Intellectual Property

The Intellectual Property Group has a winning track record for the enforcement and defense of patent, trademark, copyright and trade secrets claims in trials, arbitrations and appeals nationwide. We also successfully represent clients in litigation before the International Trade Commission (ITC) and the Patent and Trademark Office.

Our top-ranked IP litigators have significant experience in complex, high-profile patent, trademark and copyright litigation. We bring powerful advocacy, creative solutions, and a committed, experienced team to every case, and we consistently achieve precedent-setting results in matters involving substantial damage claims.

We also frequently counsel clients in the execution of worldwide intellectual property development, acquisition, protection, enforcement, branding and licensing programs for patents, trademarks, trade dress and copyrighted works.

Our attorneys have expertise in a wide range of industries, including telecommunications, automotive, aerospace, computer hardware and software, electronics, semiconductors and fabrication, specialty chemicals, footwear and apparel, food and beverage, life sciences and pharmaceutical, new media and internet technologies, medical devices, toys and entertainment, online games and apps, and more.

Our Difference

Clients who can choose any firm often choose Glaser Weil because:

• We have a proven track record of winning cases against law firms many times our size and against some of the best and toughest lawyers in the country.
• We are not just “paper” lawyers – we are trial lawyers who know how to win jury and bench trials.
• We have the technical capability to handle complex, high-stakes cases in virtually every industry. Our IP attorneys have degrees in aeronautics, biology, chemistry, electrical engineering, physics, mathematics, and the computer sciences.
• Our cost-effective representation can make the difference between a meaningful victory and a symbolic one.
• Winning an IP case does not require an army of lawyers. It requires the tenacity, expertise and judgment to develop and implement winning strategies.

What We Do

• Patent Litigation, including PTAB and ITC 337 Proceedings
• Trademark and Trade Dress Litigation, including TTAB and ITC 337 Proceedings
• Copyright and Idea Theft Litigation
• Trade Secret and Unfair Competition Litigation
• Life Sciences
• Intellectual Property Counseling, Licensing and Technology Transactions

Patent Litigation (including ITC Proceedings)

• Won $400 million verdict in jury trial representing a university-based licensing entity in a patent-assertion action over FinFET semiconductor technology. The jury found the claims to be valid and that all defendants infringed the asserted patent.
   
• Won dismissal with prejudice on behalf of Dole Food Company, Inc. in a case concerning a method patent for processing lettuce.
   
• Won affirmance in the Federal Circuit for Clean Air Engineering Maritime, Inc., in a case taken over post-trial, with the Federal Circuit affirming both summary judgment of noninfringement and verdict of invalidity in a method and system patent for controlling maritime emissions.
   
• Won summary judgment of noninfringement of nine JVC Kenwood optical disc patents for client Nero, based on patent exhaustion and end user licenses containing express releases, including successfully moving to strike JVC’s 96-page expert declaration as inconsistent with its infringement contentions. The decision was unanimously affirmed on appeal in a precedential opinion.
   
• Won summary judgment of noninfringement of both asserted patents and invalidity of one asserted patent as anticipated by the prior art for client VIZIO, in case accusing the video processing algorithms used by chipsets in VIZIO’s televisions.
   
• Won reversal and remand for Abbott Laboratories in a patent case taken over post-trial, with the Federal Circuit affirming a post-judgment ruling setting aside willfulness, vacating an injunction prohibiting Abbott from selling its HCV genotyping product, and reversing and remanding for a new trial on invalidity.
   
• Won summary judgment for defendant Roche, invalidating three Stanford HIV test patents for obviousness and ending Stanford’s multimillion-dollar patent infringement suit, and maintained our victory on appeal to the Federal Circuit, before the en banc Federal Circuit on rehearing, and in a decisive victory in favor of Roche in the U.S. Supreme Court.
   
• Won a complete defense victory for defendant Intrado in a trial over patent infringement and indemnity issues involving telecommunications patents and their application to the routing of wireless telephone calls.
   
• Won summary judgment of noninfringement for defendant Nike, defeating claims that Nike infringed a rival’s design patent with its AIR JORDAN XVII basketball shoes and won the appeal to the Federal Circuit.
   
• Defeated a multimillion-dollar patent royalties claim and obtained compensation from plaintiff in excess of $1 million on behalf of defendant, a major software developer.
   
• Won a defense victory for Genentech in multidistrict patent litigation over Columbia University’s recombinant DNA patent. Columbia conceded the case on the eve of defendants’ summary judgment motion on obviousness-type double patenting, giving Genentech and the other defendants a broad covenant not to sue on the patent at issue.
   
• Represented licensing entity in its assertion of CDMA related patents sourced from a renowned Korean research institute.
   
• Represented licensing entity in its assertion of core WiFi standard-essential patents.
   
• Represented licensing entity in its assertion of 3G and GSM standard-essential patents.
   
• Represented licensing entity in enforcement of location-based triggering technology.
   
• Represented Korean manufacturer of memory chip technology in declaratory judgment action against licensing entity, including a successful reexamination against the asserted patent.
   
• Won summary judgment of noninfringement for a Korean manufacturer of outdoor activity equipment and supplies against three patents directed to clip-lights.
   
• Defended Korean manufacturer against claims of infringement over patent for visual aid device, resulting in favorable settlement.
   
• Secured vacatur of multi-million dollar judgment against Korean marine electronics company and dismissal of infringement claims involving marine GPS technologies.
   
• Represented Korean MP3 company in defense of infringement claims involving MP3 technologies, resulting in favorable settlement.
   
• Won summary judgment of invalidity for client VIZIO, invalidating a patent on portable input-output computer systems based on inadequate written description and failure to claim what the inventor regarded as his invention.
   
• Obtained affirmance in the Federal Circuit of favorable District Court Markman ruling for defendant VIZIO against Patent Harbor in patent infringement case against VIZIO’s DVD and Blu-ray players.
   
• Won a complete defense victory in the ITC for respondent VIZIO, prevention exclusion of VIZIO’s Blu-ray players.
   
• Achieved no-money settlement for car parts retailer in hard-fought suit brought by famous carmaker involving numerous design patents and trademarks.
   
• Won reversal by the Federal Circuit Court of Appeals of district court’s denial of attorneys’ fees, with a unanimous panel issuing a precedential opinion holding that the district court had abused its discretion.
   
• Represented manufacturer of MRI safety devices in dispute over ferromagnetic detection technology, resulting in favorable settlement.

Trademark Litigation

• Won summary judgment of no willfulness for use of the trademarks Razor LED and Razor Thin by client, Defendant VIZIO, with its line of flat-panel televisions. As Plaintiff could not show VIZIO selected the marks willfully, to trade off the value of Plaintiff’s “Razor” and “Razr” marks, Plaintiff was barred from seeking disgorgement of VIZIO’s substantial profits. The case settled a week before trial with no payment by VIZIO and instead, Plaintiff buying VIZIO’s Razor LED and Razor Thin marks.
   
• Won victory for VIZIO before the Federal Circuit Court of Appeals in “Vexatious” IP Case regarding attorneys’ fees.
   
• Won a directed verdict for defendant Mattel, at the close of the plaintiff’s case, in a trademark infringement trial involving Mattel’s Pearl Beach BARBIE doll line, and won the appeal to the Ninth Circuit.
   
• Achieved a substantial payment to plaintiff K-Swiss, as well as a consent decree and worldwide permanent injunction, on the eve of a five-week jury trial against Payless ShoeSource for multiple counts of infringement of K-Swiss’ five-stripe and toe box trademarks and Classic trade dress.
   
• Won a jury verdict of several million dollars, a permanent injunction and attorneys’ fees for plaintiff Mattel after a jury trial against a maker of toy cars who infringed Mattel’s HOT WHEELS trade dress.
   
• Won a defense victory for defendant Nike in its landmark trademark case against Adidas over Nike’s right to use two stripes on athletic apparel; Adidas filed a broad “covenant not to sue” releasing Nike from its trademark infringement claims and committing not to sue Nike over any two-striped athletic apparel or shoes throughout the United States.
   
• Achieved a permanent injunction and damages for Red Bull against the maker and distributor of Arctic Bull energy drinks, in a dispute over use of a mark confusingly similar to the RED BULL mark and trade dress.
   
• Achieved a permanent injunction and damages for SHFL entertainment, against a distributor of games infringing SHFL’s THREE CARD POKER, CASINO WAR and PAIR PLUS trademarks.
   
• Won affirmance by the Ninth Circuit of defense verdict in favor of Mattel in an appeal from a trademark trial involving reverse confusion.

Copyright Litigation

• Won unanimous defense verdict for DIC Animation City, Hallmark, United Feature Syndicate, Mattel and Live Film and Mediaworks, Inc. in a several week jury trial over copyright infringement claims by the widow of a famous screenwriter, upheld on appeal to the Ninth Circuit.
   
• Won summary judgment for defendants the Disney Channel, Warner Home Video and others in a copyright infringement suit over shows and products derived from children’s animated television programs.
   
• Won summary judgment for defendant Topson Downs of California, invalidating a copyright for textile design and finding no infringement as to three other textile design copyrights asserted by plaintiff Meridian Textiles.
   
• Won summary judgments in defendant Mattel’s favor in both federal and state court suits when American First Run Studios accused Mattel of infringing its “Tarzan” copyrights and other rights with Mattel’s Tarzan action figures, and won the appeals of both judgments in the Ninth Circuit and California Court of Appeals, respectively.
   
• Won cross-border actions in the U.S. and Germany against Greiner & Hausser, a German toy company that sought to rescind its assignment of copyrights and patent rights in the Bild Lilli doll used in the creation of Mattel’s BARBIE line.
   
• Won summary judgment of noninfringement and $500,000 in sanctions, upheld on the merits by the Ninth Circuit, when Mattel was targeted in a frivolous copyright infringement suit in which the plaintiff sought $2 billion for alleged infringement of its fashion doll copyright by certain Mattel BARBIE dolls.
   
• Won reversal of a preliminary injunction on appeal for defendant Kaiser Permanente, after taking over a case in which the company had been preliminarily enjoined from using its library of advertising and marketing photographs on the ground that these works (already paid for by Kaiser) were owned by the photographers.
   
• Achieved a permanent injunction and damages for SHFL entertainment, against a distributor of games infringing SHFL’s THREE CARD POKER and CASINO WARS copyrighted layouts.
   
• Won summary judgment on liability for direct and contributory copyright infringement on behalf of Plaintiff authors in a suit against Los Angeles Unified School District employees who sent out unauthorized electronic copies of Plaintiffs’ books to school employees and others.
   
• Won affirmance on the merits by the Ninth Circuit of Rule 11 sanctions award against opponent who filed a frivolous copyright infringement suit over Mattel’s BARBIE dolls.

Trade Secret and Unfair Business Practices Litigation

• Won a three-month jury trial for CalComp involving computer protocol in high-speed color printers, obtaining a directed verdict on multimillion-dollar trade secret and fraud claims.
   
• Won substantial compensatory and punitive damages for plaintiff Osterloh & Durham (now Chubb) Insurance after a two-month trial over theft of trade secrets, conversion and interference with business relationships.
   
• Won a unanimous jury verdict awarding several million dollars in compensatory and punitive damages to plaintiff Hathaway Dinwiddie Construction Company after a three-month jury trial involving fraud, contract and unfair business practice claims, upheld by the Ninth Circuit.
   
• Represented Korean mobile device developer in dispute over misappropriation of trade secrets, resulting in favorable settlement. 
   
• Won a quick dismissal for Disney of a case under the California Unfair Practices Act over Disney’s alleged failure to warn children of the dangers of smoking in its G-rated animated films (spanning some 40 years) in which animated characters were shown smoking, and avoided a class action, despite the success of such suits against other companies.
   
• Won summary judgment for Mattel in a suit for alleged monopolization of the fashion doll market under the Sherman Act and California Cartwright Act.
   
• Successfully defended Fleishman Hillard over public disclosure issues in a high-profile food contamination suit against Jack in the Box, arising out of Fleishman Hillard’s role as public relations advisor to the company after several patrons were infected with E. coli bacteria following their consumption of meals at Jack in the Box.

Appellate Practice

• Won affirmance in the Federal Circuit of a summary judgment of patent noninfringement on behalf of Nike, after extensive oral argument on the impact of certain drafting conventions in design patent cases.
   
• Won affirmance of defense judgment in favor of Roche and denial of rehearing before the en banc Federal Circuit and the United States Supreme Court in a patent infringement and ownership dispute against Stanford University.
   
• Won affirmance by the Ninth Circuit of defense verdict in favor of Mattel, in an appeal from a trademark trial involving reverse confusion.
   
• Won reversal and remand for Abbott Laboratories in a patent case taken over post-trial, with the Federal Circuit affirming a post-judgment ruling setting aside willfulness, vacating an injunction prohibiting Abbott from selling its HCV genotyping products, and reversing and remanding for a new trial on invalidity.
   
• Won affirmance of summary judgment by the Ninth Circuit in favor of Mattel, in a copyright action over alleged infringement by Mattel's TARZAN dolls.
   
• Won reversal by the Ninth Circuit of a preliminary injunction entered against Kaiser Permanente in a copyright infringement suit taken over by the firm.
   
• Won affirmance on the merits by the Ninth Circuit of Rule 11 sanctions award against opponent who filed a frivolous copyright infringement suit over Mattel's BARBIE dolls.
   

Life Sciences

• Won summary judgment for defendant Roche, invalidating three Stanford HIV test patents for obviousness, won the case on appeal to the Federal Circuit and before the en banc Court on rehearing, and won decisive victory in favor of Roche in the U.S. Supreme Court.
   
• Won partial summary judgment for defendant Monsanto in a patent infringement case over bovine growth hormone, eliminating half of the products at issue; case settled on the eve of trial.
   
• Won post-trial for defendant Abbott Laboratories in a patent infringement case lost at trial by another firm, convincing the district judge to set aside the jury’s verdict of willfulness and convincing the Federal Circuit to uphold that ruling, vacate an injunction prohibiting the sale of Abbott’s HCV genotyping products and reverse and remand the case for a new trial on an invalidity issue; settlement followed.
   
• Won a defense victory for Genentech in multidistrict patent litigation over Columbia University’s recombinant DNA patent, obtaining a broad covenant not to sue on the patent at issue.
   
• Achieved substantial settlement for plaintiff Sonique Surgical Systems in dispute over licensing of ultrasonic liposuction patents.
   
• Represented a major pharmaceutical company in a Paragraph IV litigation under the Hatch-Waxman Act against six companies, all competing for the ability to manufacture the generic version of the client’s branded product. Protected the client’s highly profitable revenue stream generated by the branded product and obtained a favorable settlement with all six generic manufacturers.
   
• Advised a major pharmaceutical company desiring to manufacture a generic product on issues relating to the Paragraph IV letter and the timing and filing of the Abbreviated New Drug Application under the Hatch-Waxman Act.
   
• Conducted confidential analysis for investment firm seeking to invest in pharmaceutical companies. Advised on the timing and effects of revenue streams taking into account various facets including FDA approvals, the Hatch-Waxman Act, pending and possible litigations, capitalization, strength of patents and market pressures.

Results

News

Events

Hot Topics

Thought Leadership