Trademark litigants often submit survey evidence to prove that there is (or is not) a likelihood of consumer confusion between two trademarks. Parties hoping to rely on such surveys should be careful, however, to mimic market conditions as closely as possible—for instance, ensuring that the emulated market conditions include an appropriate context reflecting how purchases actually are made. Parties also should heed professional survey research in constructing survey designs, so that the results are considered trustworthy and directed to the relevant issue. READ MORE
- Digital Communications: 3G and 4G LTE wireless applications for mobile devices, including emerging IoT and M2M technologies; VoIP software and hardware; Digital Signal Processing (DSP);
- Computer Networking: IEEE 802.3 Ethernet network applications; Power-over-Ethernet systems; wireless hotspots and routing configurations
- Semiconductor: Designs for DRAMs, ASICs, Power MOSFETS, and FPGAs; chip mask work protection
- Internet and Data Management Systems: Online payment and security mechanisms; Internet routing; Web-caching; Internet content delivery software; social networks, online distribution methodologies
- Software Design: GDS II layout design tools; HTML and PHP scripting; CGI programming; mesh networking
- Hardware and Security: Distributed Antenna Systems (DAS); ball grid array (BGA) inspection devices; ATM packet-switching platforms; biometric security systems; satellite television “smart card” security systems; electronic television program guide hardware
- Software: Virtual machines, Graphical user interfaces (GUIs); MySQL databases; design and functionality of computer operating systems; electronic television program guide software
He regularly speaks at prestigious legal conferences throughout the United States, including the Sedona Conference (for which he serves as a Steering Committee Member of the Working Groups supervising the development of national Best Practices in Patent Litigation), the Intellectual Property Owner’s Association Annual Meeting, the Federal Circuit Bench and Bar, and the American Intellectual Property Lawyers Association Annual Conference. He also has continued his grandfather’s legacy by speaking at Alien Con, offering legal insight to those curious where space and the law intersect.
The following are representative of Monte's engagements with Orrick.
- Animal Legal Defense Fund. Monte has represented the Animal Legal Defense Fund ("ALDF") in multiple pro bono engagements, including serving as lead counsel in the organization's appeal to the Ninth Circuit of a summary judgment ruling denying the ALDF inspection under the Freedom of Information Act ("FOIA") of battery cage egg production records generated from Salmonella inspections by the Food and Drug Administration ("FDA") at various Texas-based factory farm egg production facilities. That appeal, which Monte argued, produced three published opinions including a landmark unanimous en banc ruling from the Ninth Circuit that overturned the standard of review that had been used by the Court of Appeals in all FOIA appeals for more than 30 years, and led further to a reversal by the three judge panel of the underlying adverse summary judgment ruling. Animal Legal Defense Fund v. FDA, 819 F.3d 1102 (9th Cir. 2016), on reh'g en banc, 836 F.3d 987 (9th Cir. 2016) (en banc) (per curiam), reversing and remanding, 839 F.3d 750 (9th Cir. 2016) (per curiam). The Animal Legal Defense Fund awarded Orrick its prestigious 2016 Pro Bono Achievement Award in part due to this important appellate victory.
- Facebook. Monte was one of the principal attorneys who defended the popular social network Facebook and its creator, Mark Zuckerberg, in a high profile and widely-publicized lawsuit involving allegations of copyright infringement, trade secrets misappropriation, and related claims brought in the District of Massachusetts. The plaintiffs included Cameron Winklevoss, Tyler Winkelvoss, and Divya Narenda, three former Harvard students who created their own competitive Web site originally called "HarvardConnection," and later called "ConnectU." He also represented Facebook and Mr. Zuckerberg in their own independent lawsuit in California against ConnectU and related parties based on violations of the Federal CAN-SPAM Act, and California Penal Code Section 502(c). See Facebook, Inc. v. ConnectU LLC, 489 F. Supp.2d 1087 (N.D. Cal. 2007). Both cases settled, after which Monte was heavily involved in collateral proceedings related to that settlement. He participated as one of the key members of an Orrick appellate team that attained a widely-publicized ruling from the Ninth Circuit affirming the enforceability of the settlement. See Facebook, Inc. v. Pacific Northwest Software, Inc., 640 F.3d 1034 (9th Cir. 2011). Monte also was one of Orrick's team of lawyers who represented Facebook in another highly publicized lawsuit against Power Ventures, Inc. and its founder Steve Vachani. In that case, Facebook received summary judgment of liability on its claims for violations of the CAN-SPAM Act, the Computer Fraud and Abuse Act, and California Penal Code Section 502, and ultimately recieved a judgment against both defendants for more than $3,000,000, as well as a permanent injunction enjoining further violations of the laws by both Power Ventures and Vachani. Facebook v. Power Ventures, Inc., 844 F. Supp. 2d 1025 (N.D. Cal. 2012) (granting summary judgment), later proceedings granting damages and permanent injunction, 2013 WL 5372341 (N.D. Cal. Sept. 25, 2013).
- Cisco Systems. Monte defended Cisco in the Eastern District of Michigan concerning allegations that the company's hubs and IP Phone products infringed claims of a patent directed to an anti-theft system for continuously monitoring pieces of computer equipment connected to a network. He was involved actively in identifying relevant prior art, working with expert witnesses and presenting arguments to both the Court and a Special Master. As a result of the team's efforts, the principal independent apparatus claim asserted in the case was found to be invalid on several independent grounds, and also non-infringed. See Chrimar Systems, Inc. v. Cisco Systems, Inc., 318 F.Supp.2d 476 (E.D.Mich 2004). The case settled following this published ruling.
- VMware and EMC Corporation. Monte was one of the team of lawyers who represented virtualization software leader VMware in multi-defendant patent litigation in the Eastern District of Texas. The team that included Mr. Cooper defended VMware from claims brought by Aloft Media LLC alleging that VMWare's vCenter CapacityIQ virtual appliance infringed various claims in two patents, each of which was directed to collaborative decision-making. The case settled even before VMware was required to engage in any discovery. He also currently is representing VMware in two different patent litigation matters brought by MOSAID, Inc. and Clouding IP LLC in the District of Delaware. In the former action, MOSAID claims VMware's Gemfire software product infringes multiple patents directed to network distributed caching mechanisms. In the Clouding IP matter, the plaintiff has alleged infringement by VMware and EMC of ten patents originally assigned to Symantec Corporation by virtue of VMware and EMC offering a variety of virtualization and cloud computing products.
- Vident. Monte was one of the principal attorneys who served as litigation counsel for Vident, a distributor of high-quality, prefabricated artificial teeth, in private antitrust litigation with Dentsply International, Inc. in the Central District of California. In 2008, after Vident prevailed on a motion to apply collateral estoppel against Dentsply, the Court entered judgment in favor of Vident against Dentsply in the amount of $18 million on the antitrust claim. Prior to then, Monte served as Vident’s counsel in a major antitrust action brought by the United States Department of Justice in the District of Delaware against Dentsply. See United States v. Dentsply Int'l, Inc., 399 F.3d 181 (3d Cir. 2005). In the DOJ action, Monte represented Vident in all aspects of the case, which involved allegations that Dentsply’s exclusive dealing contracts with dental dealers violated the Sherman and Clayton Acts. In that role, Monte defended company executives during their depositions and also represented Vident’s president during his appearance at trial. Early in the case, Monte's own testimony was even cited by the Court as a principal reason why Dentsply’s in-house lawyer would not be permitted access to any confidential third-party information. See United States v. Dentsply Int’l, Inc., 187 F.R.D. 152, 161 & n.9 (D. Del. 1999).
- Yahoo!, Inc. and Inktomi Corporation. Monte was significantly involved in the defense of Yahoo!'s wholly owned subsidiary, Inktomi Corporation, in a multiple-defendant/multiple-patent infringement case. This case concerned Inktomi's “Web caching” services. The case settled after Inktomi obtained favorable rulings on a variety of issues, including interpretations of both the plaintiff's “Rule 11” pre-filing obligations, and the adequacy of the plaintiff’s infringement contentions under the unique Patent Local Rules adopted in the Northern District of California. See Network Caching Technologies, L.L.C. v. Novell, 67 U.S.P.Q.2d 1034 (N.D. Cal. 2002). Monte also defended Yahoo! and its subsidiary Inktomi in a multidefendant patent infringement case that involved Yahoo!'s and Inktomi’s Web caching technology and software products. The case settled shortly after the team obtained key summary judgment rulings in favor of Yahoo! holding that two of the claims at issue were non-infringed, and one was invalid as non-enabled. See Teknowledge Corp. v. Akamai Tech., Inc., 73 U.S.P.Q.2d 1021 (N.D. Cal. 2004).
- NextG Networks, Inc. Monte represented NextG Networks, Inc. in its successful efforts to enforce against NewPath Networks LLC a pioneer patent related to radio frequency (RF) communication network architectures employed within Distributed Antenna Systems. The case settled shortly after NextG received from the Chief Judge of the Northern District of California a favorable patent claim construction ruling in which the Court elected not to adopt a single one of NewPath's proposed interpretations for the disputed terms. See NextG Networks, Inc. v. NewPath Networks LLC, 2009 WL 1226556 (N.D. Cal. 2009).
- KLA-Tencor Corporation and Nvidia Corporation. Monte is one of Orrick's attorneys currently representing KLA-Tencor's wholly-owned subsidiaries ICOS Vision Systems Corporation, N.V. and ICOS Vision Systems Inc., as well as Nvidia Corporation, in multipatent declaratory judgment litigation in the Southern District of New York. The defendant-patent owner is Scanner Technologies Corporation. In the actions, which center on ICOS' ball grid array inspection technology, Monte's efforts have already proven integral in defeating Scanner's efforts to dismiss all of the declaratory judgment actions, and also in proving that ICOS is entitled to an implied license preventing Scanner from seeking damages for any products in existence as of March of 2009. See ICOS Vision Sys. Corp. N.V. v. Scanner Tech. Corp., 2012 WL 512641 (S.D.N.Y. 2012) (Order granting ICOS summary judgment on its implied license claims); ICOS Vision Sys. Corp. N.V. v. Scanner Tech. Corp., 699 F.Supp.2d 664, 2010 WL 1223454 (S.D.N.Y. 2010) (Order denying Scanner's motion to dismiss).
- Gamefly, Inc. Monte had a lead role in representing Gamefly, Inc., from allegations that its popular videogame delivery service infringed patents related to online rental queue notification methods. In the multidefendant case originally filed in the Eastern District of Oklahoma, Monte was one of the attorneys who ultimately convinced the Court to transfer the matter to California. See Media Queue LLC v. Netlfix, Inc., 2009 WL 464456 (E.D. Okla. 2009). He also led successful settlement negotiations with the plaintiff which resulted in the early dismissal of Gamefly from the litigation.
- D-Link Systems, Inc., and PowerDsine Ltd. Monte held the lead role in representing both D-Link Systems, Inc. and PowerDsine Ltd., a wholly owned subsidiary of Microsemi Corporation, in separate patent infringement lawsuits pending in the Eastern District of Michigan with Chrimar Systems, Inc. Both cases involved the standardization of Power-over-Ethernet (POE) technology, which is employed in such popular applications as IP Phones. Monte secured from the District Court both a favorable claim construction ruling, and subsequently a critical recommendation on application of collateral estoppel from an appointed special master. See Chrimar Systems, Inc. v. PowerDsine Ltd., 2008 WL 2966470 (E.D. Mich. 2008) (Memorandum on Claim Construction); Chrimar Systems, Inc. v. PowerDsine Ltd., 2009 WL 6337978 (E.D. Mich. 2009) (Report and Recommendation of Special Master Concerning Defendants' Motion for Application of Collateral Estoppel on Prior Art References). Following both of those rulings, both Microsemi and D-Link settled.
- UPEK, Inc. Monte was one of Orrick's team of attorneys who represented UPEK, Inc., a leader in the design and manufacturing of biometric fingerprint scanners, in multi-patent infringement litigation against AuthenTec, Inc. in the Northern District of California. See UPEK, Inc. v. AuthenTec, Inc., 2010 WL 1485995 (N.D. Cal. 2010) (Order denying AuthenTec's motions for summary judgment). The case settled following the merger of the two companies involved in the litigation.
- Charles Schwab & Co. and CyberTrader, Inc. Monte was a member of the team that defended both Charles Schwab & Co. and its subsidiary CyberTrader, Inc., as well as Chicago-based Terra Nova Trading, LLC, in a patent infringement case filed by a Montana-based software company. The case included five other defendants, all of whom were directly or indirectly involved in online investment or brokering services, and related to a software patent that was directed to customizable electronic kiosks. The case settled favorably for all three Defendants that Monte represented shortly after the team filed a motion for summary judgment and presented claim construction positions during a one-day Markman hearing.
- Fujitsu. Monte represented Fujitsu, Ltd., in significant, multinational cross-license negotiations with a major United States technology company relating to both companies' extensive patent portfolios. The cross-license evaluations involved each company's numerous semiconductor patents and technologies related to manufacturing design, analog device methodologies, Digital Signal Processing, SRAM composition, semiconductor fabrication and CDMA applications, among others. The negotiations also required extensive prior art evaluation. As a result of more than a year of negotiations and evaluations of more than 100 United States, Japanese, and European patents, a successful international cross-license agreement was reached. Monte also was on the team of Orrick lawyers that represented Fujitsu Computer Products of America, Inc., and Fujitsu Computer Systems Corp. in multidefendant patent litigation brought by Stormedia Texas, LLC in the Eastern District of Texas, Marshall Division, concerning the companies' hard disk drive products. The case settled favorably for both defendants, even before a Markman hearing was held.
- Xoft, Inc. Monte was one of the principal team members of Orrick's representation of Xoft, Inc., in declaratory judgment patent litigation with Cytyc Corporation and Proxima Therapeutics, Inc., in the San Jose Division of the Northern District of California. The lawsuit concerned a revolutionary electronic brachytherapy system designed for cancer therapy, which utilized an X-ray source as opposed to a radionuclide for treatment. Monte assisted with all aspects of the case, including defending the company's CEO and marketing director at their depositions, and taking the depositions of several inventors with extensive backgrounds in high-energy physics and biomedical engineering. The case settled after Xoft received a favorable Markman ruling. Xoft, Inc. v. Cytyc Corp., 2007 WL 1241990 (N.D. Cal. 2007). Monte also was one of the attorneys who defended Xoft and its parent company ICAD, Inc. in the District of Delaware from allegations brought by Carl Zeiss Meditec, Inc. and Carl Zeiss Surgical Gmbh that various Xoft products infringe claims in four patents which the Zeiss entities claim to own. That case settled favorably for Xoft after the parties presented Markman arguments to the Court.
- eBay Inc. and PayPal, Inc. Monte defended eBay Inc. and its subsidiary PayPal, Inc. in a high-profile patent infringement action brought by AT&T in Delaware. The case involved the companies' popular online payment mechanisms. Monte was a key member of the team that defended the companies, particularly with respect to their invalidity defenses. The case settled favorably.
- NITGen Co., Ltd. Monte was an integral part of a team that represented NITGen Co. Ltd., a developer of biometrics technology based in South Korea, in a complex AAA arbitration against SecuGen Corporation. The result of that arbitration was a major victory for NITGen. More than 25 claims and counterclaims were at issue, including patent, copyright, trade secrets, trade libel, trademark and contract claims, as well as claims for breach of fiduciary duty, accounting fraud, money laundering and embezzlement. The arbitrator ordered a net award to NITGen of more than $3.3 million, while also terminating an onerous technology license that was the framework for most of SecuGen's own claims. The arbitrator also concluded that a corporate officer of SecuGen engaged in embezzlement and further held that two patents owned by SecuGen were not infringed by any NITGen biometric device as a result of shop rights.
- Firetide, Inc. Monte was one of Orrick's lead lawyers in defending Firetide, Inc., from allegations of patent infringement directed at Firetide's wireless mesh products brought by Linex Technologies, Inc. in multidefendant litigation in the Eastern District of Texas. As a result of Monte's efforts, the case settled favorably for Firetide even before a Markman hearing was held.
- HearMe. Monte was a principal member in the representation of the plaintiff HearMe (formerly known as Mpath). In the action, HearMe asserted that multiple claims of two patents covering upper-level protocol solutions were infringed by VoIP software used by Lipstream Networks, Inc. The case settled after two separate multiday Markman hearings resulted in HearMe obtaining a favorable ruling from the Court construing certain of the relevant claims.
- Net.com (aka Network Equipment Technologies, Inc.). Monte was part of the team that represented plaintiff Net.com in a trade secrets case involving the company's proprietary “intelligent network edge” switches. Net.com obtained a stipulated injunction (a) limiting ex-employees’ job duties for defined time periods; (b) precluding the use or disclosure of trade secrets; and (c) imposing a neutral third-party evaluator to monitor compliance.
Posts by: Monte Cooper
Boston Sci. Corp. v. Cook Grp., Inc., No. 15-980-LPS-CJB, 2017 U.S. Dist. LEXIS 146126, at *2 (D. Del. Sep. 11, 2017); Bristol-Myers Squibb Co. v. Mylan Pharm., Inc., No. 17-379-LPS, 2017 U.S. Dist. LEXIS 146372, at *3 (D. Del. Sep. 11, 2017)
In the wake of the Supreme Court’s TC Heartland decision, District of Delaware Chief Judge Stark recently decided two venue transfer motions in patent cases that may have far-ranging implications for future patent litigation in Delaware. In one case, he ordered further discovery on the appropriateness of venue in the other, given the past litigation conduct of the defendant. In the other, he transferred the case out of the district. These decisions may be especially important in Hatch-Waxman cases where generic drug companies lack a corporate presence in Delaware but previously have sought to challenge a patent under that statute. READ MORE
Tricky questions can arise when a person or company attempts to copyright the decorative aspects of a “useful article” that has some practical, nonartistic function. The questions become trickier still when the decorative aspects of the article are three-dimensional “sculptural” elements, as opposed to two-dimensional words or images. Judge Katherine Forrest’s recent order in Jetmax Ltd. v. Big Lots, Inc. et al., pending in the Southern District of New York, addresses whether a plaintiff can copyright the decorative cover on a set of Christmas lights. Note that the “cover” is the physical housing that surrounds the light bulb. READ MORE
We’re excited to announce the recent transition of Orrick’s former NorCal IP blog into its new iteration – IP Landscape (Today’s News, Tomorrow’s Strategy)! Our new blog is more comprehensive in scope and will focus on a variety of intellectual property issues and events, both national and international, that are likely to affect the bottom line for many technology-driven enterprises. Through our blog, you’ll find information and updates to help drive business strategies.
We hope this new blog will be an entertaining and useful resource for those interested in the latest case law, happenings and events that affect the entire landscape of intellectual property. We’ll be covering patent, trademark and copyright rulings in what might be described as the most “popular” venues, such as the Northern and Central Districts of California, the Eastern District of Texas, the District of Delaware, the International Trade Commission (ITC), and the Patent Trial and Appeal Board (PTAB). We will also be reporting on other IP-related and newsworthy events, such as significant developments in copyright, trademark, antitrust, entertainment and trade secret litigation, not to mention legislative changes, local networking events, IP licensing issues and other hot topics of interest. READ MORE
The Emmy nominations have been announced, and the fall television season is just weeks away. Accordingly, we thought it would be fun to revisit an interesting trademark ruling from earlier this year that still seems timely given these events.
With the rise of social media, mobile phone applications and viral marketing, cross-overs between the real world and the fictional world of T.V. shows, movies and video games, are becoming increasingly commonplace. To promote the upcoming season of its popular T.V. show Better Call Saul, for example, AMC created actual Los Pollos Hermanos fast-food restaurants in cities across the U.S. Similarly, in the summer of 2006, ABC and the creators of Lost created an alternative reality game called The Lost Experience that included such disparate activities as advertisements of fictional companies on a variety of ABC programs and advertising sponsor websites, the publication under a pseudonym of a best-selling mystery novel called “Bad Twin,” a live disruption at San Diego’s Comic-Con by a fictional protagonist named Rachel Blake trying to unravel some of Lost’s mysteries, and the world-wide sale at special locations of fictional “Apollo” candy bars that had been featured in the show. As these examples reflect, the names and likeliness of fictional locations, objects, and characters can represent significant and valuable components of a company’s intellectual property rights. READ MORE
It may be late July, but the impending Congressional recess has not lessened potential interest by lawmakers in patent reform. On June 21, 2017, Sen. Christopher Coons (D-Delaware) introduced Senate Bill 1390, entitled the Support Technology and Research for Our Nation’s Growth and Economic Resilience (STRONGER) Patents Act of 2017. Sen. Tom Cotton (R- Arkansas), Sen. Richard Durbin (D- Illinois), and Sen. Mazie Hirono (D-Hawaii) cosponsored the bipartisan bill. The Bill’s stated purpose is “to strengthen the position of the United States as the world’s leading innovator by amending title 35, United States Code, to protect the property rights of the inventors that grow the country’s economy.” To accomplish this goal, the Senate Bill proposes to amend many of the patent law core concepts introduced by the America Invents Act of 2011 (AIA) and developed in the Courts in the past 20 years by, among other mechanisms, making patents more difficult to challenge in post-grant proceedings and overturning multiple Supreme Court decisions regarding injunctive relief and standards for induced infringement. The authors of the Bill, citing the fact that the U.S. Chamber of Congress in 2017 ranked the U.S. Patent System as being only the 10th strongest in the world after having ranked it first in every prior year, contend that unintended consequences of the AIA’s reforms and recent rulings from the Supreme Court have weakened the value of patents to such a degree that further legislative action is warranted. READ MORE
Albert Einstein once noted: “Any fool can know. The point is to understand.” That logic was recently applied in a patent infringement case brought by GeoVector Corporation against Samsung. GeoVector learned that the Courts of the Northern District will not accept the sufficiency of infringement contentions that the Court itself finds inscrutable and unintelligible merely because the defendant has supposedly “demonstrated an understanding” of the plaintiff’s theories. READ MORE
Order Denying Motion to Vacate Judgment, Protegrity USA, Inc. v. Netskope, Inc., Case No. 15-cv-02515-YGR (Judge Yvonne Gonzalez Rogers)
When parties settle a case, they usually want to put it all behind them and move on. But what if the court’s decisions still hang over their heads? Protegrity thought it could erase the past by agreeing with its opponent to have an undesirable ruling vacated, but it learned the hard way that such a result is outside the parties’ control. READ MORE
Defendants Are Reunited Notwithstanding Plaintiff’s Attempts To Keep Them Apart: Order Denying Plaintiff’s Motion to Stay and Granting Defendant’s Motion for Summary Judgment, Emmanuel Gonzalez v. Tagged, Inc., Case No. 16-cv-00574 (Judge Yvonne Gonzalez Rogers)
In Shakespeare’s The Comedy of Errors, twin brothers are separated at birth and reunited under amusing and confused circumstances many years later. READ MORE
“Oho!” said the pot to the kettle;
“You are dirty and ugly and black!
Sure no one would think you were metal,
Except when you’re given a crack.”
The adage “the pot calling the kettle black”—referring to someone who is guilty of the very thing that he accuses another of—is a bit of equitable common sense that practitioners ought not to forget. READ MORE