CASES

LITIGATION

As lead counsel, successfully represented various clients in patent, copyright, trade secrets, and trademark infringement cases throughout the United States.  Sample cases as lead counsel include the following:

1)  Armand Maaskamp, et al. v. Theodore Wortrich, et al.   –  for Plaintiff and Cross-Defendant Armand Maaskamp, as Trustee of the Maaskamp Family Trust, et al. – Corporate Dissolution/Breach of Fiduciary Duty case in the Superior Court of the State of California, Orange County – Honorable Michael Brenner; Case No. 30-2012-00566392.

Armand Maaskamp, as trustee of the Maaskamp Family Trust, filed a complaint for involuntary dissolution of Richkamp R/D LLC on May 2, 2012. Theodore Wortrich, as trustee of the Wortrich Family Trust, which owned 50% of Richkamp R/D, LLC, filed a cross-complaint against Maaskamp alleging breach of fiduciary duty and sought declaratory relief regarding the ownership of certain patents and patent applications used for cataract surgery. After a thirteen (13) day trial, the court ruled in favor of Maaskamp on all claims.

On October 29, 2014, Wortrich appealed the trial court’s decision before the Fourth Appellate District of the Court of Appeals of the State of California. On January 10, 2017, the Court of Appeals affirmed the judgment in its entirety in favor of Maaskamp.

 

2)  Hani Sharaf v. Starbuzz Tobacco, Inc.   –  for Defendant Starbuzz Tobacco, Inc. – Breach of Contract and Fraud case in the United States District Court, Central District of California – Honorable James V. Selna; Case No 14-CV-00541 JVS (DFMx).

In April 2014, Hani Sharaf filed a complaint against Starbuzz Tobacco, Inc. for breach of contract and fraud, alleging that he was entitled to 24.5% ownership share of Starbuzz based on an agreement that was mutually rescinded in 2005. After more than a year and a half of heated discovery, the Court granted Starbuzz’s motion for summary judgment, finding that Sharaf’s action was barred by the applicable statutes of limitations. Sharaf appealed to Ninth Circuit Court of Appeals, where the three-judge panel affirmed judgment in Starbuzz’s favor.

3)  Eros Tours & Travel, Inc., et al., v. Infinitywaves, LLC, et al.   –  for Plaintiff and Counter-Defendants Eros Tours & Travel, Inc., et al. – Copyright Infringement and Misappropriation of Trade Secrets case in the United States District Court, Central District of California – Honorable Percy Anderson; Case No. 14-cv-05095-PA-PJW.

Eros Tours & Travel, Inc. and its affiliates sued several former employees, alleging they misappropriated Eros Tours’ proprietary source code for their online airfare booking engine and subsequently used it to form another business in direct competition with Eros Tours. The parties amicably resolved the matter to the satisfaction of both sides in June 2015.

4)  Starbuzz Tobacco, Inc. v. Trident Group, LLC, et al.   –  for Plaintiff and Counter-Defendant Starbuzz Tobacco, Inc. – Trademark Infringement case in the United States District Court, Central District of California – Honorable Andrew J. Guilford; Case No. 14-cv-01553-AG-DFM.

In March 2014, Starbuzz Tobacco, Inc. sent a cease and desist letter alleging that Trident Group LLC’s use of “COOL MIST” infringed Starbuzz’s trademarks “BLUE MIST”, “CITRUS MIST”, “HAWAIIAN MIST”, etc., in International Class 034 for smokers’ articles.

In response, Trident Group LLC filed a declaratory judgment complaint for non-infringement in the U.S. District Court of New Jersey. However, Trident did not immediately attempt to serve the NJ Complaint, intending to use the action as a placeholder in anticipation of litigation while the parties discussed a possible resolution of the case.

In September 2014, after settlement talks failed, Starbuzz filed a complaint for trademark infringement against Trident and its successor in interest, Nicopure Labs, LLC, in the U.S. District Court for the Central District of California.

On March 9, 2015, after six months of ongoing motions to challenge the NJ action, including two amended complaints by Trident, the New Jersey District Court granted Starbuzz’s motion to transfer the case to California, declining to apply the “first to file” rule, finding that the proper venue for the case was California.

The parties agreed on an amicable resolution in July 2015.

5)  Ashlynn Marketing Group, Inc. v. Imperial Tobacco Limited, et al.   –  for Plaintiff and Counterclaimant, Ashlynn Marketing Group, Inc. – Trademark Cancellation and Infringement case in the United States District Court for the Southern District of California – Honorable Cathy Ann Bencivengo; Case No. 16:cv-01001-CAB-BGS.

In May 2015, after the U.S. Patent and Trademark Office denied its application for registration of the trademark “IMPERIAL” in connection with tobacco, Imperial Tobacco Limited filed a Petition for Cancellation with the U.S. Patent and Trademark Office, seeking to cancel several trademark registrations owned by Ashlynn Marketing Group, Inc. (“IMPERIAL” Reg. No. 4331945; “IMPERIAL HOOKAH” Reg. No. 4327861; “IMPERIAL SMOKE” Reg. No. 4226619; “IMPERIAL HIGH LIFE” Reg No. 4507912; and “TWISTER IMPERIAL HOOKAH” Reg. No. 4507915). However, Ashlynn had been using its mark five years prior to Imperial Tobacco’s trademark application.

In April 2016, nearly one year later, Ashlynn filed a complaint for trademark infringement and declaratory relief against Imperial Tobacco and its affiliates in the U.S. District Court for the Southern District of California.

The parties settled the action in February 2017.

6)  Starbuzz Tobacco, Inc. v. Myst E-Cigs, et al.   –  for Plaintiff Starbuzz Tobacco, Inc. – Cybersquatting and Trademark Infringement case in the U.S. District Court for the Central District of California – Honorable Cormac J. Carney; Case No. 18-cv-00794-CJC-DFM.

In May 2018, Starbuzz sued Myst E-Cigs, a retailer/manufacturer of electronic cigarettes and e-liquids, for trademark infringement based on Myst E-Cigs’ use of the mark “MYST”. In addition, Starbuzz alleged that Myst E-Cigs unlawfully registered the domain name “MYSTECIG.com” in violation of Starbuzz’s trademark rights. In August 2018, just three months later, the parties settled the case, with defendants agreeing to enter into a stipulated permanent injunction.

 

7)  Inhale, Inc. v. Starbuzz Tobacco, Inc., et al.   –  For Defendants Starbuzz Tobacco, Inc., et al. – Patent Infringement Case in the United States District Court, Central District of California-Honorable Stephen V. Wilson; Case No. 11-cv-05332 SVW (PLA). 

Starbuzz Tobacco was accused of infringing Inhale’s patent for interlocking hookahs, even though Starbuzz was merely selling Inhale’s own products. After contentious discovery and motion practice, Starbuzz successfully moved for summary judgment based on the issue of patent exhaustion. Inhale‘s motion for reconsideration, was subsequently denied by the Court. The Court awarded Starbuzz its attorneys’ fees and costs since Inhale had failed to undertake a reasonable investigation of the claims, and had continued to litigate despite overwhelming evidence in support of defendants’ positions.

 

 

8)  Inhale, Inc. v. Starbuzz Tobacco, Inc., et al.  – for Defendants Starbuzz Tobacco, Inc., et al. – Copyright Infringement Case in the United States District Court, Central District of California-Honorable Otis D. Wright II; Case No. 11-cv-03838 ODW 

Inhale accused Starbuzz of infringing upon the shape of its hookah water container. Through application of extensive case law, Starbuzz obtained summary judgment in its favor. The Court was not persuaded by Inhale’s argument that its hookah water container is distinguishable from other utilitarian bottles designed specifically to store or transport liquid. The Court noted that the differences are irrelevant and the fact that Inhale intended its water container to serve as a liquid-holding receptacle-not a museum piece- is what matters. The Court therefore, concluded that the shape of Inhale’s water container is physically and conceptually inseparable from its utilitarian elements. Accordingly, there is no copyright protection for the shape of Inhale’s water container. The Court also awarded Starbuzz’ attorneys fees incurred in defending the action.

 

Subsequently, Inhale appealed to the Ninth Circuit which was denied.  The Ninth Circuit granted additional attorneys’ fees to Starbuzz Tobacco. After that, Inhale filed a Petition for Certiorari to the U.S. Supreme Court, which was also denied.

9)  Drew Estates Holding Company, Inc. v. Fantasia Distribution, Inc. v. Starbuzz Tobacco, Inc –  for Third Party Defendant Starbuzz Tobacco, Inc. – Trademark Infringement Case in the United States District Court, Southern District of Florida - Honorable Cecilia M. Altonaga; Case No. 11-21900-CIV-ALTONAGA/Simonton. 

Drew Estate initiated a trademark infringement lawsuit in the Southern District of Florida against Fantasia for its use of the “SURFER ON ACID” mark. Fantasia dragged Starbuzz into this lawsuit since Starbuzz is a licensee of Drew’s famous “ACID” mark. Fantasia asserted various unsubstantiated claims against Starbuzz such as: abuse of process, intentional interference, trademark infringement, and trademark cancellation of Starbuzz’s BLUE SURFER trademark. 
Starbuzz Tobacco successfully filed three separate motions to dismiss Fantasia’s claims, leaving only Fantasia’s trademark cancellation claim on limited grounds. During the litigation, Fantasia continued to ignore the Court’s rulings by asserting a trademark infringement claim. Following extensive discovery, Starbuzz successfully moved for summary judgment

 

The Court explicitly found that “If indeed Fantasia has thrown around such weighty accusations without any basis, as the documents would appear to show, such conduct is unprofessional and unbecoming of a member of the Bar.” As a prevailing party, Starbuzz obtained an award of costs and is awaiting the decision on its motion for attorneys’ fees.

10)  Northrop Grumman Corp. v. Intel Corp, 3Com Corp., et al.  – for Defendant The Linksys Group, Inc. – Patent Infringement Case re US Patent No. 4,453,229 – Panel included Honorable Judges Bryson, Friedman & Mayer. 
Argued before the United States Court of Appeals for the Federal Circuit in Washington, D.C. in this high profile action in which issues centered around Special Master's claim construction.  Reversed & remanded by the Federal Circuit. Case finally settled at the mediation in Dallas, Texas.

11) Crossroads Systems v. Dot Hill Systems Corporation – for Defendant - Patent Infringement Case re US Patent Nos. 5,941,972 and 6,425,035 in the USDC for the Western District of Texas; Case No. A-03-CV-754 SS, Honorable Judge Sam Sparks. 

Filed Markman briefs & participated in the Markman Hearing in August 2004. Undertook significant investigation to put up a strong defense & to invalidate plaintiff’s patents, including filing a Motion for Summary Judgment and five separate Re-Examination Petitions with the USPTO in July 2004 (US Patent Nos. 6,421,753, 6,425,036, 6,738,854, 5,941,972 & 6,425,035).  Conducted inventor depositions (three days), defended corporate depositions as well as third party inventor witnesses; prepared tutorial presentation slides on technology for the Special Master; conducted direct and re-direct examination of expert witness at Markman.

12)  Holystone Enterprise Co. Ltd.  v. Succeed Corporation & Super Nu Life – Los Angeles Superior Court – Pomona Division; Honorable Judge Bruce Minto – for Plaintiff (breach of Contract, Fraud, Alter Ego issues related to DVD ROMs shipped from China); obtained judgment in favor of Holystone. 

As first chair, conducted and won a four-week trial that involved international issues relating to letters of credit, custom practices in China & Taiwan, and alter ego issues; included over 400 exhibits and several witnesses from Taiwan; obtained bench warrant from the court to compel the testimony of certain witnesses involved in the fraud; conducted a noteworthy cross & re-cross examination of defendant’s expert witness, who was a 25 years practicing lawyer, graduated from Harvard and a renowned author on International letters of Credit & financial transactions.

13)      a) Acticon Technologies, LLC  v. Ambicom Inc. – for Defendant - Patent Infringement Case in the USDC for the Northern District – Honorable Judge Fogel & Magistrate Judges Lloyd & Brazil; Case No. 5:02-cv-02882;

            b) Acticon Technologies, LLC  v. ASKEY Computer Corporation – for Defendant - Patent Infringement Case in the USDC for the District of New Jersey – Honorable Judge Pisano & Magistrate Judge Arleo Cox; Case No. 2:02-cv-02729-JAP; Patent Infringement cases re US Patent Nos. U.S. Patent Nos. 4,603,320 (“Connector Interface”), 4,686,506 (“Multiple Connector Interface”), 4,972,470 (“Programmable Connector”) and 4,543,450 (“Integrated Connector and Modem”). 
 

            As lead counsel, represented a California corporation and a Taiwan corporation in two separate patent litigation cases involving PCMCIA cards / FAX Modems in the USDC for the Northern District of California and the District of New Jersey against the same plaintiff who had sought and obtained licensing agreements from over 85 corporations.  Conducted three days deposition of the PMK of the Plaintiff Corporation, who was a very experienced Patent Lawyer specializing in litigation and prosecution; resolved a variety of discovery and claim construction related issues; settled the Northern District Case & then aggressively pursued & filed Reexamination Petitions on three US patents resulting in administrative dismissal of the New Jersey case; represented both clients at multiple mediation sessions with independent mediators as well as at the district courts.

14) Karen Umbrella Co. Ltd. V. Yeh Hung, Collins, Albertsons, etc. for Plaintiff - Patent Infringement allegedly infringing patio umbrellas, Copyright Infringement & Unfair Competition Case involving US Patent Nos. 6,152,156 and Design Patent No. 434,215 in the USDC for the Central District of California - Honorable Judge Taylor, Case No. SA CV-02-875 GLT (ANx); obtained Consent Judgment & Permanent Injunction against all defendants approximately a month before the pre-trial conference. 

Represented a Taiwan corporation plaintiff that designs patio umbrellas in a patent litigation case; took multiple depositions of defendants’ PMK & design patent inventor (who had asserted a counter-claim) in Taiwan for the entire week; took the PMK’s deposition of Albertsons & the Taiwan distributor, Yeh Hung & Bond Vast (for three days); defended depositions of the inventor, Patent Prosecution Attorney, President, and General Manager of the Plaintiff Corporation & multiple individuals

15)      a) Playmore Corporation & SNK Corporation v. Arcade Infinity, Worldwide Video, & NeoGeo Freaks; Case No. SA CV 02-1107 DOC MLGx.

            b) Playmore Corporation & SNK Corporation v.  DAX Technologies, Inc. (Filed after obtaining information from the discovery of previous on-going case); Case No. SA CV 03-353 DOC MLGx; Copyright & Trademark Infringement action relating to Arcade popular Video Games, in the USDC for the Central District of California - Honorable Judge Carter; obtained Permanent Injunction successfully against all defendants. 


            Obtained Ex Parte court orders to raid defendant’s premises & seize all infringing goods; coordinated & conducted raids with US Marshals in Los Angeles County, Las Vegas, San Diego, & Northern California; successfully obtained preliminary injunction against all defendants; conducted two days of bench trial before Honorable Judge Carter presenting seized evidence through key corporate witnesses, examining defendants to successfully obtain Preliminary Injunction against one defendant; eventually obtained permanent injunction after one and half year of litigation against the four defendants prohibiting them from engaging in infringing activities.  For some of the press releases, please refer to client’s website:http://www.snkplaymore.co.jp/  

16) Disney Enterprises v. Asia Pacific Trading, et al. - for Defendant - Copyright Infringement Case in the USDC for the Central District of California - Honorable Judge Consuelo Marshall & then Judge Ottero; successfully settled the case with Disney; Case No. 2:02-cv-07637-SJO-RZ. Represented a Taiwan manufacturer against Walt Disney in a copyright infringement case that involved a conflict between copyright laws and patent laws since the Taiwan manufacturer owned over 25 design patents issued by USPTO, which included some Disney & Warner Brothers’ characters.

17) K-Swiss et al.  v. USA Aisiqui Shoes, Inc. - for Defendant, one of the biggest shoe manufacturers from China – Copyright, Trademark & Trade dress Infringement Case in the USDC for the Central District of California - Honorable Judge Kelleher; Case No. 2:03-cv-05918-RJK-RC. 

Filed opposition to preliminary injunction; filed counterclaim for declaratory judgment invalidating a patent exclusively licensed by K-Swiss; filed and argued opposition to motion to dismiss counterclaim for the declaratory judgment invalidating the patent; subsequently filed for appeal in the Ninth Circuit; successfully settled the case at the mediation in San Francisco facilitated by the Ninth Circuit.

18) Intersil v. Proxim, et al. (International Trade Commission Action). Participated in the International Trade Commission action as a co-counsel on a patent infringement case regarding wireless PCMCIA cards following the IEEE 802. 11B Standard and successfully settled the case.  The case involved 20% of the industry defendants in an industry-wide litigation concerning control of home and office wireless networking devices.

19) Anaspec Corporation v. Synpep Corporation, et al. – Alameda County Superior Court – for Plaintiff (Misappropriation of Trade secrets, Unfair trade practices, and other common law causes of action);  Another case was initiated in the Federal Court for Copyright Infringement based on the information obtained from written discovery & the depositions. 

Parties settled both cases at the JAMS mediation. Represented a leading bio-technology company based in Silicon Valley in a trade secret misappropriation matter against its primary competitor which was aggressively defended by two insurance defense law firms over multitude of discovery, deposition & procedural related issues;  defended and took several depositions of the President of the defendant corporation and other key witnesses; successfully obtained a Temporary Restraining Order and partial Preliminary Injunction in our client’s favor, which enjoined the competitor from misappropriating trade secrets and soliciting client’s employees; finally, obtained a Permanent Injunction against all defendants.

20) Plaintiff *** v. Defendant ***   Successfully represented a plaintiff corporation against a member of the board of directors in a dispute involving the right to repurchase shares of the corporation as well as the valuation of the shares.  The case involved complex financial issues including interpretation of the term “net worth” in light of accounting and valuation standards.

21) BNE (USA), Inc.  v. Focal Point Video, et al. - for Defendant - Copyright Infringement Case in the USDC for the Northern District – Honorable Judge Saundra Armstrong; Case No. 02-CV-5195. Represented a video store owner and his corporation, which was raided and accused of selling/ renting infringing video tapes in the United States by BNE, a large Asian movie and television program worldwide distributor.
  
Central to this litigation was forcing the distributor to prove that it held valid licenses from entities that were the true copyright holders from Korea, China and Taiwan.  This required careful, multilingual analysis of the documents, verifiable proof of ownership, and establishing a perfect chain of title to the programs’ copyrights

22) Philips Corporation v. Poso Media, LLC., New Style Corporation et al. – for Defendant Poso Media & its predecessor-in-interest, Nu Optical Media, LLC – Philips filed a complaint against Poso Media, LLC, New Style, Funimation and United Media Services, Inc., alleging patent infringement, in the USDC for the Central District of California - Western Division, Honorable Judge King CV03-9410GHK (SHx). The case was finally settled with Philips successfully.

23) Gateway Holding, Inc., et al.  v. Bechler Cam, Inc., et al – Represented the corporation in a hotly contested reverse merger case; spearheaded the case to successfully on behalf of the corporation to obtain a favorable settlement

24) Plaintiff *** v. Defendant ***  -  Successfully co-counseled with another law firm to aggressively litigate this case involving business partnership dispute; obtained discovery sanctions including terminating sanctions which included dismissal of the entire cross-complaint—a remedy that is very rarely granted.

25) J. P. Gripper, LLC v. Lamoon Beauty Products – for Defendant Lamoon – Patent Infringement Case involving the design of nail polish containers and application caps; Case No. CV05-8413 in the United States District Court, Central District of California. Plaintiff and Defendant entered into a settlement agreement and both parties agreed to the dismissal of all claims for relief asserted by both parties.

26) Panda Windows & Doors, LLC v. Hamid Haroon, et al – for Defendant Haroon – Copyright Infringement Case in the United States District Court of Nevada, Las Vegas, Case No. 2:07-cv-00006. Represented defendant against alleged claims of copyright infringement regarding manufacturing of sliding windows and doors.  Plaintiff also alleged claims for unfair competition, and misappropriation of trade secrets. 

27) Soni v. Zanchi – for Plaintiff, Soni – Real Estate Transaction case involving breach of contract and a commercial lease issue; case was settled with multiple parties through a successful mediation.

28) Gandhi  adv. Dhaliwal – for Defendant, Gandhi - Real Estate Litigation Case involving sale of a hotel; Case No. 150150 in the Superior Court of California, County of Merced. Represented Defendant and cross-complainant in an aggressive real estate litigation.  Successfully obtained a court order expunging the lis pendens recorded by Plaintiff.

 

 

Trademark Trial & Appeal Board / Trademark Proceedings:

Resolved various trademark related issues for many individual and business clients through cease and desist letters, cancellation proceedings, opposition proceedings and /or litigation.  Successfully obtained many challenging trademarks and service marks through USPTO proceedings. Defended a cancellation proceeding for trademark PIXO in the USPTO's Trademark Trial and Appeal Board in which the complainant sought to cancel our client’s trademark on the grounds of abandonment; gathered and presented sufficient evidence in the proceeding to defeat complainant’s claim of abandonment; finally settled the case in the client’s favor. Recently resolved a complex service mark matter relating to a reputed hotel chain through a TTAB proceeding. Defended an opposition filed by a competitor against our client’s trademark (X-PIPE) & successfully resolved the matter in the client’s favor.

PRO BONO Civil Litigation related activities:

On a pro-bono basis, volunteered in the Domestic Violence program sponsored by the Los Angeles Superior Court and helped many battered women in obtaining Temporary Restraining Orders;  represented an individual in a highly contested divorce proceeding involving critical issues of foreign property ownership and possible fraud allegations against the other spouse;  furthermore, also involved in overturning a collection judgment entered and recorded five years after the conduct in question based on certain allegedly fraudulent practices. 

Many times, the firm decides to help individuals in need by representing them at a discounted basis or on a pro-bono basis based on specific circumstances.   Because legal issues often require significant time commitment, the firm selects these cases after balancing individual needs and abilities, and resources available to prosecute such cases.

© 2016 by The Patel Law Firm

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