Creative Representation | Expert Litigation

Areas of Intellectual Property Litigation Practice

Trade Secret Litigation

Trademark, Copyright and Technology Licensing Litigation

Our Trade Secret Litigation practice group helps clients protect against trade secret misappropriation, negotiate trade secret disputes and, when needed, file suit, enjoin and remedy trade secret theft. Our Trademark, Copyright and Technology Licensing Litigation practice group helps clients protect, analyze, manage, and monetize their valuable intellectual property, whether through registration, negotiation, or litigation. From up-and-coming startups to long-established companies and brands, BartkoZankel ensures the best protection and enforcement of trademark, copyright and technology licensing rights.

Trade Secret Litigation

The BartkoZankel Trade Secret practice represents both plaintiffs and defendants in trial courts throughout the United States. Our tech-savvy and commercial litigators have handled matters in a broad array of technologies including mechanical devices, software, biotech, wireless communications, mobile technology, computer security, and computer equipment. Unlike classic big firm “litigators,” we are trial lawyers with a deep experience trying trade secret and other IP cases to verdict. We are ranked by Chambers among the top trade secret lawyers in California. Our depth of substantive and technical understanding, experience handling complex IP litigation, and willingness to take cases to trial ensure the best possible protection of our clients’ legal interests. Together, we are able to analyze the critical technical issues, develop an effective litigation strategy, and present winning arguments to judges and juries. With these skills, BartkoZankel trade secret litigators have secured victory at trial, prevailed in preliminary injunction and other dispositive motion practice, and achieved favorable settlements. Most recently we obtained an $845 million verdict for our client ASML.

Understanding the intersection of technology and commercial business objectives, BartkoZankel lawyers help clients protect against trade secret misappropriation, negotiate trade secret disputes and, when needed, file suit, enjoin and remedy trade secret theft. The lack of big-firm overhead means that BartkoZankel can cost-effectively handle smaller cases. We understand that cost matters and not all cases should be litigated without limits. At the same time, BartkoZankel attorneys have gone toe-to-toe, and prevailed, against some of the largest law firms in the country.

Representative Trade Secret Clients

  • ASML
  • Logitech
  • National Semiconductor
  • Neoptix
  • Netlist
  • Next Level Communications
  • Open Solutions
  • Ondyne
  • Sun Microsystems
  • USG

Trademark, Copyright and Technology Licensing Litigation

At BartkoZankel, we understand that helping our clients protect their valuable IP requires a multi-faceted approach, especially in an increasingly dynamic and fast-changing market. Rights arising from trademarks, copyrights, and technology licensing or joint venture agreements stand among clients’ most critical intellectual property. From the earliest stages of protection through litigation, BartkoZankel’s seasoned attorneys have counseled numerous companies on the best ways to strategically protect their IP and have achieved outstanding results for their clients through trademark, copyright, and technology licensing litigation. Ranging across a broad range of technologies and markets, from cases involving software code theft to brand logo infringement and domain name cybersquatting, our attorneys have successfully tried high-stakes cases to both juries, judges and arbitrators, and achieved top-value settlements.

Our depth of substantive and technical understanding, experience handling complex IP litigation, ability to tailor an approach to each clients’ needs, and willingness to take cases to trial ensure the best possible protection of our clients’ legal interests. Together, we are able to analyze the critical technical issues, develop an effective brand protection strategy, and if necessary, present winning arguments to judges and juries. With these skills, BartkoZankel litigators have secured victory at trial, prevailed in injunctive and other dispositive motion practice, and achieved favorable settlements. We are ranked by Chambers among the top California lawyers in Trademark, Copyright and Trade Secret litigation.

Unlike traditional big firm litigators, we are trial lawyers able to think creatively and practically to help our clients achieve their objectives. The lack of big-firm overhead means that BartkoZankel can cost-effectively handle smaller cases, while at the same time prevailing against some of the largest law firms in the country. Whether a startup or a long-established brand, BartkoZankel can help ensure valuable brand and other essential IP rights are protected and enforced.

Representative Trademark, Copyright and Technology Licensing Clients

  • ABD Insurance & Financial Services
  • Actuate Corporation
  • Amgen
  • CPT
  • DiCon Technologies
  • Impinj
  • JP Morgan Chase Bank
  • Neoptix
  • Netlist
  • Obviously Social
  • Quantum Group
  • Raytheon Corporation

Although BartkoZankel is willing and able to take a case to trial to best protect our client’s interests, we understand that sometimes settlement is the prudent way to resolve a dispute. The Firm has an extensive alternative dispute resolution practice, and several of our lawyers are court-approved mediators. We bring this expertise to the table, along with experience licensing intellectual property, to help clients obtain the best possible resolutions.

Relevant Trade Secret Articles (by Benjamin K. Riley)

Representative Cases

REPRESENTATIVE TRADE SECRET LITIGATION CASES

ASML v. XTAL

(Santa Clara Sup). Obtained a jury verdict after a three-week jury trial in a case alleging misappropriation of trade secrets related to computational lithography and related claims against XTAL, a company who hired several former ASML employees. The jury also found that XTAL’s conduct as to all counts was malicious which entitles ASML to an award of punitive damages and attorneys’ fees. Judgment entered in favor of client for $845 million plus injunctive relief.

Netlist v. Diablo

(ND Cal). Prosecution of trade secret, patent and trademark claims involving HyperCloud® LR-DIMM computer memory module technology, including obtaining preliminary injunction.

LumaSense v. Neoptix

(ND Cal). Defended manufacturer of fiber-optic temperature sensors against allegations of trademark infringement and trade secret misappropriation.

Sun Microsystems v. Azul

(ND Cal). Represented Sun in trade secret case concerning multi-thread computer microprocessors. Successful settlement obtained after first deposition.

USG v. Award Metals

(ND Cal). Represented USG in successful prosecution and settlement of trade secret and patent claims relating to corner bead.

Hoffer v. Microsoft

(ND Cal and Fed Cir); Hoffer v. International Business Machines (SD Cal, ND Cal and 9th Cir). Defended a leading computer company in patent litigation concerning design of interactive internet databases. Obtained summary judgment of non-infringement, affirmed in Hoffer v. Microsoft Corp., 405 F.3d 1326 (Fed. Cir. 2005), and obtained dismissal of related trade secret and business torts case.

DSC Communications v. Next Level Communications

(ED Texas). Trial of alleged $500 million trade secret case involving alleged theft of fiber optic on-demand video technology.

National Semiconductor v. Allouche

(Santa Clara Sup). Obtained “inevitable disclosure” temporary restraining order and then preliminary injunction in trade secret case against defendant and five co-workers regarding MR Preamp integrated circuits.

Sedona Corporation v. Open Solutions, Inc.

(D Conn). Represented developer of customer relationship management software alleging misuse of proprietary technology and trade secrets in breach of license dispute.

Ondyne v. Collins

(Contra Costa Sup). Obtained temporary restraining order and preliminary injunction stopping former employee of sensor company from stealing client’s technology and setting up a competing company.

REPRESENTATIVE TRADEMARK, COPYRIGHT AND TECHNOLOGY LICENSING LITIGATION CASES

Wells Fargo v. ABD

(ND Cal/9th Cir). Twice defeated motions by Wells Fargo Bank for preliminary injunction in trademark case concerning use of ABD business name. Case successfully settled after the second motion was denied.

BMW Trademark Claims

Successfully negotiated and resolved trademark claims.

Cloud Cruiser v. Cisco

(JAMS). Tried arbitration for plaintiff asserting breach of license agreement in deployment and use of database software for monitoring and use of cloud computing.

Netlist v. Diablo and Smart Storage

(ND Cal). Prosecution and trial of trademark, trade secret and patent claims involving HyperCloud® LR-DIMM computer memory module technology.

NextHome v. Realty World

(ND Cal). Achieved favorable settlement for innovative real estate tech client in case brought by entrenched realty franchisor. Successfully investigated and asserted internet domain name cybersquatting and trademark infringement claims on behalf of client to leverage a favorable outcome.

Actuate v. Scicom

(D Minn). Successful assertion of claims for breach of software license agreement and copyright infringement.

Impinj v. Synopsys

(JAMS). Arbitrated license rights and restrictions under asset purchase agreement and the sale of non-volatile memory semiconductor technology.

Actuate v. Raytheon

Successful negotiation and resolution of claims for breach of software license agreement and copyright infringement.

Actuate v. Washington Mutual and JP Morgan

(ND Cal). Litigated and defended WaMu and JP Morgan against claims of copyright infringement and breach of software license agreement. Highly successful settlement obtained at mediation immediately prior to trial.

LumaSense v. Neoptix

(ND Cal). Defended manufacturer of fiber-optic temperature sensors against allegations of trademark infringement and trade secret misappropriation.

Biotech Company

Represented leading biotech company in dispute concerning complex license and contract for supply of key component for multi-billion dollar cancer-related drug.

LG Electronic v. CPT

(ICDR). Prevailed at AAA International arbitration over assignment and ownership of patent rights under license agreement concerning mechanical design of notebook computers utilizing liquid crystal display modules. As a result, patent claims in related case were dismissed.

Fyrnetics Hong Kong and Kidde Safety v. Quantum Group

(ND Illinois, 7th Circuit and AAA). Represented defendant in trial and appeal of issues under license agreement and then two-week arbitration concerning design of 500,000 recalled carbon monoxide detectors, with alleged damages of $13 million. Final Award entered in an amount less than offered in settlement, and plaintiffs’ request for attorneys’ fees denied.