Diana M. Rutowski

Partner

Silicon Valley


Read full biography at www.orrick.com

Diana has always loved complex puzzles – studying each piece until the solution emerges. She applies that same determined curiosity to her IP practice. After carefully listening to each client, Diana examines every legal, business, and human element, arranging disparate pieces into elegant solutions. With Diana as their advocate, her clients can confidently develop and expand their IP strategy and portfolios.

As a seasoned IP litigator and counselor, Diana’s practice has run the gamut from counseling startups, to take-down and anti-counterfeiting campaigns, to employee departure investigations. She has represented clients before the Trademark Trial and Appeal Board, and handled trials in District Courts and before the International Trade Commission. Diana recently tried and won a complex case in which the other side sought to extend the monopoly of an expired utility patent by claiming trade dress rights in a technical product feature. Drawing upon experience handling both complex patent and trademark matters, her team successfully argued that the intersection of patent and trademark policy prevented the other side from continuing its monopoly, clearing the way for her client to enter the market. With Diana at their side, companies can rest assured that their essential assets are protected, from their company name, logo, and website, to their core technologies.

While at Orrick, Diana was seconded to the City and County of San Francisco, where she had the privilege to serve as an Assistant District Attorney, and first-chair several trials. She was also seconded to Salesforce, where she learned first-hand that the law comprises just one component of a company’s overall business strategy.

Diana is also passionate about her pro bono work. For example, she represented two detainees in Guantanamo in connection with their petitions for a writ of habeas corpus, and she is currently working with the Lawyers’ Committee for Civil Rights of the San Francisco Bay Area. Before joining the firm, Diana worked for the Legal Aid of Cambodia where she assisted with the prosecution of former Khmer Rouge officials and represented individuals who sought to reclaim land rights.

Diana is a member of the International Trademark Association, of ChIPs: Advancing Women in IP and of the Harvard Club of San Francisco.

Posts by: Diana Rutowski

How to Shoot for the Stars: Federal Circuit Clarifies EMVR Requirements

Power Integrations, Inc. v. Fairchild Semiconductor International, Fed. Cir. (July 3, 2018)

Patent damages law can be fairly complex—so much so that Daubert motions against damages experts are filed in nearly every case.  These motions often accuse damages experts of overreaching by failing to properly apportion damages or misapplying the entire market value rule (“EMVR”).  On Tuesday, the Federal Circuit’s opinion in Power Integrations, Inc. v. Fairchild Semiconductor International attempted to clarify these aspects of the patent damages analysis, vacating the jury’s $139.8 million damages award in the form of a reasonable royalty.

A patentee seeking damages for the sale of a multicomponent (or multifunction) product must typically take several steps to ensure that any alleged damages have been properly apportioned to exclude the value provided by the product’s noninfringing aspects.  First, the royalty base has to be determined on the smallest saleable patent practicing unit.  Second, that reduced royalty base needs to be apportioned to reflect only the value attributable to the patented technology.  A royalty based on the value of the entire multicomponent product will likely yield much higher damages, but such a royalty can be recovered only if the plaintiff satisfies the very strict requirements of the EMVR.

READ MORE

A Tale of Two Geoblocks: 2018’s Cases on Extraterritorial Broadcasts Lead to Differing Results

Spanski Enterprises v. Telewizja Polska, D.C. Cir. (March 2, 2018) and Carsey-Werner Company, LLC v. British Broadcasting Corporation, et al., C.D. Cal. (Feb. 23. 2018)

As TV shows and other copyrighted content are increasingly made available on globally accessible websites, questions regarding the territorial reach of copyright law are also on the rise.  The first quarter of 2018 has already produced a couple of interesting cases relating to extraterritorial performances and geoblocking.  READ MORE

Tangled in the Web: T.T.A.B. Dismisses Opposition Relying on Uncorroborated Internet-Based Evidence

Order Dismissing Opposition to Registration, WeaponX Performance Products Ltd. v. Weapon X Motorsports, Inc., T.T.A.B. (March 14, 2018)

Proving trademark rights in opposing an application to register a mark is crucial.  Opposers must marshal evidence substantiating such rights, and must be careful to select appropriate and sufficient evidence.  In the digital age, where trademark use is frequently over the Internet, parties often rely on websites and other Internet usage to substantiate claims of priority and a likelihood of confusion.  Recently, the Trademark Trial and Appeal Board (“Board”) dismissed WeaponX Performance Products Ltd.’s (“WeaponX Performance” or “Opposer”) opposition to Weapon X Motorsports, Inc.’s (“Weapon X Motorsports” or “Applicant”) application to register WEAPON X MOTORSPORTS, offering a reminder in a precedential decision that evidence from the Internet alone is not adequate. READ MORE

Federal Circuit Makes Way for FUCT, Striking Down the Statutory Bar on Immoral or Scandalous Trademark Registrations as Unconstitutional

Orrick has published a client alert titled, “Federal Circuit Makes Way for FUCT, Striking Down the Statutory Bar on Immoral or Scandalous Trademark Registrations as Unconstitutional,” discussing the recent U.S. Court of Appeals for the Federal Circuit decision involving the Lanham Act’s ban on  registering immoral or scandalous trademarks as unconstitutional on First Amendment grounds. Read the full alert here.

Algorithm Optional? A Guide to Computers as Structure in Means-Plus-Function Claiming

Summary Judgment Order, Fortinet, Inc. v. Sophos, Inc., et al., Case No. 13-cv-05831-EMC (Judge Edward Chen)

Means-plus-function claim elements are less common than in the past, due to stricter rules about their scope and requirements for validity. But when they do arise, it is still necessary to know how to deal with them. Judge Chen recently entertained cross-motions for summary judgment on whether a means-plus-function element is indefinite if the specification discloses using a computer but no algorithm. And while Judge Chen ultimately found he could not render summary judgment for either side, his order offers a primer on approaching software-related “means” elements. READ MORE

Don’t Bury the Lede: Failure to Explicitly List Prior Art Witnesses Can Preclude Them from Testifying

Order Striking Witnesses from Supplemental Initial Disclosures, Finjan, Inc. v. Proofpoint, Inc. et al., Case No. 3:13-cv-05808-HSG (HRL) (Magistrate Judge Howard Lloyd)

How much disclosure is sufficient when you want the author of a prior art reference to testify at trial? Magistrate Judge Lloyd offers one possible answer: invalidity contentions and prior art disclosures alone only identify references that defendants find important, but do not put plaintiff on notice that all the prior art authors and inventors are potential trial witnesses. Therefore, relying on contentions alone may place a defendant at risk that it will not be permitted to call the relevant prior art witnesses. While this order comes with a cautionary tale, will it lead to more meaningful disclosures? READ MORE

Producing 500,000 Pages of Documents and Source Code Found to be Good Cause For Leave to Amend Infringement Contentions

Order Granting Motion For Leave To Amend Infringement Contentions, Delphix Corp. v. Actifio, Inc., Case No: 13-CV-04613 BLF-HRL(Judge Howard R. Lloyd)

The NorCal IP Blog has reported on multiple decisions granting or denying leave to amend infringement contentions. See http://blogs.orrick.com/iplandscape/?s=infringement+contentions. A constant theme throughout has been the Northern District’s strict adherence to the Patent Local Rules for guidance on allowing amendments. Magistrate Judge Howard R. Lloyd echoed that theme this week in Delphix Corp. v. Actifio, Inc., Case No. 13-cv-04613 BLF (HRL), when he granted defendant/counterclaim plaintiff Actifio, Inc.’s (“Actifio”) motion to amend its infringement contentions. Critical to his decision was plaintiff/counterclaim defendant Delphix Corp.’s (“Delphix”) production of source code and over 500,000 pages of new information about the accused product, not otherwise available to Actifio. READ MORE

What a Difference a Few Letters Make – Judge Donato Strikes Patent Claim over Ambiguous Typo, While Sparing Another Through Claim Construction

Order Re: Claim Construction and Invalidity, Altera Corp. v. PACT XPP Tech., AG, Case No. 14-cv-02868-JD (Judge James Donato)

When filing a patent application, make sure to cross your t’s and dot your i’s—and also check for typos and ambiguous antecedents. In a recent order addressing claim construction and a motion for summary judgment on indefiniteness, Judge Donato invalidated a patent claim based on a typographical error, and nearly invalidated a claim for an ambiguous antecedent. READ MORE

Don’t Get Personal

Xilinx, Inc. v. Papst Licensing GMBH & Co. KG (Judge Lucy Koh) (July 9, 2015)

The Supreme Court’s 2014 ruling in Daimler v. Bauman raised the bar to establish personal jurisdiction over a defendant. Daimler has made it substantially more difficult for a foreign corporation to be haled into US courts. While Daimler dealt specifically with the issue of whether the acts of a US-based subsidiary should be imputed to the parent foreign corporation for personal jurisdiction purposes, it generally found that a court only has general personal jurisdiction if the foreign defendant’s affiliations with the forum state are “so continuous and systemic as to render [it] essentially at home in the forum state.” READ MORE

The Fact That an Argument Is a Loser Is Not Enough to Make It Stand Out in a Crowd

Order Denying Defendant’s Motions for Sanctions and Attorney Fees, Kreative Power, LLC, v. Monoprice, Inc., Case No. 14-cv-02991-SI (Judge Susan Illston)

Little more than a year has passed since the Supreme Court articulated a more lenient standard for awarding fees in a patent case pursuant to 35 U.S.C. § 285.  In two unanimous rulings—Octane Fitness and Highmark—the Supreme Court threw out the old test, finding it was so demanding that it rendered Section 285 essentially meaningless, because it conflated a statutory award of fees with the Court’s inherent power to sanction.  READ MORE