Cases
Representative Matters: Intellectual Property
Represented Quest Diagnostics in the sale of a stream of royalty revenue from commercialization of the drug c
idate Ibrutinib to Royalty Pharma for $485 million in cash.
Represented a large telecommunications company in defending patent infringement
trade dress claims involving 11 utility patents dealing primarily with the electrical circuitry of the accused phone
design patents covering the design of the accused mobile radio telephone. The case included TRO
Preliminary Injunction hearings, a motion to consolidate,
11 Markman proceedings. The plaintiff submitted a satisfactory settlement proposal during the summary judgment phase, which was accepted.
Represented a plaintiff software designer in a breach of license arbitration under the rules of the American Arbitration Association. The claims asserted also included copyright infringement. The matter ended in an arbitration award in favor of our client.
Represented an automotive supplier in the defense of a patent infringement claim based on a patent allegedly covering a particular process for injection molding of plastic. This matter involved complex indemnity
co-defendant issues in addition to the more traditional infringement
invalidity issues.
Represented an equipment manufacturer in connection with a series of patent infringement claims. Each claim was resolved without litigation
without payment of any license fees.
Represented a large European chemical company in connection with a trial de novo following a favorable interference ruling from the Patent & Trademark Office. The case involved a priority of invention
reduction to practice issues.
Worked with several companies in connection with a patent infringement claim against companies practicing a particular st
ard. These cases presented numerous issues beyond issues of infringement
validity, including the alleged duty of parties participating in st
ards committees to disclose their respective IP positions.
Represented a computer component manufacturer in federal court
before the International Trade Commission regarding patent infringement claims. This case related to the technology involved in how computers upscale data sent for one screen size to a computer with a larger screen. The matter involved proceedings before the ITC where the action was resolved
Represented numerous companies in the recordation of patent, trademark,
copyright assignments, normally in connection with securitized financings.
Represented an educational institution in a trademark infringement case. The case resulted in a permanent injunction being issued against the defendant
the defendant paid our client's fees
costs.
Represented a major automobile retailer in a trademark infringement case we filed on its behalf. The defendant ceased using our client's trademark to resolve the matter.
Represented an educational institution in connection with the misappropriation of the school's trademark. We assisted the client in obtaining a registered trademark
pursuing those who misappropriated our client's trademark.
Represented a healthcare company in an action to protect its trademark from an infringing name. The defendant paid a substantial sum
changed its name to resolve the matter.
Represented venture banks
other companies in a wide variety of intellectual property based financial restructurings, investment enforcement proceedings
bankruptcy proceedings. Incorporated h
ling a substantial number of intellectual property sales
licensing transactions. Deep experience with the rights of intellectual property licensees
licensors under 11 U.S.C. 365(n).
Represented clients in a wide range of intellectual property issues, including ownership of inventions
copyrighted works, rights under a wide range of licensing arrangements, programs to strengthen trademark rights
the establishment of corporate procedures to reduce risk on unintentional copyright or trademark infringement.
General Litigation
Represented the owner of a business in defending a claim that the plaintiff was a 50% owner. The case went to trial
judgment was entered in favor of our client, the owner.
Represented an insurer in defending a property damage claim under the insurance policy. The case went to trial
judgment was entered in favor of our client, the insurer.
Represented the official sanctioning organizations for professional racquetball in an antitrust action involving its policy for designating its official ball. The case was vigorously contested, even after the plaintiff filed a bankruptcy petition. We were successful in getting our client dismissed without having to pay anything in settlement.
Represented the lender in a lender liability lawsuit arising from a bankruptcy precipitated by the lender's refusal to renew the company's secured lines of credit. We won the case on a motion for summary judgment. The ruling on appeal established that a plaintiff could not recover non-economic losses in California lender liability cases. We h
led the underlying bankruptcy by proposing
implementing a plan of reorganization.
Represented the defendant in a RICO claim asserted against the defendant
developer of a large multi-use real estate development in San Diego. The case presented unusual issues regarding the st
ing of the plaintiff
the scope of the RICO statute. We prevailed in getting our client dismissed without any contribution from our client.
Represented a defendant in connection with multiple fraud claims arising from a series of limited partnership investments in properties acquired from a bank REO department. Our client was served shortly before one of the cases was scheduled for trial. This case involved the alleged responsibility of a lender to the investors of its alleged joint venture partner. The plaintiffs also alleged the lender made direct representations to individual investors. The legal issues revolved around the applicability of the D'Oench Duhme doctrine
the scope of civil RICO. We successfully moved to continue the trial. We were able to jump into the case
get our client dismissed from the case without any contribution by our client.
Represented a group of Norwegian companies that were defrauded in connection with a complex loan scheme whereby certain Hong Kong
Canadian companies offered to lend the Norwegian companies funds at a favorable rate provided the funds were secured by a letter of credit. The Hong Kong company called the letters of credit
the Norwegian companies lost in excess of $15,000,000. After settlement negotiations failed we brought an action in California for fraud
constructive trust. The case involved bankruptcy proceedings in Hong Kong, jurisdictional issues, choice of law issues
complex factual issues regarding the letters of credit. We achieved a recovery satisfactory to our client.
Represented the owner of a large professional sports facility in connection with a dispute over a joint venture/purchase agreement that our client wanted to close. We were successful in getting the defendants to complete the purchase of the facility from our client.
Represented a stockbroker in a series of lawsuits
arbitrations brought by a number of his former clients against him
a major brokerage firm. Plaintiffs alleged a particular leveraged bond fund investment was not suitable for these plaintiffs
that the risks were not adequately explained. We tried a number of NASD arbitrations before we were able to convince the plaintiffs to settle the remaining matters on terms acceptable to the defendants.
Represented a number of defendants in a class action brought by a well-known class action lawyer who asserted that the packaging of wine contained lead
it lacked the required warning label. We prevailed on a demurrer to the complaint without leave to amend.
Represented the largest secured creditor in connection with the foreclosure
subsequent bankruptcy of a multi-building office/restaurant complex. The loan amount exceeded $140,000,000. The developer resisted the appointment of a receiver
when the receiver became inevitable, the developer filed under Chapter 11
attempted a cram down with very low values. We promptly sought
received relief from the stay to proceed with our foreclosure action,
the property was sold at a bankruptcy sale. At the time, that sale was the second largest real estate transaction in San Diego County history. This matter raised a whole host of state law collection, bankruptcy,
real estate transaction issues, particularly since the real estate collateral consisted of most, but not all, of the mixed-use development.
Represented the largest unsecured creditor
later the creditor's committee in Chapter 11 proceeding. This case established a number of precedents, including the availability of jury trials in adversary proceedings, procedures for interim distribution to creditors
procedures for resolving potential toxic waste claims through principles of equitable subordination.
Represented the lender with over $50,000,000 in loans to a real estate syndicator
a number of its partnerships. Issues dealt with during this representation included loan workouts of individual partnerships all over the United States with many debt
equity tiers, analysis of potential fraud claims, dealing with large investor groups, protecting holder in due course status
dealing with a multi-committee bankruptcy pending in New York.
Represented the secured lender in connection with the foreclosure of preferred ship mortgages on three modern purse seining tuna boats. The sums involved exceeded $36,000,000. We filed collection actions in the District Court of Guam. The borrower filed counter-claims against the lender
also filed bankruptcy petitions on the isl
of Saipan. Two of the boats were seized by the U.S. Marshal in Guam. The third was eventually found
seized by New Zeal
authorities. The debtor attempted to convince the bankruptcy court that it should be permitted to fish the boats during the bankruptcy proceedings. We convinced the court that the boats should be sold
obtained relief from the automatic stay for that purpose. Thereafter, we assisted in the foreclosure process
liquidated the lender's collateral.
Represented a lender involved in a tax shelter program who secured a $7,000,000 loan with four purse seine tuna boats that were still in the shipyard waiting commissioning. The total construction cost for the four boats exceeded $50,000,000. We caused the arrest of the boats in San Diego, Canada,
American Samoa. The Mexican government claimed it had advanced over $50,000,000 towards the construction of the boats
claimed a senior lien under Mexican law. The claim of the Mexican government went to trial in San Diego
the court ruled in our client's favor. We also won relief from the automatic stay so we could proceed with our foreclosure actions.
