Skip to Main Content

REPRESENTATIVE EXPERIENCE

IP Litigation

Successfully acted for Caesarstone in appealing the decisions of the Australian trade marks office to the Federal Court of Australia. We successfully defended 2 trade mark oppositions and a cancellation action filed by Ceramiche Caesar.

Advised SNF Australia, an Australian company which manufactures chemicals used in water treatment (particularly mining), in relation to Patent Oppositions in the Australian Patents Office, and patent invalidity and patent infringement proceedings in the Federal and High Court. We have acted on various proceedings involving innovation and standard patents and patents of addition.

Representing the new venture behind the creative team of the Colette concept store, Nous Concept, in the defense of their trademarks against a pottery and culinary art store owning a similar trademark and a German company owning a similar trademark in approaching services.

Defended on line travel provider KAYAK in patent infringement suit involving travel services software systems. Obtained partial summary judgment of patent invalidity and non-infringement, final summary judgment of patent ineligibility, exceptional case order, and fee award. Affirmed on appeal.

Represented online native advertising platform in lawsuit brought by competitor seeking to shut down platform. The matter was important not just for our client’s ability to continue operating, but for all internet service providers who are protected by the federal grant of immunity for user generated content under the Communications Decency Act. After expedited discovery, we defeated a preliminary injunction motion in New Jersey federal court.

Defended clients Matsutek Enterprise and BISSELL Homecare in Certain Robotic Vacuum Cleaning Devices,  against patent infringement claims by iRobot covering robotic vacuum cleaner technology. While developing excellent non-infringement and invalidity arguments against iRobot during litigation, we also countersued iRobot in China and the U.S. with our own patents. After six months of intense litigation, we obtained a very favorable settlement for our clients, as the settlement terms of the two previously settled Respondents were far more limiting than our clients and even banned from entering the U.S. market. 

Assisted a German company in pending litigation in relation with numerous patents acquired by our client, further to the assignor of such patents acting in bad faith and having assigned its patents twice to two subsequent assignees. 

Representing a manufacturer of industrial material in the aftermath of the termination of a distribution agreement in France and infringement litigation further to the continued unauthorized use of its trademark by former licensee.

Defended AMVAC in inventorship and royalty dispute relating to AMVAC’s patent for an herbicide. Case settled after AMVAC obtained order transferring case to C.D. Cal. 

Defended Matatenat, the creator of a unique, geometric mask head shaped bottle for tequila, and U.S. importer Stoller Imports against trade dress infringement allegations brought by Globefill Incorporated, owner of a skull shaped bottle for tequila. We negotiated a confidential settlement of the case prior to a preliminary injunction hearing. 

Represented CMU for a matter in the Northern District of California for willful direct and indirect infringement of the method claims of U.S. Patent Nos. 6,201,839 and 6,438,180 (the “CMU Patents”).K&L Gates previously enforced the CMU Patents against Marvell Technology Group Ltd. and Marvell Semiconductor, Inc. and was successful in obtaining a $1.17 billion verdict in CMU’s favor.  The verdict against Marvell was the largest in the United States in 2012 as reported by The National Law Journal and the third largest ever in a patent case.

Represented Montrose Environmental Group, Inc. in a federal court action in the Eastern District of Washington against former Montrose employees and their new competing business, Zephyr Air Quality Services, LLC. Montrose alleged claims under the Defend Trade Secrets Act, breach of contract, breach of duty of loyalty and unjust enrichment. Montrose obtained preliminary and permanent injunctions and a confidential settlement prohibiting further unfair competition and prohibiting the use and obtaining the return of all trade secrets at issue in the case.

Represented German art gallery, Priska Pasquer regarding an alleged art photograph infringement, the gallery is internationally renowned in particular for the distribution of photographic works. The litigation presented interesting issues in relation to the international location of the different parties involved and the specific protection of photographic works by the French Intellectual Property Law. 

Represented Ohio State Innovation Foundation in district court litigation asserting a patent directed to the efficient use of network bandwidth over the Internet.

Represented Rutgers University and successfully obtained summary judgment of contract breach, which resulted in a favorable settlement to the client on the eve of trial.

Defended the Vibram entities in a federal court action in the Western District of Washington.  Plaintiffs objected to Vibram naming a shoe the FiveFingers Bikila, and sued for violation of the Washington Publicity Rights Act, false designation of origin in violation of the Lanham Act, violation of the Washington Consumer Protection Act and unjust enrichment.  We prevailed on summary judgment, arguing that all claims were barred by the applicable statutes of limitations and laches due to plaintiffs’ knowing delay in asserting their claims.  

 Settled in mediation for a walk-away after the trial team demonstrated that Defendant had no viable case.Trade Secret Litigation. 

Represent anti-malware software company in unfair competition/commercial disparagement claim against competitor who blocked and disabled consumer's ability to download client's software product.  Appealed adverse dismissal that was based upon immunity under Section 230 of the Communications Decency Act.  The Ninth Circuit reversed the dismissal finding that Section 230 immunity does not apply to anti-competitive behaviour.

Represented Alnylam in seeking declaratory judgment of non-infringement of five Silence Therapeutics patents by Alnylam’s RNAi therapeutic ONPATTRO™ (patisiran). 

Defended Wombat Security Technologies, Inc. in a patent litigation case. PhishMe, Inc. sued our client, Wombat Security Technologies, Inc., alleging that it is a competing company infringing on three PhishMe patents. The patents generally claim methods and systems for identifying and processing email messages in connection with a simulated phishing email campaign that can be used to educate and train employees about the dangers of phishing attacks. 

Acted as counsel for Getac to defend against various Trademark Opposition Applications that Veritas Technologies LLC filed with the TTAB against Getac for its use of the VERETOS mark in connection with its data storage, management, and recovery services. We are assisting Getac with defending against applications and have recently resolved this matter successfully for Getac with Getac’s VERETOS marks getting issued soon in the United States, Europe, and Taiwan.

Advised Fabergé‚ (UK) Ltd., a jewelery firm, on a trademark dispute.

Represent A&F opposing Tyra Bank’s Modelland Holdings, LLC (“Modelland”) trademark applications for the term HOUSE OF FIERCE. For over 20 years, A&F has used the mark FIERCE.  It also owns many “FIERCE formative” marks for personal care and related products. Modelland applied to register the term HOUSE OF FIERCE with overlapping goods and services to those of A&F. The TTAB opposition is currently suspended.  

Advised Amazon.com in CustomPlay v. Amazon.com, Inc. - Alleged infringement of three patents related to Amazon’s X-ray video annotation service.  Defeated preliminary injunction and obtained a stay of the case pending proceedings to invalidate the patent before the U.S. Patent Office.

Handling Boxlight’s IP portfolio of patents and trademarks.

Advised Britax R”mer Kindersicherheit GmbH in relation to patent infringement actions and cancellation proceedings against several competitors' patents/EU patents concerning child restraint systems.

Acting on behalf of wholesale company in respect of design and trademark protection strategies, IP portfolio management and acting in a Supreme Court proceeding against Euromark Limited.

Represent Helly Hansen Inc. in a high profile trademark dispute against Off-White in the Northern District of Illinois involving Helly Hansen’s iconic stripe mark. 

Counseled for HOOTS RIGHTEOUS WINGS (“HOOTS”) trademark portfolio, a recent new “fast-casual” concept for the famous HOOTERS brand. We provide clearance and counseling related to use and registration of the new HOOTS marks and logos to be used in the expansion of this new concept.  

Advised Hyundai Motor Europe on unexhausted trademark rights to stop grey market imports from various Balkan countries into the European Economic Area.

Counsel for this leading yogurt brand SIGGI’S in its global expansion and are the primary U.S. and global trademark and copyright . This representation is significant as we have represented them for over 10 years and continuing to represent them as counsel for all trademark work relating to the global expansion.  We have obtained multiple wins for the client globally by ensuring no infringement of its valuable brand.

Defended client’s IFIBER registration in cancellation proceeding that resulted in maintaining the registration of our client’s mark and abandonment of the petitioner’s application. Settled during discovery period pursuant to confidential settlement agreement.  

Represent opponent in opposition proceedings and in opposition appeal proceedings against European Patent in the field of cryptography and security chip technology.

Represent Kipling in its enforcement and protection of the overall look of its iconic Kipling bag. 

Advising and acting for Leica Microsystems IR GmbH in relation to various trademark licensing issues with Leica Camera AG.  We were able to find amicable solutions.

Prepared trademark assignment and license agreements distributing assets and use of long-held trademarks of the non-profit trade association for the magazine media industry as the organization stripped down its operations. 

Represent Mexico Foods, LLC d/b/a El Rancho (“El Rancho”) in its declaratory judgment lawsuit for non-infringement of defendant La Michoacana Meat Market TM Holdings, LLC’s (“La Michoacana’s”) trademark. 

Advised Nike on an appeal to the General Court of the European Union regarding an invalidation action brought by Carrefour Supermarkets against the iconic Converse sole 3D trade mark.

Represented POC Sweden AB, a designer of sporting gear and equipment, in patent infringement (preliminary injunction) and invalidity proceedings concerning a new helmet technology that is designed to protect from oblique impacts.

Advising Seafolly, a leading and iconic Australian swimwear and lifestyle brand, in copyright infringement proceedings which have been issued in Australia, Canada and France regarding third parties that it alleges infringe its fabric prints.

Achieved willful patent infringement verdict for SIMO Holdings, Inc. in a five-day jury trial.  The jury awarded our client a royalty amounting to 99% of the requested damages. Judge Rakoff enhanced damages by 30% based on willfulness finding. 

Advised Simpson Performance Products, Inc., a motorsports parts supplier, in trademark infringement proceedings and cancellation proceedings before the Deutsche Patent- und Markenamt (DPMA) and European Union Intellectual Property Office (EUIPO) concerning a bad faith application. 

Counsel for the Clarke Group in a Lanham Act and trade secret dispute involving chemical fire retardants. Competitor alleged that the Clarke Group wrongfully acquired trade secret formula for, and application of, fire retardant chemical for cedar shingles. Inventor of the alleged secret formula had previously applied for patent disclosing fire retardant formula.  The Clarke Group argued that the formula had been legally acquired from the inventor and was generally known to practitioners in the field.

Maintain the trademark portfolio for global non-profit organization. We successfully challenged the unauthorized use of the client’s mark by an organization that separated from the client’s organization.   

Represented Gillette in defending the exclusivity of its famous billion dollar brand GILLETTE.The matter resolved favorably for our client and Clear H2O abandoned its application to register the mark GELLET. 

Represented the University of Oregon in a 500 million dispute before the District Court of Oregon and the Trademark Trial and Appeal Board involving the intellectual property related to  a suite of early language learning assessments called “DIBELS”.  Research related to these educational tools was funded by federal and state grant funds, including the No Child Left Behind Act.  The dispute lasted over six years and was recently resolved with a favorable settlement in August 2018.

Advised our client who is the owner of the URBAN ALE trademark for beer. La Sirene is selling a beer marked URBAN PALE. Our client sued for trademark infringement and La Sirene filed a cross-claim seeking to cancel our client's trademark. La Sirene succeeded in its defenses to the trademark infringement claim and succeeded in cancelling our client's URBAN ALE trademark. Our client has filed an appeal to the Full Federal Court.

Tried case for defendant WGBH against claims that WGBH owed $19 million in allegedly unpaid royalties for the Martha Speaks animated public TV series based on books by author Susan Meddaugh. After trial, court entered judgment in 2018 of no actual damages and $100 in nominal damages. 

Defended WWE against claims of patent infringement made by non-practicing entities. We resolved these and other matters with favorable settlements, often by enforcing a third party to defend and indemnify. 

Represented Tyler, the largest software company in the nation solely focused on providing integrated and technology services to the public section, in a dispute over evergov.com domain name, which was confusingly similar to client’s ENERGOV trademark registration, and failed to use the domain name in connection with the bona fide offering of goods and services, instead using the domain name to solicit personal information through a website that encouraged users to upload documents for payment to local government. Tyler received a favorable decision at the forum, awarding the transfer of the domain name to Tyler. 

Represent  Regents of the University of Minnesota in a willful direct and indirect infringement of the method claims of U.S. Patent No. 5,859,601 (the “‘601 Patent”).  The ‘601 Patent claims a method for encoding data to be written to a magnetic disk in an HDD that substantially increases the accuracy with which the data are subsequently read off of those magnetic disks, thereby allowing for increased data density.

Represented opponent in opposition proceedings and in opposition appeal proceedings against European Patent in the field of dental technology. Patent was revoked by the Board of Appeal of the European Patent Office. 

Counselling client in strategic campaign to prevent client's customers from patent assertions by bringing, on a regular basis, oppositions against European patents of a non-practicing entity that threatened client's customers

Advise  Swedish-based global medical devices manufacturer on IP enforcement issues in the UK and Europe. advised the client on enforcing its design rights against competitors with respect to a range of successful wound care products. We also advised the client on a trade mark dispute with a UK manufacturer of parallel imported wound care products. 

Return to top of page

Email Disclaimer

We welcome your email, but please understand that if you are not already a client of K&L Gates LLP, we cannot represent you until we confirm that doing so would not create a conflict of interest and is otherwise consistent with the policies of our firm. Accordingly, please do not include any confidential information until we verify that the firm is in a position to represent you and our engagement is confirmed in a letter. Prior to that time, there is no assurance that information you send us will be maintained as confidential. Thank you for your consideration.

Accept Cancel