WEIDLINGER ASSOCIATES INC.Protecting and Monetizing Innovation 12526 High Bluff Drive, Suite 300 San Diego, CA 92130 Telephone: (858) 792-3446 FAX: (858) 408-4422 E-mail: [email protected] www.sandiegoiplaw.com April 25, 2007
We are experienced trial attorneys with over 75 years of combined experienceat major international law firms. Our clients include plaintiffs and defendantspracticing a wide variety of technologies. With our “in-house” technicalexpertise and industry knowledge, we are able to provide efficient, strategicadvice. Our professionals have advanced technical degrees in numerousdisciplines, including physics, electrical engineering, mathematics, chemistry,and biochemistry. We offer “big law” talent and expertise with “boutique”specialization, flexibility, dedication, and service. Contingency arrangementsare also available in appropriate cases.We have a proven track record in courts around the country, including“plaintiff-friendly” venues such as the Eastern District of Texas and theEastern District of Virginia. We have succeeded on both sides of venuetransfer battles, helping our clients enforce and defend their rights in a fairforum. Our team is also experienced with administrative actions includingSection 337 investigations before the U.S. International Trade Commissionand proceedings before the United States Patent & Trademark Office.We are committed to providing clients with a rare combination of legal andtechnical expertise, business insight, and exceptional value. We measure oursuccess by the results obtained for our clients.Our SpecialtiesWe offer clients a unique “triple threat” – mastery of intellectual property lawand technical expertise, a proven track record of success in “plaintiff-friendly”venues, and trial experience to go the distance.PATENT LITIGATIONWe have won lawsuits worth over $300 million for our clients and haveobtained dozens of outstanding settlements at efficient billing rates our majorcompetitors cannot match. We are not afraid to go to trial and frequentlyrepresent smaller plaintiffs against large corporate defendants with excellentresults. “You’ve got a lot of fire power packed in a smaller firm. There is a lot of high-quality talent.” – Jim Miller, CEO, ImageWare Systems, Inc. (IWSY)© 2015 San Diego IP Law Group LLP
Our attorneys fully understand how to conduct inter partes reviews (IPRs),covered business method reviews (CBMs), post-grant reviews, and ex partereexaminations at the USPTO to further our clients’ objectives. For patentowners, an effective strategy and thorough understanding of these proceduresare critical to preserving and optimizing infringement claims.PATENT PROSECUTIONOur full-service prosecution practice focuses on patent applicationpreparation and prosecution, reexamination, and strategic claimingmethodologies. We work with clients to create a diversified portfolio thatprovides different levels of protection, which are continually reevaluated asbusiness goals evolve. Our clients’ patents withstand the scrutiny of litigation.We have obtained hundreds of patents, both domestic and abroad, for ourclients in a wide variety of technologies. “They understand which patents are most important to our core business. They understand what we do as a business.” – Curtis Staker, CEO, Confident Technologies, Inc.We also provide formal written opinions, such as freedom to operate, patentvalidity, and patent infringement and non-infringement opinions.TRADEMARK COUNSELING AND LITIGATIONStrategic counseling is vital to protecting trademarks on a worldwide basis.We frequently assist clients regarding new trademarks, company names, andslogans. We also have extensive experience in successfully resolvingtrademark infringement and related claims against large corporatedefendants.BUSINESS LITIGATIONWe have successfully handled a wide variety of commercial litigation mattersinvolving trade secret misappropriation, computer hacking, breach ofcontract, false advertising, unfair competition, and other business tort claims. “They provide a high level of personal service. They are cost effective and disciplined. I’d use them every time. They are strong in patents and strong in litigation.” – Neil Senturia, CEO Quanlight, Inc.© 2015 San Diego IP Law Group LLP
Why Choose Our Firm?DIRECT ACCESS TO A PARTNERA partner of the Firm will not only assist you in developing yourintellectual property strategy, but will also execute it. The partner willalways be up-to-speed on your matter and you can contact any partnerdirectly by mobile phone or email, day or night. You will not be passedoff from one lawyer to another. All of our lawyers are experts inintellectual property law.WE ARE EASY TO WORK WITHOur mastery of intellectual property law and technical expertise allowsus to collaborate with innovators. Whether it’s talking about the “nutsand bolts” of technology with engineers or presenting an executive IPstrategy to the board of directors, we can communicate with anyone inyour organization in “their language.”MAXIMIZE YOUR BUDGETWe are entrepreneurs ourselves. We know time is money and makeefficient use of our time. Our teams are well-organized and staffedappropriately. We have a low overhead and do not incur expensesunless necessary. We are value driven. “Give me six hours to chop down a tree and I will spend the first four sharpening the axe.” –Abraham LincolnCOMPREHENSIVE PERSPECTIVEAll of our attorneys have been involved in the entire life cycle ofintellectual property assets. For example, our attorneys prosecute,litigate, and license patents. Insights developed during litigation andlicensing, help us procure better patents. Our expertise in patent officeprocedure permits us to identify patent strengths and weaknessesduring litigation and licensing due diligence.
DAVID M. [email protected] Beckwith is a seasoned trial and appellatelawyer with over 28 years of courtroomexperience. His practice emphasizes litigation ofintellectual property cases in federal and statecourts. David represents domestic andinternational corporations in patent disputescovering a diverse range of industries includingmedical devices, smartphones, internet security and biotechnology. He hassuccessfully represented clients in courts across the country, as well as beforethe Ninth Circuit Court of Appeals, the Federal Circuit Court of Appeals, andthe United States Supreme Court.David practices all phases of patent litigation, from pre-filing portfolioanalysis, post-filing fact and expert discovery, Markman claim constructionhearings, jury trials and appellate review. He has obtained multimillion dollarverdicts and settlements for patent-owner clients, and has successfullyinvalidated patents and obtained judgments of non-infringement whenrepresenting defendants. David brings decades of “hands-on” experience innegotiating complex patent licenses and cross-licenses, acquisition duediligence involving IP, and monetizing IP. David is a registered PatentAttorney and has earned an “AV Preeminent” peer-review rating, reflecting hisachievement of professional excellence and ethical standards. David receivedhis J.D. from University of Virginia Law School and a B.S. in chemistry fromPurdue University.REPRESENTATIVE CASES: Multi-million dollar jury verdict in San Diego on a patent infringement suit against Merck KGaA Multi-million dollar settlement for Medtronic in patent infringement suit following finding of infringement by defendant Obtained favorable claim construction ruling in East Texas, culminating in a $200 million settlement© 2015 San Diego IP Law Group LLP
Successfully blocked plaintiff’s damages expert in East Texas, leading to favorable settlement Summary judgment of non-infringement for leading hemodialysis provider Obtained appointment of receiver of debt collection firm, and luxury golf resort Multi-million dollar settlement for Associated Builders and Contractors members in RICO suit against Carpenters’ Union Six-figure recovery for pension plan on ERISA claims against former executive© 2015 San Diego IP Law Group LLP
TREVOR Q. CODDINGTON, [email protected] Q. Coddington, Ph.D offers a unique blend ofhard-nosed litigation experience and extensivepatent prosecution experience. With a Ph.D. inPhysics and experience as an examiner with theU.S. Patent & Trademark Office (PTO), Trevorbrings a deep understanding of patent protectionand monetization strategies to his intellectualproperty practice. Trevor is the “go-to” IP counsel for a variety of innovativedomestic, European, and Asian companies.Trevor regularly advises clients in auxiliary IP matters involving trade secret,trademark, copyright, open-source code, and domain name matters. Trevorhas extensive experience in preparing and prosecuting patent applicationsbefore the PTO and numerous foreign patent offices worldwide in theelectrical, software, optical, and mechanical arts, as well as e-commerce.During his tenure at the PTO, Trevor examined patent applications in the artof applied cryptography.Dr. Coddington has been qualified as an expert in patent law and has renderedopinions regarding matters involving PTO procedure, patent licensing andownership, and acts of inequitable conduct by patent applicants.REPRESENTATIVE CASES: Successfully defended our client’s five patents during extensive reexamination proceedings, then successfully obtained a lucrative settlement resulting in an effective 25% royalty payment to our client Obtained a lucrative settlement payment and running royalty for our client in a patent infringement after just a few months of litigation Successfully obtained a lucrative settlement for a patentee against one of the largest pharmacy chains in the United States within just a few months after filing© 2015 San Diego IP Law Group LLP
Convinced opponent’s key technical expert to surrender his non- infringement and patent invalidity theories during a deposition, which prompted a highly favorable settlement just weeks before trial Found invalidating prior art that had not been considered by the PTO during reexamination of the asserted patent and convinced patentee to dismiss its claims against our client within months after filing of the lawsuit. Patentee further agreed to issue a press release announcing that our client’s products do not infringe and that customers may purchase our client’s products without fear of reprisal from PatenteeTrevor received his B.S. Engineering Physics degree from The Ohio StateUniversity in 1992. He received his M.S. and Ph.D. Physics degrees from OldDominion University in 1994 and 2000, respectively. He received his J.D.degree from George Washington University in 2004. Trevor is also admittedto practice before the United States Court of Federal Claims.Trevor’s general approach for developing an intellectual propertyprocurement strategy:Secrecy Patent Commercial Enforcement IP Eligibility Viability Infringers Issues StrategyIs there “secret Judicial Client’s Who will Can Optimized revenue infringe? infringement claims forsauce?” exception? streams be detected? utility patent protected? Will it beCan it be Prior art? copied? Source code Designreverse When does needed? patent/tradeengineered? Public use or market Supply chains dress disclosure? mature? captured? JointTechnical infringement? Copyright forattrition? Experimental Barriers to Inducement of software use? entry covered? customers ExpertConfidentiality? captured? involvement? Trade secrets© 2015 San Diego IP Law Group LLP
JAMES V. FAZIO [email protected] V. Fazio, III focuses on intellectual propertyand business litigation. He represents public andprivate companies in a wide variety of disputes,including those involving patent and trademarkinfringement, theft of trade secrets, fraud, breachof contract, unfair competition, false advertisingand various business tort claims. James has over20 years of litigation experience and was selected by his peers as one of thetop ten intellectual property litigators in San Diego in 2010, 2011, and 2014.James has represented clients in a broad variety of technologies, includingtelecommunications, computer hardware and software, semiconductors andchip design, medical devices and biometrics, business methods and e-Commerce, and wireless technologies, among others. James is alsoexperienced in defending major companies against large class action lawsuits,including those alleging securities fraud and false advertising, stockholderderivative suits, and investigations by the Securities and ExchangeCommission.James is a former Assistant United States Attorney for the Southern District ofCalifornia. While a federal prosecutor, James tried nearly a dozen federal jurycases to verdict and argued numerous appeals before the Ninth Circuit Courtof Appeals. Before co-founding San Diego IP Law Group LLP, James worked inprivate practice with several major global and regional law firms.REPRESENTATIVE CASES: Obtained a seven-figure settlement for an entertainment company client in a complex case involving computer hacking and related claims on the eve of trial Obtained numerous lucrative settlements for a public company client in several multi-patent infringement actions involving multi-modal biometric technology© 2015 San Diego IP Law Group LLP
Obtained a lucrative settlement for an e-commerce and risk management client in a complex case involving theft of computer code and unfair competition after taking over the case from prior counsel Won monetary sanctions against opposing counsel in a four-patent infringement case involving copy prevention technology, prompting an immediate and extremely-favorable settlement for our client Successfully defended an international shoe and apparel company in a trademark infringement action and reached a settlement that did not require payment of any monies to the plaintiff Successfully defended an international solar tubing business in a bet- the-company lawsuit, obtaining a dismissal of the case less than four months after filing Successfully defended several public computer companies in securities fraud class action lawsuits and parallel investigations by the Securities & Exchange Commission, obtaining dismissals of the district court cases and no-action letters from the SECJames received a B.A. in Economics from Colgate University, a Master’s degreein health law from the University of California at San Diego, and his JurisDoctor degree cum laude from Syracuse University College of Law, where hewas a member and editor of the Syracuse Law Review. James is a Barrister inthe Oliver Wendell Holmes, Jr. Chapter of the American Inns of Court and isthe former Chairman of the Alumni Program for Colgate University.James has lectured and written extensively on various legal topics and hasauthored or co-authored over a dozen legal articles in various publications,including IP Today, The Recorder, The FBA Newsletter, The Federal Lawyer,California Lawyer, The San Diego Daily Transcript, and The National LawJournal.James is admitted to practice in the State of California, all federal courts inCalifornia, including the Ninth Circuit Court of Appeals, and the Federal CircuitCourt of Appeals.© 2015 San Diego IP Law Group LLP
MARTY B. [email protected] B. Ready provides strategic counseling toemerging and developing companies on theprocurement, development, and commercialization ofintellectual property portfolios. Marty has preparedand prosecuted patent applications across a broadrange of technologies for corporate and academicinstitutions as well as for the solo inventor. Marty’sextensive experience in private practice at a boutique IP law firm, togetherwith his experience as in-house counsel, has provided him with a uniqueperspective perfectly suited for assisting today’s innovative companies. Martyhas over a decade of business and IP experience.Marty is admitted to represent clients before the United States Patent &Trademark Office and is admitted to practice law in the State of California.Marty earned his B.S. in Chemistry from Samford University in Birmingham,Alabama, his M.A. in Biochemistry from San Diego State University and J.D.,cum laude, from Thomas Jefferson School of Law.© 2015 San Diego IP Law Group LLP
RON PENAFLORTECHNICAL ADVISOR/PATENT AGENTRon Penaflor focuses his practice on drafting U.S. andinternational patent applications in the field ofsemiconductors, software, RF devices, mechanicaldevices, and wireless telecommunications.Ron has over 15 years of industry experience in thefield of semiconductor fabrication, testing and yieldoptimization. His legal endeavors include both in-house and law firm experience, giving him a broadand balanced set of skills in patent prosecution andlitigation. Ron provides technical and legal support in high profile patentcases. During his most recent endeavors, Ron has drafted and prosecutedseveral patent applications in the RF device area, focusing on new technologyand advanced antenna designs.Ron received his B.S. in Electrical Engineering from the University ofCalifornia at San Diego and is also a registered patent agent with the UnitedStates Patent and Trademark Office.© 2015 San Diego IP Law Group LLP
HAW-MINN LU, PH.D.TECHNICAL ADVISOR/PATENT AGENTHaw-minn Lu, Ph.D. focuses on patent prosecutionand litigation support and has experience innumerous fields, including electrical circuitry, signalprocessing, medical devices, wirelesscommunications, Internet, and computer networks.Prior to joining San Diego IP Law Group LLP, Dr. Luworked for several international law firms and in-house at a prominent semiconductor company. Inaddition to prosecuting patents, Dr. Lu also serves as a consulting expert inpatent litigation matters.Dr. Lu earned a B.S. in Mathematics in 1986 and B.S. and M.S. in ElectricalEngineering in 1988 all from the Massachusetts Institute of Technology,where Dr. Lu won MIT's Jon A. Bucsela prize in Mathematics and a NationalScience Foundation Fellowship. Dr. Lu received his Ph.D. in Electrical andComputer Engineering from the University of California at San Diego in 1998.© 2015 San Diego IP Law Group LLP
DENNIS O’KEEFE, PH.D.TECHNICAL ADVISORDr. Dennis O’Keefe is a technical advisor in the Firm’sintellectual property and litigation practice groups.His practice focuses on technical analysis and patentpreparation and prosecution in the areas ofmechanical engineering, alternate energy sources,semiconductor fabrication, and semiconductor devicephysics. In addition, Dr. O’Keefe performs prior artsearches for contested patents in litigation, analyzesand evaluates technical documents in litigation, generates timelines forinventions from conception through reduction to practice, and preparesinvalidity and infringement claim charts.Dr. O’Keefe has 16 years of work experience in surface and interface physicsand chemistry, mass spectrometry, ultrahigh vacuum, the development ofalternate energy sources and 18 years of experience in semiconductorfabrication and semiconductor device physics.Dr. O’Keefe is an inventor on 3 patents and has 25 scientific publications inpeer reviewed scientific journals and conference proceedings.Dr. O’Keefe earned his B.S. in physics with Honors from the University ofOttawa, Ontario, Canada, and M.S. and Ph.D degrees in engineering physicsfrom the Institute for Aerospace Studies, University of Toronto, Toronto,Ontario, Canada.© 2015 San Diego IP Law Group LLP
Search
Read the Text Version
- 1 - 14
Pages: