To be successful in intellectual property litigation, a lawyer must be a master of two essential skills. The first is a comprehensive knowledge of the law and of the important, often highly complex technical issues. The second is the ability to cost effectively manage large commercial litigation. The litigators in our firm have these twin capabilities, which is why we achieve favorable results protecting and defending our clients’ intellectual property rights. Whenever possible, we try to find ways for clients involved in these disputes to avoid the cost and disruption of litigation. But when formal adversary proceedings become inevitable, we vigorously and tenaciously represent our clients to help them reach victory at trial or a settlement that achieves their business goals.
We represent clients seeking to enforce their patents as well as those defending against claims of patent infringement. When acting on behalf of plaintiffs, we focus on the best strategies to stop infringement as soon as possible and obtain damages for past violations. For defendants, we work to narrow the asserted patent’s claims construction and undermine its validity so as to avoid infringement, sometimes without the need for a trial. In either situation, the lawyers of our firm steep themselves in the case’s technology and then distill even the most complex concepts down to a compelling, clear and concise essence that judges and individual jurors will readily understand and believe.
Section 337 Actions
Brought under the Tariff Act of 1930, Section 337 actions seek to bar imports into the United States that infringe U.S. patent, trademark or other intellectual property rights. Both domestic and foreign businesses with a U.S. presence can initiate these proceedings, which are tried before the U.S. International Trade Commission. These fast-track proceedings often take less than nine months to reach trial before an administrative law judge – half the time it would take to get to trial in a federal district court. Our lawyers have extensive experience dealing with these expedited proceedings, and they have defeated infringement claims and protected our clients' intellectual property rights across a broad range of technologies.
Trademark and Trade Dress Litigation
Clients who have created value in their brand need trademark and trade dress protection. We handle a broad range of disputes from domain names, logos, and word marks to retail packaging, product design, and architectural ambiance. Our attorneys counsel clients on effective strategies to protect the goodwill and brand value they have created, including filing oppositions to pending trademark applications with United States Patent and Trademark Office and obtaining or defending against preliminary injunctions in state or federal court.
Unfair Competition and False Advertising Claims
Our litigators have extensive experience pursuing and defending claims for unfair competition and false advertising under the Lanham Act and state law. What constitutes “unfair” in one business may not be in another. We work closely with clients to understand the category and channels of trade, which is essential to presenting a persuasive argument on the key issue of consumer confusion. Whether the dispute focuses on unauthorized substitution, comparative advertising, commercial disparagement, or other deceptive trade practices, our litigators help clients find effective solutions.
Trade Secret Misappropriation
Former employees and competitors can present thorny legal problems that threaten the confidential information that gives businesses a competitive edge. We have brought and defended against claims of trade secret theft for everything from salsa to source code. Our attorneys also counsel clients on strategies for keeping trade secrets under the right wraps in advance of litigation so that, when the misappropriation becomes apparent, we and the client can unequivocally prove the validity of the claim and the harm that will follow, and so obtain quick relief.
Copyright Litigation and Licensing Disputes
Our litigators enforce copyright protection and defend against claims of infringement for clients with proprietary interests in computer software and architecture, as well as literary, musical, and visual works. We understand the limitations and exceptions to copyrights, such as fair use, and assist clients with disputes involving works-for-hire, derivative works, and licensing.
- AIA Engineering Limited v. Magotteaux International S/A (U.S. Dist. Ct., M.D. TN and ITC) – represented Indian client (AIA) accused of infringement of patent on composite wear component; on summary judgment in District Court, patent held invalid and ITC withdrew exclusion orders pending patentee’s current appeal.
- El Diablo, Inc. v. Mel-Opp & Griff, LLC (King County, WA Sup. Ct.) – represented defendant restaurant owners and others accused of infringing the plaintiff’s restaurant’s trade dress and for misappropriation of trade secrets; settled after 5 weeks of trial (all plaintiff’s case) for a fraction of the amount demanded.
- In re Medtech Products, Ltd. (ITC) – represented Indian specialty condom manufacturer in patent infringement action in ITC; after full trial before administrative law judge, appealed to Commission, who dismissed action, which was confirmed on appeal to the Federal Circuit.
- QI3, Inc. v. Eveready Industrial Services Corp. (U.S. Dist. Ct., W.D. WA) – represented maker of non-invasive pipeline inspection tools (called intelligent pigs) in trade action for trade secret misappropriation and for declaration of noninfringement of patent; confidential settlement after extensive discovery.
- Rosetta Stone, Ltd. v. Topics Entertainment, Inc. (U.S. Dist. Ct., E.D. VA) – represented publisher of language learning software in action brought by Rosetta Stone for trademark and trade dress infringement and for false advertising; confidential settlement after extensive discovery and mediation.
- Microsoft Corp., ProClarity Corp. - patent infringement litigation regarding reporting enhancement software used in connection with the SQL Server database platform. See Timeline, Inc. v. ProClarity Corp., 2007 U.S. Dist. LEXIS 70389 (W.D. Wash. 2007); Timeline, Inc. v. ProClarity Corp. and Microsoft Corp., 2007 U.S. Dist. LEXIS 38669 (W.D. Wash. 2007); Timeline, Inc. v. ProClarity Corp. and Microsoft Corp., 2007 U.S. Dist. LEXIS 26857 (W.D. Wash. 2007); Timeline, Inc. v. ProClarity Corp. and Microsoft Corp., 2007 U.S. Dist. LEXIS 7134 (W.D. Wash. 2007).
- ImageX.com, Inc. - defense of patent infringement claims regarding preflighting software used in printing images transmitted across the Internet.
- Life Fitness, Inc. - prosecution and defense of utility and design patent infringement claims and counter-claims regarding exercise treadmills and unfair competition and patent mismarking claims regarding the public promotion of patented features.
Obtained a landmark ruling from the U.S. Court of Appeals for the Ninth Circuit that the academic speech of a university professor, which is part of his official job duties, is protected by the First Amendment. Demers v. Austin, 729 F. 3d 1011 (9th Cir. 2013)
Co-counsel in aggressive and successful defense of company against patent litigation claims through trial, appeal and post-trial litigation.
Immediate enforcement of various noncompete and confidentiality agreements in court by obtaining temporary restraining orders and preliminary injunctions in favor of employers. Successful defense of individuals against claims for violation of noncompetition agreements and trade secrets law, ranging in value from $1 million to $10 million.
News & Events
- 28 GSB Attorneys Named to The Best Lawyers in America® 2019 List; Two Portland Lawyers Named ‘Lawyer of the Year’GSB Newsroom, 8.15.18
- GSB Newsroom, 7.11.17
- GSB Press Release, 8.15.16
- Garvey Schubert Barer Continues Growth, Adds Litigators Gary Grenley and Paul Trinchero to Portland OfficeGSB Press Release, 9.6.11
- Cannabis Business Blog, 11.15.18
- Duff on Hospitality Law, 10.24.18
- Possible Resolution for Circuit Split on Copyright Issue? U.S. Supreme Court Accepts Cert on Fourth Estate Public Benefit Corp. v. Wall-Street.com LLCSports & Entertainment Beat, 7.16.18
- Sports & Entertainment Beat, 8.29.17
- Panel DiscussionAtlanta, GA, 10.25.18
- "Protecting Intellectual Property," Advising the Small Business Client: Legal Issues for the Emerging Business Owner, Washington State Bar Association CLESpeaking EngagementSeattle, WA, 9.22.11
- "Pleading Intent To deceive The Public in False Patent Marking Complaints," Intellectual Property Inn of CourtSpeaking EngagementSeattle, WA, January 2011
- "Key Issues in International Licensing/Panel Discussion," Licensing Essentials: Practical Tools and Tips in Intellectual Property Licensing Seminar, Washington State Bar AssociationSpeaking EngagementSeattle, WA, 5.13.10
- Speaking EngagementSeattle, WA, 5.12.10
- Speaking EngagementSeattle, WA, 5.11.10
- "Is Social Networking an Irresistible Force Pushing Against Traditional Copyright Protection?" Effective Strategies for Copyright Counseling, Management and LitigationSpeaking EngagementRenaissance Seattle Hotel, Seattle, WA, 4.23.09
- "Fair Use and Other Copyright Misuse Defenses," Copyright Law Counseling, Management and Litigation ConferenceSpeaking EngagementRenaissance Seattle Hotel, Seattle, WA, 4.14.08
- "Recent Developments in Trade Secrets Law," Trade Secrets Litigation and Transactions ConferenceSpeaking EngagementRenaissance Seattle Hotel, Seattle, WA, 11.8.07
- "Fair Use, First Amendment and Copyright Misuse Defenses," Copyright Counseling, Management, and Litigation ConferenceSpeaking EngagementBellevue, WA, April 2007
- "Litigating Intellectual Property Disputes in the United States District Court for the Western District of Washington," Annual Intellectual Property Institute of the Intellectual Property Section of the Washington State Bar AssociationSpeaking EngagementSeattle, WA, March 2006
- Electronic Commerce & Law Report (Bloomberg BNA), 12.7.16
- Garvey Schubert Barer, 1.23.15