REPRESENTATIVE EXPERIENCE
Consumer Electronics
Coordinated all trademark matters for a US consumer electronics company and its related brands and managed the global trademark portfolio. Addressed global ownership issues and enforcement. Conducted training programs for the client’s teams on trademark use and the latest developments in marketing and advertising issues. Handled all global clearance for the client's new brands, sub-brands, and taglines.
Represented a headphone manufacturer in a plaintiff’s-side patent infringement campaign against five defendants across five different courts. The matter included an IPR component and involved litigation in multiple federal courts, multiple patent challenges to the USPTO, and international arbitration, which was settled on the eve of trial. Related actions were presented to the USPTO and appealed to the US Federal Circuit Court.
Guided a small startup developing LiDAR primarily for personal and commercial consumer automobiles through an active and complex non-notified inquiry and review before the Committee on Foreign Investment in the United States.
Represented a leading global technology company in a class action lawsuit where it was alleged that our client used “session replay” and other technology on its website to capture information about web users, in violation of privacy laws. In August 2023, the federal district court granted our client’s motion to dismiss in part, dismissing that part with prejudice.
Represented an Australian-owned tier 1 supplier of automotive, mobile, and consumer products and services in a long-running and complex commercial litigation matter. The case involved complex legal issues concerning Anton Piller search and seizure orders; Mareva injunction freezing orders; fraud; payment of secret commissions/bribes; breaches of contractual, statutory, and fiduciary obligations; misuse of confidential information; copyright infringement; inducement of breaches of contract; and the ability of parties to refuse inspection of documents (discovered in the usual course or seized pursuant to search orders) on the grounds of privilege against self-incrimination and privilege against self-exposure to civil penalty.
Assisted a consumer product company with an Opposition based upon likelihood of confusion, failure to use the mark, and fraud filed against a then-pending US trademark application for a stylized mark. Researched to calculate the likelihood of success and probability of default judgment upon filing the Opposition. The matter resulted in a successful Notice of Default.
Assisted a consumer product company with a letter of protest based on likelihood of confusion filed against a then-pending US trademark application. The application was accepted by the USPTO as substantively influential in preventing approval of a confusingly similar mark.
Advised an Israeli cutting-edge communication devices manufacturer and distributor on the management of a pre-litigation case involving one of the client's main distributors claiming for an abrupt termination of commercial relationships. Supported the client in drafting of a strategy and the responses provided to the claiming distributor, dismissing our client's liability.
Advised a large, high-end consumer electronics manufacturer in relation to offering an extended warranty against consent to receive marketing emails.
Represented a cutting-edge experiential technology provider in drafting and negotiating technology licensing, hardware display sale, and technology services agreements of its bespoke hardware display panels and corresponding parallel reality software for installation and operation at an international US-based airport, the pilot installation of the technology. The experiential technology leverages a proprietary display pixel and other proprietary technology that work together to output millions of calibratable rays of different colors and brightnesses to enable simultaneous display of entirely different images and content to thousands of in-person individuals. Drafted a complex suite of documents reflecting a hardware display sale, on-premises software license, and an SaaS operational dashboard while navigating risk allocation. In addition to operation of and access to the software, the transaction necessitated consideration of novel areas of responsibility for, and consent of unrelated individuals interacting with, the technology; a host of intellectual property protection issues ranging from the access to and disposition of proprietary display and software components to the origin of the actual content displayed on-screen; and increasingly complex issues of privacy and data security, including individual tracking and data collection and related consumer protection and transparency issues.
Represented a leading global technology company in a threatened class action lawsuit where it was alleged that our client used technology that was supposed to allow consumers to “reject cookies” but that technology purportedly failed and recorded non-essential consumer data, in violation of privacy laws. The claims raised questions of whether the company’s conduct could be deemed to be intentional, and whether its timely action to correct any alleged failures in its technology absolved it of any liability to consumers.
Advised a US-based headphone manufacturer with product compliance requirements, including the regulation of batteries, electronics and electronic waste; product marking, including CE and UKCA marking; and chemical compliance.
Assisted a Taiwanese fabless semiconductor company on employment matters, including advising on the company’s hiring of apprentices and leave of absence practices in India.