Diana Szego Fassbender has significant experience in a broad array of intellectual property matters, including patent, copyright, and trademark issues.

She has been involved in all phases of litigation, from inception through trial and appeal. Ms. Fassbender has worked closely with other attorneys and client representatives to develop innovative and cost-effective case strategy to help prepare cases for trial or obtain early resolution on favorable terms. Ms. Fassbender has significant experience representing international clients, including particularly businesses and organizations in Asia and Europe.

Ms. Fassbender regularly litigates complex multi-defendant, multi-patent district court infringement actions and Section 337 Investigations in the International Trade Commission, representing clients in the consumer electronics, semiconductor, e-commerce, Internet media, and life sciences industries.  Ms. Fassbender also routinely represents clients in trademark matters, including trademark infringement cases, domain name arbitrations under the Uniform Dispute Resolution Policy, and proceedings before the Trademark Trial and Appeals Board, and provides representation in international trademark prosecution and branding strategy. Ms. Fassbender also works on intellectual property issues surrounding the Internet, such as pursuing actions under the AntiCybersquatting Consumer Protection Act, and drafting terms of use and other similar agreements governing content for website operators. Ms. Fassbender has worked on several copyright, unfair competition, defamation, and contract actions in federal and state trial courts on behalf of clients in the music, entertainment, and sports industries.

Some of her notable matters include:

Patent

  • Defended Universal Lighting Technologies, Inc., in a patent infringement lawsuit brought by a subsidiary of Acacia Research Corporation, one of the largest patent holding companies, including through a high profile patent appeal. Following a week-long jury trial in the United States District Court for the Northern District of Texas, Orrick helped its client obtain a ruling in favor of Universal Lighting before the en banc United States Court of Appeals for the Federal Circuit, which affirmed and reinstated a January 2013 panel decision that likewise had ruled in favor of Orrick's client and invalidated the asserted patent. See Lighting Ballast Control LLC v. Universal Lighting Technologies, Inc., Case No. 7:09-CV-00029 (N.D.Tex.). The en banc Court of Appeals also addressed the question of the standard to be used in reviewing district court rulings construing patent claims, and reaffirmed its prior holding that patent claim construction should be reviewed de novo on appeal. The Supreme Court subsequently vacated the Federal Circuit’s decision and remanded the case to the Federal Circuit to apply the newly-established clear error standard of review. While the Federal Circuit ultimately affirmed the judgment in favor of the plaintiff, the jury’s damages award was less than 5% of what plaintiff sought and the jury also found that Universal Lighting had not wilfully infringed.  
  • Defended Panasonic Corporation and Panasonic Corporation of North America in a patent infringement suit in the District of Delaware and a related, concurrent patent infringement investigation in the International Trade Commission. The infringement matters were brought by the same non-practicing entity and involved a combined total of seven patents-in-suit relating to graphics, computer processing, and display capabilities asserted against television, monitor, and tablet products.
  • Represented defendant Fujifilm Corporation in two related infringement lawsuits involving digital cameras. Ms. Szego defended fact depositions, was heavily involved in expert discovery, and prepared pretrial disclosures and drafted motions in limine in the district court litigation, and helped prepare arguments in the simultaneous appeal of an earlier litigation involving the same plaintiff and the same asserted patents. On appeal, the Federal Circuit ruled in favor of Fujifilm and reversed the district court's judgment of infringement. See St. Clair Intellectual Property Consultants, Inc. v. Canon et al.; 2009-1052, 2010-1137, -1140 (Fed. Cir.); St. Clair Intellectual Property Consultants, Inc. v. Fujifilm Corporation, et al., C.A. No. 08-373 (D. Del.).
  • Represented a leading global Internet provider and media company in multipatent infringement case. Negotiated and drafted complex settlement arising out of mediation.
Trademark

  • Regularly provides trademark prosecution and branding advice to emerging companies in the technology sector.
  • Represented international sporting association with respect to the misuse of its trademarks by non-licensed entities. Obtained successful resolution of the matter without the need for litigation.
  • Successfully defended band members in an injunction action over disputed name, including preparing for an evidentiary hearing on an expedited basis in order to allow the band to proceed with a previously planned world concert tour.
  • Drafted complaint on behalf of a global financial services institution over unauthorized use of the client’s mark, and obtained a favorable resolution of litigation for client.

Copyright

  • Representing automotive components manufacturer in action alleging violations of the Audio Home Recording Act under the Copyright Act.
  • Represented recording companies in copyright infringement actions based on the illegal downloading of copyrighted recordings, including appearing on behalf of the plaintiff record labels in federal hearings.
  • Defended a national television broadcasting station in a work-for-hire copyright dispute over ownership of copyright in actor performances on television program.
  • Represented a state agency in a copyright infringement and work-for-hire dispute with a former employee, including evidentiary proceedings on a request for permanent injunction.
  • Counseled a major industrial designer on issues relating to use of client’s mark by licensees.

Posts by: Diana Fassbender

PILLOW TALK: A Threat to Trade Secrets?

It turns out that, even in romantic relationships, some things are best kept secret.  On July 7, 2017, Teva Pharmaceuticals USA, Inc. filed a complaint in the Eastern District of Pennsylvania alleging that a former executive disclosed confidential information to a romantic partner who happens to be an executive of one of Teva’s direct competitors.

Teva alleges that during multiple years of her employment, Defendant Barinder Sandhu, its former senior director of regulatory affairs, shared trade secrets and other confidential information with Defendant Jeremy Desai, Apotex’s president and CEO.  Teva asserts that Sandhu violated her confidentiality agreement and several company policies by:

  • emailing confidential documents directly to Desai at Apotex;
  • emailing confidential documents to her personal Gmail account in order to share with Desai without Teva’s detection;
  • using USB flash drives to copy confidential files from her work laptop;
  • verbally communicating and providing printed copies of confidential information; and
  • backing up confidential files to a cloud-based drive for nearly two years.

Teva contends that Desai and/or co-defendant Apotex used the misappropriated information to gain a competitive advantage: Desai allegedly received product development information relating to “Product X,” a generic drug being developed by Teva, which Apotex employees discussed and used to speed regulatory approval and advance the market position of Apotex’s competing product.  Among other claims, Teva sued for violations of the Defend Trade Secrets Act, Computer Fraud and Abuse Act, and state Uniform Trade Secrets Act.

Since an employer can’t control the romantic relationships of its employees, what can an employer do to minimize the harm from betrayal by a trusted employee blinded by love?

Teva’s own actions provide good examples.  According to the complaint, Teva had a confidentiality agreement in place with Sandhu (giving it the right to an injunction and fees) along with policies governing confidential information, data privacy, documents and records, and computer systems and security, as well as a code of business conduct.  Teva also contends that it used multiple means to protect its trade secret information, including limiting dissemination to need-to-know employees, limiting electronic access to documents, using password protection, and maintaining building security.  While these measures may not have ultimately prevented the wrongful disclosure of Teva’s information in the first place, they are likely to give Teva an advantage in litigation.

“It’s a Free Country, Right?” Court Declines to Enjoin Ex-Free Country Ltd. Employees From Contacting Customers on Purloined Contact List

Within days of each other, your clothing company―Free Country Ltd.―loses two employees who decamp to a rival to set up a competing apparel line.  You discover that just before leaving, they transferred some 50,000 documents to a personal account—customer orders, your master contact list, and product design information.  Incensed, you file a trade secrets lawsuit and seek an injunction prohibiting the thieves from soliciting your customers.  Their defense amounts to, “so what if we took the documents―it’s a free country!”  Easy win, right?  Wrong.  These are the facts of a recent trade secrets lawsuit in the Southern District of New York, in which the court denied the plaintiff’s request that its former employee defendants be prohibited from soliciting plaintiff’s customers. READ MORE

Navigating Non-Competes When a Worldwide Presence Is the New Norm

Businesses that compete globally are once again reminded of the need to avoid overreaching when requiring employees to sign non-compete agreements.  Earlier this year, the Court of Appeals for the Eighth Circuit affirmed a ruling that a non-compete agreement was unreasonable on its face and thus enforceable because it imposed a blanket prohibition on the employee’s ability to seek employment of any kind with a competitor worldwide.  While the Eighth Circuit recognized that non-compete agreements had been upheld in the past despite containing no geographic limitations, the court distinguished those agreements on the basis that they contained narrowly circumscribed prohibitions.  The Eighth Circuit’s analysis provides a valuable “lesson learned” for businesses crafting or considering an effective non-compete. READ MORE

We Have Your Data. Pay Up or Else…

You wake on a Tuesday morning expecting to have an average day at work.  You are skimming through the emails that came in while you were asleep, when you notice an email from one of your employees.  He is not only giving his resignation, but is also, more importantly, demanding a ransom in exchange for not disclosing company trade secrets and other highly confidential information.  What do you do?
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