendant in patent infringement action on patent directed to forensic computer storage duplication.  Obtained favorable claim construction and tentative ruling of no infringement on motion for summary judgment.  Case settled.

IP3 Networks, Inc. v. Nomadix, Inc., (04-CV-1485) (S.D. Cal 2004).  Represented patent owner in declaratory judgment action on patents directed to software and systems for hosting Internet hot spots. Achieved favorable settlement.

Nellcor Puritan Bennett, Inc. v. Masimo Corp., 300 F.Supp.2d 923 (C.D. Cal. 2004).  Established that medical device client did not infringe signal-processing patent on pulse oximeters.

Mallinckrodt, Inc. v. Masimo Corp., 254 F.Supp.2d 1140, 292 F.Supp.2d 1201, and 293 F.Supp.2d 1102 (C.D. Cal. 2003).  Represented Masimo in patent infringement case related to digital signal processing in medical devices.  Jury found that Masimo had not infringed one patent and found that opposing side infringed four of Masimo’s patents, and awarded $134.5M damages in favor of Masimo.  Certain other patents asserted against Masimo were dismissed on summary judgment.

Lemelson Medical, Education & Research Foundation vs. RF Micro Devices et al. (CV-01-1440-PHX-ROS (D. Az, 2001).  Defended RF Micro Devices in patent infringement case involving multiple patents in the area of machine vision and bar codes.  Obtained favorable settlement.

RAS Holding Corp. et al v. SurgiLight, Inc., (M.D. Fla 2000). Represented defendant SurgiLight in patent infringement action involving method of treatment of presbyopia. Favorably settled

Faroudja Laboratories v. Dwin Electronics, Inc., 76 F.Supp.2d 999 (N.D. Cal 1999).  Represented Plaintiff in patent infringement suit relating to video processing. Obtained favorable claim construction ruling and defeated defendants summary judgment motion of non-infringement.

Operator Services Company v. Gail F. Stradley et al., (Case No. 97-560252) (Tex. 1997).  Defended telecommunications company and employee accused of misappropriation of trade secrets. Obtained Summary Judgment against plaintiff, resulting in dismissal of all claims and a judgment of costs against plaintiff.

Meade Instruments Corporation v. Merlin Controls Corporation, (C.V. 94-407) (D. Col. 1994).  Represented manufacturer of telescopes regarding software control systems for telescopes, in action for misappropriation of trade secrets and related claims. Obtained temporary restraining order and stipulated permanent injunction.

Global Gaming Technology v. Trump Plaza Funding et al., (C.V. 94-2021) (D. New Jersey 1994) and IGT North America et al v. Global Gaming Technology (CV-S-94-00601-HDM) (D. Nev. 1994).  Defended slot machine manufacturer accused of infringing patent relating to slot machine computer control. Succeeded in obtaining stay of original suit brought against casino customers of manufacturers in favor or later filed action brought by manufacturers in Nevada. Case dismissed against client with no finding of infringement.

Abbott Laboratories v. Pacific Biotech Inc., 19 U.S.P.Q. 2d 1678 (S.D. Cal. 1991).  Established no patent infringement by manufacturer Pacific Biotech of immuno-assay test kits.

Atari Games Corp. v. Nintendo of America, Inc., (C.V. 88-4905 FMS) (N.D. Cal.).  Represented video game manufacturer accused of infringing patents and copyrights in hardware and software used to lock out unlicensed video games. Obtained voluntary dismissal of one patent infringement claim, and participated in three-week jury trial on remaining patent.

Articles, Speeches & Seminars

“Amendments to the Federal Rules of Civil Procedure” New Matter, Fall Quarter 1991, Co-Author

“Common Sense, Simplicity and Experimental Use Negation of the Public Use and On Sale Bars to Patentability,” 29 John Marshall L. Rev. 1, 1995, Co-Author

“Copyright or Patent Protection for Your Computer Software?” Orange County Business Journal, December 20, 1993

“Protection of Computer Software,” Orange County Business Forum, September 2, 1994

“Litigating the High-Tech Case In The High-Tech Courtroom: The Y2K Litigation Frontier,” Nevada Lawyer, May 1999, Co-Author

Professional Memberships 

American Bar Association

International Bar Association

Orange County Patent Law Association

Federal Circuit Bar Association

Steve

Lastname 

Jensen

Photo 

Position 

Email 

steve.jensen@knobbe.com

Start Date 

Friday, June 1, 1990

Michael Guiliana

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Attorney User 

Telephone 

949-760-0404

Office Location(s) 

Professional Profile 

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

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

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

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

Industry Experience (raw) 

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

Cases, Articles, Speeches & Seminars 

Speeches and Seminars

  • Speaker, "'Here's Another Fine Mess Youv'e Gotten Me Into - Best Practices for Employee, Contractor and Consulting Agreements," Association of Corporate Counsel (ACC) - Southern California DoubleHeader, April 2016.
  • Speaker, "Intellectual Property Protection in the Life Sciences," International Symposium on Technology for Biomedical Devices, Calit2, February 2016.
  • Panelist, "What In-House Counsel and Internal Business Units Need to Know About IP Law," Association of Corporate Counsel (ACC) - Southern California In-House Counsel Conference, January 2016.
  • Panelist, "Writing the Script for an Effective Patent Portfolio," Association of Corporate Counsel (ACC) - Southern California DoubleHeader, November 2015.
  • Moderator, "SMART Worker," Calit2 Igniting Technology Event, University of California Irvine, May 2015.
  • Moderator, "The Internet of Things," Calit2 Igniting Technology Event, University of California Irvine, November 2014.
  • Moderator, "Proof-of-Concept Services," Calit2 Igniting Technology Event, University of California Irvine, November 2013.
  • Moderator, "From Pitch to Rich," Calit2 Igniting Technology Series Panel Discussion, University of California Irvine, June 2013.
  • Panelist, "Venture Science: Crossing Disciplines," Creating Innovation, Calit2 Igniting Technology Series Panel Discussion, University of California Irvine, November 2012.
  • Moderator, "Energy Empowerment: Get Smart About Efficiency," Calit2 Igniting Technology Series Panel Discussion, University of California Irvine, November 2010.
  • Guiliana, M., Benedict, M., Reisman, J., "Pharmaceutical Patent Applications in China, Europe and America," Intellectual Property Office of Jiangsu Province, Pharmaceutical News and Wuxi Intellectual Property Office, WuXi, China May 26-29, 2010.
  • Moderator, "Calit2 TechPortal," CalIt2 Igniting Technology Series Panel Discussion, University of California Irvine, May 2010.
  • Moderator, "Network Generation: Transforming the Global Infrastructure to Address Evolving Demands," Calit2 Igniting Technology Series Panel Discussion, University of California Irvine, November 2009.
  • Moderator, "The Clean Energy Challenge," Calit2 Igniting Technology Series Panel Discussion, University of California Irvine, May 2009.
  • Moderator, "H2Ology: Tapping into Technology to Solve Water Woes," Calit2 Igniting Technology Series Panel Discussion, University of California Irvine, November 2008.
  • Moderator, "Web 3.0: The Next Transformation of the Internet Experience," Calit2 Igniting Technology Series Panel Discussion, University of California Irvine, June 2007.
  • Guiliana, M., "Ten Things You Need to Know About Intellectual Property," Society of Automotive Engineers Southern California Chapter Conference, Irvine, California, February 2005.
  • Instructor, Intellectual Property for the High Technology Industry, UCI Extension 2 Day Course, 2006-2009.

Representative Matters

  • Ex Parte Bradley G. Vernon and Patrick D. Arnold, United States Board of Patent Appeals and Interferences, Appeal No. 2009-013984: Represented patent applicant in appeal of rejection of utility patent application, resulting in all rejections being overturned. 
  • Kruse Technology Partnership v. Cummins, Inc., SACV 10-01066 JVS: Represented plaintiff in patent infringement litigation, negotiated settlement, January 2011.
  • Kruse Technology Partnership v. General Motors, CV 09-4970 JVS and Kruse Technology Partnership v. DMAX, SACV 09-00458 JVS: Represented plaintiff in patent infringement litigation, negotiated settlement after formal mediation, November 2010.
  • Kruse Technology Partnership v. Isuzu, SACV 09-3710 JVS: Represented plaintiff in patent infringement litigation, negotiated settlement of patent infringement litigation via formal mediation, August 2010.
  • Ex Parte K. Michael Harris, United States Board of Patent Appeals and Interferences, Appeal No. 2009-006390: Represented patent applicant in appeal of rejection of design patent application, resulting in all rejections being overturned, and resulting in issuance of U.S. Design Patent No. 7,866,242.
  • Kruse Technology Partnership v. Caterpillar, CV 04-10435 PA: Represented plaintiff in patent litigation over diesel engine combustion technology, defeated Caterpillar’s summary judgment of non-infringement and invalidity, negotiated settlement before trial, December 2008.
  • Ex Parte Robert M. Todd, United States Board of Patent Appeals and Interferences, Appeal No. 2006-3291: Represented patent applicant in appeal of rejection of utility patent application, resulting in all rejections being overturned, and resulting in issuance of U.S. Patent No. 7,270,377.
  • In Re Stuart J. Ledingham, United States Board of Patent Appeals and Interferences, Appeal No. 2003-1862: Represented patent applicant in appeal of rejection of design patent application, resulting in all rejections being overturned, and resulting in issuance of U.S. Design Patent No. 503333.
  • Yamaha Motor Company, Ltd. V. Bombardier 60 USPQ2d 1541 (C.D. Cal. 2001) 59 USPQ2d 1088 (C.D. Cal. 2001), Represented plaintiff personal watercraft manufacturer in a series of patent enforcement actions in both District Court and the United States International Trade Commission relating to a portfolio of dozens of patents.  These actions were resolved by license and settlement agreements resulting in significant royalties to the client.

Professional Memberships 

American Intellectual Property Law Association (AIPLA)

International Association for the Protection of Intellectual Property (AIPPI)

Orange County Patent Law Association (OCPLA)

Orange County Bar Association

American Society of Mechanical Engineers (ASME)

Society of Automotive Engineering (SAE)

Michael

Lastname 

Guiliana

Photo 

Position 

Email 

michael.guiliana@knobbe.com

Nick name 

Mike

Start Date 

Sunday, June 1, 1997

Secrets & Walkthroughs to Protecting and Defending Your Game's IP

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Description 

On Monday, June 6, Knobbe Martens will host "Secrets & Walkthroughs to Protecting and Defending Your Game's IP", at the Knobbe Martens San Francisco Office. 

Developing a video game often requires a substantial investment in time, money, and other resources. Please join Knobbe Martens for an interactive discussion about how your studio can help protect and grow the value of your video game including:

  • How to identify the various types of intellectual property inherent in your game;
  • What legal strategies and associated costs may be best to protect your game’s intellectual property and further your business goals; and
  • Translating your game’s intellectual property into a marketable asset through effective marketing and licensing deals.

Additionally, industry experts will share their insights and answer questions from the audience regarding legal pitfalls of developing and selling video games including:

  • Challenges related to acquisition by a publisher or another studio;
  • Recognizing and managing third-party intellectual property risks;
  • Detecting and stopping potential infringement of your intellectual property;
  • Obstacles to using open source content in your games;
  • Data privacy issues that can impact your games and your business; and
  • Ensuring that employees, testers, contractors, and others do not have a claim to your game’s intellectual property.

Featured panelists include:

  • Paul Main, Patent and Technology Counsel, Electronic Arts
  • Mauricio Uribe, Partner, Knobbe Martens
  • Daniel Gibson, Partner, Knobbe Martens

A continental breakfast will be served and California CLE credit will be available. 

Register for this event >>

Registration Fee 

Complimentary

Highlighted 

Industry Groups 

Location 

Knobbe Martens - San Francisco
333 Bush Street, 21st Floor
San Francisco, CA 94104
US

Monday June 6, 2016
2:00am - 4:00am PDT
Download to Calendardownload to calendar

CLE Credit 

CLE credit available for attorneys

Intellectual Property Can Make or Break the Best Ideas | RTC Magazine

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Partners Irfan Lateef and Jarom Kesler authored "Intellectual Property Can Make or Break the Best Ideas," which was published in the March 2016 edition of RTC Magazine.

 

 

 

 

Associated Industry Group 

Type

Publications
Thursday, March 31, 2016

Shorter Headline Homepage

Intellectual Property Can Make or Break the Best Ideas

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Managing IP Names Eight Knobbe Martens Partners 2016 “IP Stars”

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Knobbe Martens Olson & Bear LLP, one of the leading intellectual property law firms in the United States, is pleased to announce that partners Maria Anderson, William Bunker, Jon Gurka, Steve Jensen, Joseph Re, Robert Roby, Art Rose, and William Zimmerman have been recognized for their outstanding intellectual property legal work in the 2016 Managing Intellectual Property (Managing IP)“IP Stars” handbook.

Managing IP’s“IP Stars” is an international, real-time IP market information resource that provides a detailed look at the leading IP firms and attorneys in all 50 states and around the world. Leading individual IP attorneys are recommended and confirmed by their peers and clients, based on their specific areas of expertise and the industries and clients they serve.

The selection of these attorneys to “IP Stars” follows numerous other accolades Knobbe Martens has received from Managing IP this year. The firm earned top rankings in six national categories in Managing IP’s“IP Stars Survey,” including PTAB Litigation, Bio Life Sciences, Patent Contentious, Patent Prosecution, Trademark Contentious, and Trademark Prosecution; and was ranked in the top regional tiers in the Copyright, Patent, and Trademark categories. Knobbe Martens was also named the “Top Patent Prosecution Firm in the Nation” as well as the “Top Patent Prosecution Firm in the West” at the 2016 “North America Awards” held in March in Washington, D.C. 

The “IP Stars” survey, the most comprehensive of its kind, covers 70 countries and ranks leading law firms by nation. The selection process is based on extensive research compiled by teams in London, New York and Hong Kong, honoring firms considered the most “capable, active firms in IP” in their respective jurisdictions. Rankings are based on the firm’s quality of service and depth of practice according to peer reviews by intellectual property practitioners worldwide and clients. Firms that are included have received a significant number of recommendations from peers and clients, and cannot vote or pay for their own inclusion, nor solicit votes from associates.

You can learn more about Managing IP’s analysis of the firm’s national rankings here, and about its regional rankings here.

 

About Knobbe Martens

With over 300 lawyers and scientists nationwide, Knobbe Martens Olson & Bear LLP dedicates its practice to all aspects of intellectual property law including litigation.  Consistently ranked among the top intellectual property firms worldwide, Knobbe Martens serves a diverse group of clients from multinational corporations to emerging businesses of all stages.  Headquartered in Orange County, California, Knobbe Martens also has offices in San Diego, Los Angeles, San Francisco, Silicon Valley, Seattle and Washington, D.C.  More information about the firm can be found at www.knobbe.com.

 

Type

News
Monday, May 23, 2016

Contact 

Nicholas Gaffney 415-732-7801

Associated International Area 

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Managing IP Names Eight Knobbe Martens Partners 2016 “IP Stars”

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Knobbe Martens Attorneys Ranked in 2016 Chambers USA Guide

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Knobbe Martens Olson & Bear, LLP is pleased to announce it has been highly rated in the annual firm rankings released last week by Chambers USA, which has been ranking America’s leading law firms and attorneys since 1990. The firm has once again received excellent regional rankings for intellectual property in the categories of Patent Prosecution and Life Sciences. Chambers USA noted that during the selection process, one client remarked: "The quality of their work is excellent. All they do is IP, so everyone there is highly qualified. They have high-quality attorneys who are very bright and decisive in their advice."

In addition, the 2016 Chambers USA regional rankings include three partners based in Knobbe Martens’ Irvine office: Gerard von Hoffmann, Salima Merani, Ph.D., and Joseph Re, who had previously been ranked by Chambers. Joseph Re was ranked in the Intellectual Property: Patent category and Gerard von Hoffmann and Salima Merani were both ranked in the Life Sciences: IP/Patent Litigation category.

Chambers USA covers  45 different practice areas on a national and regional level. Rankings at state-level are based upon the location in which a firm or lawyer practices regardless of the location of its clients, deals and cases. The publication also focuses on law firms that have a national presence and are also ranked in Chambers’ Nationwide tables. The ranking of lawyers and law firms is conducted by a team of more than 140 researchers located in the UK and depends on several factors and considerations including interviews with clients, peers and assessing the recent work done individually and as a department as a whole.

To view further details on Knobbe Martens’ firm and individual rankings, please visit the Chambers & Partners website here.

 

About Knobbe Martens

With over 300 lawyers and scientists nationwide, Knobbe Martens Olson & Bear LLP dedicates its practice to all aspects of intellectual property law including litigation.  Consistently ranked among the top intellectual property firms worldwide, Knobbe Martens serves a diverse group of clients from multinational corporations to emerging businesses of all stages.  Headquartered in Orange County, California, Knobbe Martens also has offices in San Diego, Los Angeles, San Francisco, Silicon Valley, Seattle and Washington, D.C.  More information about the firm can be found at www.knobbe.com.

Type

News
Thursday, June 2, 2016

Contact 

Nicholas Gaffney 415-732-7801

Shorter Headline Homepage

Knobbe Martens Attorneys Ranked in 2016 Chambers USA Guide

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23 Knobbe Martens Attorneys Named Among “World’s Leading Patent Professionals” by IAM

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Knobbe Martens Olson & Bear, LLP and 23 of its partners have been acknowledged for their expertise in this year’s edition of the IAM 1000 – The World’s Leading Patent Practitioners 2016. The partners include: Adeel Akhtar, Maria Anderson, Brent Babcock, Mark Benedict, John Carson, Jon Gurka, Daniel Hart, Ned Israelsen, John King, Irfan Lateef, Eli Loots, Joseph Mallon, Salima Merani, Ph.D., Kimberly Miller, Joseph Re, Joseph Reisman, Arthur Rose, Ron Schoenbaum, Melanie Seelig, John Sganga, Mauricio Uribe, Karen Vogel Weil, and Bill Zimmerman.

The IAM Patent 1000 guide, from the publishers of Intellectual Asset Management (IAM) magazine, identifies the top patent firms and practitioners, including litigators, licensing advisors, and patent prosecutors in 41 jurisdictions around the globe. Interviewees describe Knobbe Martens as one of the “biggest and best IP boutiques” in the United States, with the largest number of individuals ranked in the IAM Patent 1000 California chapter. Covering all conceivable technical disciplines in prosecution practice, Knobbe Martens “is rated top in the state.”

Knobbe Martens was “recommended” for patent prosecution work nationally. It was once again the only firm to receive a “highly recommended” rating for patent prosecution work in California and Washington. The firm was “recommended” in California for transactions and received a silver band for litigation. In Washington State, the firm was also “recommended” for transactions and also received a silver band for litigation.

IAM was full of praise for Knobbe Martens attorneys in the areas of patent prosecution and transactions:

Adeel Akhtar was extolled as “extremely smart, efficient and careful, and demonstrates perfect judgement in everything he does.” Maria Anderson was described as a “whiz at internet and software matters. Her work is extremely thorough, but she is quick and timely, too.” Mark Benedict was said to have “commercial flair for portfolio development, working up a tantalizing suite of patents for practicing physician Dr. Bruce May.”

John Carson was praised for his diverse and “fantastic client base’ in the European and Asian markets” representing healthcare, software, telecommunications, flat panel display, and battery companies. “Carson knows all the latest case law and how it affects patent practice. His clients are treated to up-to-the-minute advice.” Daniel Hart was described as “deeply embedded in the local biotech and pharma scene”. Ned Israelsen was commended for his “many years of experience.” He is “quick and smart [and] he leads by example, producing five-star work for both start-ups and established enterprises.”

John King was said to be “up to the task across a similar spread of IP disciplines” and have a “deft touch nurturing early-stage companies.” Eli Loots was praised as being able to “traverse the contentious/non-contentious divide with finesse” and as a “go-to guide for biotechnologists seeking tactical inter partes review advice.” Joseph Mallon was commended for his teamwork with Miller in giving ‘indispensable advice’ and “deftly handling patent procurement for Alios BioPharma.”

Salima Merani was extolled as “never making a mistake – she truly is at the top of her game. She is a great strategic advisor with a proven track record of success and innovation. She always makes time for her clients and is incredibly diligent.” Kimberly Miller was noted for her teamwork with Mallon in giving “indispensable advice,” which enabled Alios BioPharma to advance drug candidates for the treatment of viral diseases. Arthur Rose was praised for his negotiation skills and for being “one of the top licensing specialists in the line-up.”

Ron Schoenbaum was recognized as a “versatile performer with enviable procurement, infringement and licensing know-how” in the information and medical technology fields. Melanie Seelig was hailed as “an outstanding project manager” covering “virtually any area of technology with dazzling technical dexterity.” Mauricio Uribe was commended for “excelling at prosecuting applications in the electrical engineering and software spaces, [and going] beyond the drafting and filing brief to proactively develop portfolios and provide strategic direction to patrons.”

Knobbe Martens litigators were also highly praised:

Brent Babcock was recognized as “one of the few interference experts and a captain of the post-grant ship, having participated in more than 60 inter partes and covered business method reviews.” It was noted that Jon Gurka“shouldered significant loads on the recent $466 million jury trial victory for Masimo against Philips in 2014.” Irfan Lateef, who was recognized for litigation, was described as “steeped in prosecution, so he never fails to play a strong technical game.”

Joseph Re, lead trial counsel in client Masimo’s $466 million jury verdict in 2014, was called out as “the set’s best-known litigator.” Joseph Reisman was commended for his prosecution and litigation “aplomb,” which helped him “secure comprehensive, long-term protection for clients’ intangible assets.” John Sganga was described as having a “meticulous eye for detail” in a recent competitor-on-competitor suit. Karen Vogel Weil was praised for her “expertise on the hot-button subject of patent damages.” William Zimmerman, Managing Partner of the firm’s Washington, D.C. office, was described as “simply one of the top patent litigators in the U.S. Everything he does is in the best interests of his clients.”

The IAM Patent 1000 rankings are based on five months of research and more than 1,500 telephone interviews with attorneys at law, patent attorneys and in-house counsel to gather market intelligence on the leading players in the field. The IAM Patent 1000 identifies the leading law firms in the market based on the depth of expertise, market presence and the level of work on which they are typically engaged. For additional information and to view the full guide, visit IAM magazine at www.iam-media.com.

 

About Knobbe Martens

With over 300 lawyers and scientists nationwide, Knobbe Martens Olson & Bear LLP dedicates its practice to all aspects of intellectual property law including litigation.  Consistently ranked among the top intellectual property firms worldwide, Knobbe Martens serves a diverse group of clients from multinational corporations to emerging businesses of all stages.  Headquartered in Orange County, California, Knobbe Martens also has offices in San Diego, Los Angeles, San Francisco, Silicon Valley, Seattle and Washington, D.C.  More information about the firm can be found at www.knobbe.com.

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Tuesday, June 7, 2016

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Knobbe Martens Attorneys Ranked in IAM Patent 1000 Guide

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Intellectual Property Law: What Nutraceutical Companies Should Know | Nutraceuticals World

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Partner Rose Thiessen, Ph.D. and attorney Samantha Markley published an article titled "Intellectual Property Law: What Nutraceutical Companies Should Know" in Nutraceuticals World on June 13, 2016. 

In an industry overflowing with new products, new formulations and new ideas, understanding the basics of intellectual property law as it relates to nutraceuticals is essential to business success.

Many products in the nutraceuticals industry fall within two categories: known or natural components for new use; and combinations of known or natural components offering enhanced performance compared to that of the individual components. Your intellectual property related to new products can be protected in different ways to offer a competitive advantage. Typically, trademarks and trade secrets are relied upon for protection; however, in certain circumstances patents may provide the optimal protection for your new product.

Read the full article on the Nutraceuticals World website >>

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Monday, June 13, 2016

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IP Law: What Nutraceutical Companies Should Know

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Three Knobbe Martens Partners Recognized in Lawyer Monthly’s “2016 Women in Law Awards”

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Lawyer Monthly Magazine, a global news website and legal publication, has recognized three Knobbe Martens attorneys in its “2016 Women in Law Awards.” These awards highlight the achievements of outstanding women in the legal profession around the world. Orange County office partner Salima Merani, Ph.D., Seattle office partner Maria Anderson, and Los Angeles office partner Karen Vogel Weil, received the award and was featured in a special May edition of the magazine.

Salima Merani, Ph.D. has over fifteen years of experience building patent portfolios for life sciences companies, including several medtech and biotech companies.  As lead intellectual property counsel for several medical device startups, Dr. Merani has conducted patent due diligence for many venture capital and investment firms.  Additionally, she has wide-ranging experience in U.S. and international patent and trademark portfolio management, licensing, strategic offensive positioning, infringement analysis, IPOs, acquisitions, and managing global patent risk.  Dr. Merani’s focus in medical devices includes strategic guidance in the fields of aesthetics, orthopedics, cardiovascular and neuroscience, including medical implants, denervation and tissue ablation, regenerative technology, antibody technology, hypertension, diabetes, and dermatological conditions. Furthermore, her technical work outside the medical arena includes a deep knowledge in the fields of cosmetic formulations and nutraceuticals.

Maria Anderson’s practice focuses on providing comprehensive, strategic client counseling in all aspects of intellectual property.  For over two decades, she has been active in the prosecution of patent applications in the computer science and e-commerce fields.  In addition to her focus in patent and trademark portfolios and developing patent and trademark assets, Ms. Anderson also has extensive experience in providing patent and trademark clearance analysis and advice for a wide variety of products and services. Throughout her career, she has counseled clients on patentability and infringement matters and developed comprehensive intellectual property programs for pre-litigation and enforcement purposes.

Karen Vogel Weil’s practice focuses on all aspects of intellectual property litigation, including representing plaintiffs and defendants in patent, trademark, copyright and trade secret disputes.  She has both trial and appellate experience.  Ms. Weil is also experienced in the area of patent damages and is called on to spearhead the damages portion of most of the firm’s large litigations.  Most noteworthy is Ms. Weil’s leadership and prominent role in Masimo Corp. v. Philips Electronics North America Corp., which resulted in a jury verdict of $466 million dollars.

In selecting award winners, Lawyer Monthly’s research department took into consideration personal achievement, votes from Lawyer Monthly’s 180,000+ readers, the level of documented activity in 2015 when compared to industry peers, previous legal industry honors, involvement in significant legal cases and legal activity, and dollar value of involvement within transactions, deals and cases. 

About Knobbe Martens

With over 300 lawyers and scientists nationwide, Knobbe Martens Olson & Bear LLP dedicates its practice to all aspects of intellectual property law including litigation.  Consistently ranked among the top intellectual property firms worldwide, Knobbe Martens serves a diverse group of clients from multinational corporations to emerging businesses of all stages.  Headquartered in Orange County, California, Knobbe Martens also has offices in San Diego, Los Angeles, San Francisco, Silicon Valley, Seattle and Washington, D.C.  More information about the firm can be found at www.knobbe.com.

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Thursday, May 5, 2016

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Eleven Knobbe Martens Attorneys Named 2016 Southern California “Rising Stars”

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Knobbe Martens Olson & Bear LLP, one of the leading intellectual property law firms in the United States, is pleased to announce that eleven attorneys have been selected for inclusion in the 2016 Southern California "Rising Stars" list by Super Lawyers magazine.

Michelle Armond, Jared Bunker, Cheryl Burgess, Brian Claassen, Samantha Hsu, Baraa Kahf,Lauren Keller Katzenellenbogen, Gregory Phillips, Ali Razai, Christopher Ross, and Bryan Wahl were recognized for their work in intellectual property law and/or intellectual property litigation.

Super Lawyers honors outstanding lawyers who have attained a high degree of peer recognition and professional achievement. The “Southern California Rising Stars” list includes the top 2.5 percent of attorneys in Southern California who are age 40 or younger and/or have been in practice for less than ten years. They are nominated by lawyers who have personally observed them in action through co-counsel, opposing counsel or courtroom observation. For additional information on Super Lawyers, visit www.superlawyers.com.

About Knobbe Martens

With over 300 lawyers and scientists nationwide, Knobbe Martens Olson & Bear LLP dedicates its practice to all aspects of intellectual property law including litigation.  Consistently ranked among the top intellectual property firms worldwide, Knobbe Martens serves a diverse group of clients from multinational corporations to emerging businesses of all stages.  Headquartered in Orange County, California, Knobbe Martens also has offices in San Diego, Los Angeles, San Francisco, Silicon Valley, Seattle and Washington, D.C.  More information about the firm can be found at www.knobbe.com.

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Monday, June 13, 2016

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Attorneys Named 2016 Southern California "Rising Stars"

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Best Practices for Employee, Contractor and Consulting Agreements

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Partner Michael Guiliana presented on "Best Practices for Employee, Contractor and Consulting Agreements" at the Association of Corporate Counsel - Southern California Chapter "DoubleHeader" event.

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Tuesday, May 10, 2016

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Secrets & Walkthroughs to Protecting and Defending Your Game's IP

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On Monday, June 6, Knobbe Martens will host "Secrets & Walkthroughs to Protecting and Defending Your Game's IP", at the Knobbe Martens San Francisco Office. 

Developing a video game often requires a substantial investment in time, money, and other resources. Please join Knobbe Martens for an interactive discussion about how your studio can help protect and grow the value of your video game including:

  • How to identify the various types of intellectual property inherent in your game;
  • What legal strategies and associated costs may be best to protect your game’s intellectual property and further your business goals; and
  • Translating your game’s intellectual property into a marketable asset through effective marketing and licensing deals.

Additionally, industry experts will share their insights and answer questions from the audience regarding legal pitfalls of developing and selling video games including:

  • Challenges related to acquisition by a publisher or another studio;
  • Recognizing and managing third-party intellectual property risks;
  • Detecting and stopping potential infringement of your intellectual property;
  • Obstacles to using open source content in your games;
  • Data privacy issues that can impact your games and your business; and
  • Ensuring that employees, testers, contractors, and others do not have a claim to your game’s intellectual property.

Featured panelists include:

  • Paul Main, Patent and Technology Counsel, Electronic Arts
  • Teddy Joe, Senior Patent Counsel, Zynga, Inc.
  • Mauricio Uribe, Partner, Knobbe Martens
  • Daniel Gibson, Partner, Knobbe Martens

A continental breakfast will be served and California CLE credit will be available. 

Register for this event >>

Registration Fee 

Complimentary

Highlighted 

Industry Groups 

Location 

Knobbe Martens - San Francisco
333 Bush Street, 21st Floor
San Francisco, CA 94104
US

06/06/2016 -
9:00am to 11:00am PDT

CLE Credit 

CLE credit available for attorneys

Intellectual Property Can Make or Break the Best Ideas | RTC Magazine

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Partners Irfan Lateef and Jarom Kesler authored "Intellectual Property Can Make or Break the Best Ideas," which was published in the March 2016 edition of RTC Magazine.

 

 

 

 

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Thursday, March 31, 2016

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Intellectual Property Can Make or Break the Best Ideas

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Managing IP Names Eight Knobbe Martens Partners 2016 “IP Stars”

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Knobbe Martens Olson & Bear LLP, one of the leading intellectual property law firms in the United States, is pleased to announce that partners Maria Anderson, William Bunker, Jon Gurka, Steve Jensen, Joseph Re, Robert Roby, Art Rose, and William Zimmerman have been recognized for their outstanding intellectual property legal work in the 2016 Managing Intellectual Property (Managing IP)“IP Stars” handbook.

Managing IP’s“IP Stars” is an international, real-time IP market information resource that provides a detailed look at the leading IP firms and attorneys in all 50 states and around the world. Leading individual IP attorneys are recommended and confirmed by their peers and clients, based on their specific areas of expertise and the industries and clients they serve.

The selection of these attorneys to “IP Stars” follows numerous other accolades Knobbe Martens has received from Managing IP this year. The firm earned top rankings in six national categories in Managing IP’s“IP Stars Survey,” including PTAB Litigation, Bio Life Sciences, Patent Contentious, Patent Prosecution, Trademark Contentious, and Trademark Prosecution; and was ranked in the top regional tiers in the Copyright, Patent, and Trademark categories. Knobbe Martens was also named the “Top Patent Prosecution Firm in the Nation” as well as the “Top Patent Prosecution Firm in the West” at the 2016 “North America Awards” held in March in Washington, D.C. 

The “IP Stars” survey, the most comprehensive of its kind, covers 70 countries and ranks leading law firms by nation. The selection process is based on extensive research compiled by teams in London, New York and Hong Kong, honoring firms considered the most “capable, active firms in IP” in their respective jurisdictions. Rankings are based on the firm’s quality of service and depth of practice according to peer reviews by intellectual property practitioners worldwide and clients. Firms that are included have received a significant number of recommendations from peers and clients, and cannot vote or pay for their own inclusion, nor solicit votes from associates.

You can learn more about Managing IP’s analysis of the firm’s national rankings here, and about its regional rankings here.

 

About Knobbe Martens

With over 300 lawyers and scientists nationwide, Knobbe Martens Olson & Bear LLP dedicates its practice to all aspects of intellectual property law including litigation.  Consistently ranked among the top intellectual property firms worldwide, Knobbe Martens serves a diverse group of clients from multinational corporations to emerging businesses of all stages.  Headquartered in Orange County, California, Knobbe Martens also has offices in San Diego, Los Angeles, San Francisco, Silicon Valley, Seattle and Washington, D.C.  More information about the firm can be found at www.knobbe.com.

 

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Monday, May 23, 2016

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Nicholas Gaffney 415-732-7801

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Managing IP Names Eight Knobbe Martens Partners 2016 “IP Stars”

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