A proven dispute resolver with intellectual property experience.

• “Has Your ADR Neutral Met Their Disclosure Requirement?” Moderator, ABA Section of Intellectual Property Law Webinar, November 18, 2011.
• “Mediation in Patent Litigation,” Panelist at San Francisco Bay Area American Inns of Court, November 16, 2011.
• “Termination of Copyright Transfer Rights 101,” ABA Section of Intellectual Property
  Teleconference, May 3, 2010.
• “Third Circuit: Insurance Brokerage Firm Copyright Violation = $18.8M Verdict,” Santa Clara County Bar Association, Insurance Law Section, Summer 2009 Newsletter, pages 6-7.
• Judge for Mock U.S. Supreme Court Argument in Cartoon Networks v. Cablevision, San Francisco Bay Area Intellectual Property American Inn of Court, April 15, 2009.
• “Cloud Computing,” Software Licensing Committee, ABA Intellectual Property Law Spring Conference 2009. 
•  “Silicon Short Circuit: 2008 Copyright Decisions of the U.S. Circuit Courts of Appeal,” Licensing Executives Society, Software Committee, January 21, 2009.
• “Copyright 2008 Year in Review,” Santa Clara County Bar Association, January 13, 2009.
• “Copyright Storms and Safe Harbors in Cyberspace," ABA Intellectual Property Section, Copyright Litigation Committee, November 18, 2008
• “Issues in Open Source Licensing: Implications of GPL Version 3,” Licensing Executives Society, Annual Meeting, Orlando, Florida, October 2008.
• “Anger Management: Other Ways to Resolve Intellectual Property Disputes,” San Francisco Bay Area Intellectual Property American Inn of Court, April 16, 2008. 
• “Copyright, 2007 Year in Review,” Santa Clara County Bar Association, High Tech Law Section, January 20, 2008. 
• “Reach Through Royalties and the Patent Misuse Defense: Can a Tool Company Still Hit the Jackpot?,” Biotech Briefing Newsletter of the Biotechnology Committee of the American Bar Association, Section of Science and Technology Law, Vol. 3, No. 1, Fall/Winter 2006/07
• 2006 Ninth Circuit Report, for ABA Intellectual Property Law Section, Copyright Committee 310.
• Quarterly Review of High Tech Cases, Santa Clara County Bar Association, High Tech Law Section, October 16, 2001.

 

Copyright. Claims for breach of an audio/visual production and distribution agreement. Issues included breach of contract, misrepresentation, fraud, breach of good faith and fair dealing. Amount in controversy $25,000. Sole Arbitrator, Arts Arbitration and Mediation Services.

Trade Secret. Silicon materials supply to global solar manufacturers. Claims that a key employee was secretly operating his competing business while employed, misappropriating trade secrets, tortiously interfering with contracts with vendors and customers, interfering with prospective economic advantage and violating California Business and Professions Code § 17200, et seq. Amount in controversy $1,300,000. California Superior Court, Temporary Settlement Judge.

Patent. Claim for patent infringement. Issues of invalidity based upon unpatentable subject matter, and unenforceability because of inequitable conduct. Judge, Western Regional Orals, AIPLA Giles Sutherland Rich Memorial Moot Court Competition, "Presenting Problems in Intellectual Property Law," 2011. 

Trademark and Unfair Competition. Claims involved trademark infringement under 15 U.S.C. § 1114; false designation of origin under 15 U.S.C. §1117(a)(3); common law trademark infringement; state law unfair competition: fraudulent business practices under Cal. Bus. & Prof. Code §17200 et seq., misrepresentation under Cal. Civil Code §1770)(a)(2) & (3), and false advertising under Cal. Bus. & Prof. Code §17500; waiver, estoppel, laches, acquiescence, and unclean hands; fraudulent use of a federal trademark before obtaining registration, fraud on the Patent and Trademark Office, cancellation of the mark for impermissible material alteration of the drawing of the mark; attorneys fees, costs and expenses, injunctive relief.  Early Neutral Evaluator, U.S. District Court, Northern District of California ADR Program.   

Patent. Claims under 35 U.S.C. s. 271 and 281, involving issues of infringement, validity and enforceability, claim construction and damages. The patent in dispute dealt with methods and systems for specifying an interest in accessing objects on a distributed network such as the Internet. Amount in controversy $1,000,000. Mediator, U.S. District Court, Northern District of California ADR Program.

Copyright. Claims involved photographs, 17 U.S.C. s. 106, removal of copyright management information under 17 U.S.C. s. 1202. Claims of infringment, fair use, and statutory damages under 17 U.S.C. s. 504(c)(1). Counterclaims of intentional infliction of emotional distress, unfair business practices under Cal. Bus. & Prof. Code s. 17200 et seq., unjust enrichment, conspiracy and punitive or exemplary damages. Amount in controversy $50,000. Mediator, U.S. District Court, Northern District of California ADR Program.

Copyright. Arts and crafts, designs from nature. Claims of copyright infringement under 17 U.S.C. s. 501 et seq.,trade dress infringement and unfair competition under 15 U.S.C. s. 1125(a) et seq., federal law of dilution under 15 U.S.C. s.1125(c), unfair competiton under Cal. Bus. & Prof. Code s. 17200 et seq., breach of contract, breach of fiduciary duty, misrepresentation under the Digital Millennium Copyright Act (DMCA), 17 U.S.C. s.512(f). Issue of authorship. Claims for injunctive relief, statutory damages and attorneys fees. Mediator, U.S. District Court, Northern District of California ADR Program.

Copyright. Scuptural work: tableware such as bowls and trays. Claims of contributory copyright infringement by unlawful importation of copies, under 17 U.S.C. s. 601, and placing them into the stream of commerce in the United States. Issues of damages and injunctive relief, threatened bankruptcy of the defendants. Amount in controversy $1,500,000. Mediator, U.S. District Court, Northern District of California ADR Program

Trademark. Automobile dealership, franchise agreement, dual facility. Issues of violation of automobile dealer sales and service franchise agreement prohibiting establishement and operation of competing vehicle line dealerships on the dealership property, injunctive relief. Mediator, U.S. District Court, Northern District of California ADR Program. 

Trademark. Claims of trademark infringement under the Lanham Act, 15 U.S.C. ss. 1114 and 1125, claims of unfair competiton under Cal. Bus. & Prof. Code s. 17200 et seq., misapproation of trade secrets under Cal. Civ. Code s. 3426 et seq., and breach of written contract. Issues of damages, attorneys fees and injunctive relief. Mediator, U.S. District Court, Northern District of California ADR Program.

Domain Names. Claims arising under an international exclusive distributor agreement for DNA test kits. Issues involved refunds, indemnification, use of domain names and website representations about the product. Parties: United States and United Kingdom. Choice of Law: State of California and U.S. Forum Selection: Santa Clara County, California, U.S. Mediator, ad hoc mediation.

Patent Infringement. Claims involve validity, infringement, and damages of no less than a reasonable royalty, willful infringement, actively inducing infringement and contributory infringement. Mediator, U.S. District Court for the Northern District of California ADR Program.

Trademark and Unfair Competition. Claims involved trademark infringement under 15 U.S.C. § 1114; false designation of origin under 15 U.S.C. §1117(a)(3); common law trademark infringement; state law unfair competition: fraudulent business practices under Cal. Bus. & Prof. Code §17200 et seq., misrepresentation under Cal. Civil Code §1770)(a)(2) & (3), and false advertising under Cal. Bus. & Prof. Code §17500; waiver, estoppel, laches, acquiescence, and unclean hands; fraudulent use of a federal trademark before obtaining registration, fraud on the patent and Trademark Office, cancellation of the mark for impermissible material alteration of the drawing of the mark; attorneys fees, costs and expenses, injunctive relief. Early Neutral Evaluator, U.S. District Court, Northern District of California ADR Program.