Scott Lonardo

Of Counsel

Silicon Valley

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Scott combines intellectual property litigation and counseling skills to provide pragmatic, real world solutions that align with his client’s specific business objectives. Scott’s experience ranges from complex litigation in multi-patent cases to trademark litigation to counseling brand owners on prosecution and enforcement strategies. 
In all facets of his work, Scott seeks an efficient and cost-effective way to achieve results for his clients. When a more aggressive approach is necessary, Scott uses his creativity and expert writing skills to successfully settle or win at trial. He has been a member of several litigation teams, including two recent trials. 

Before joining Orrick, Scott served as a law clerk to the Honorable Kathleen M. O'Malley both at the United States Court of Appeals for the Federal Circuit and at the United States District Court for the Northern District of Ohio.
  • Reddit. Portfolio management and brand enforcement strategy.
  • C5 Medical Werks, LLC v. CeramTec GmbH (D. Colo.) (trademark) We represented C5 Medical Werks in a multi-national dispute which sought to preserve the client's right to use color as a functional feature for its orthopedic joint replacement products. We won judgment in favor of C5 Medical Werks following a two-week bench trial. 
  • Del Monte International GmbH v. Del Monte Foods, Inc. (C.D. Cal.) (9th Cir.) (trademark/domain name) We represented Del Monte Foods, Inc., the primary global owner of the DEL MONTE brand. We successfully opposed an application by its licensee to register <.delmonte> as a top-level domain in a proceeding before the World Intellectual Property Organization (WIPO), then successfully moved to dismiss its licensee's lawsuit in U.S. District Court to overturn WIPO's decision. 
  • Bayer HealthCare LLC v. High Tech Health Ltd. (TTAB) (trademark) We represented Bayer HealthCare LLC in an opposition to an application to register ULTRALIEVE for portable ultrasound devices, based on Bayer’s famous ALEVE trademark. Following a successful motion to compel and motion for sanctions, the Trademark Trial and Appeal Board sustained the opposition and refused registration.
  • Tekmira Pharmaceuticals Corp. and Protiva Biotherapeutics, Inc. v. Alnylam Pharmaceuticals, Inc. and Alcana Technologies, Inc. (Mass. state court) (trade secret misappropriation) We represented Tekmira in this trade secret misappropriation case against Tekmira’s former collaborator Alnylam in the Business Litigation Section of Massachusetts state court. Tekmira alleged that Alnylam had taken advantage of the collaboration to misappropriate Tekmira’s secret RNAi delivery and manufacturing technology, including by applying for patents on technology developed by Tekmira and by passing off Tekmira's technology as its own. The case settled one week before trial in a settlement the San Francisco Daily Journal described as a "huge win" for Tekmira.
  • World Wide Sales, Inc. v. Church & Dwight Co., Inc. (N.D. Ill.) (trademark) We obtained summary judgment in favor of Church & Dwight Co., Inc., owner of the ARM & HAMMER brand, on the plaintiff’s claims that Church & Dwight’s use of the mark FRIDGE FRESH for a refrigerator air filter infringed the trademark “Forever Fresh For The Fridge” for a refrigerator deodorizer.
  • Scat Enterprises v. FCA US LLC (C.D. Cal.) (trademark) We represent Scat Enterprises in a trademark dispute over its house mark, SCAT. 
  • Mentor Graphics Corp. v. Synopsys, Inc. et al. (D. Or.) (Fed. Cir.) (patent infringement) We represent Synopsys, Inc., EVE-USA, Inc., and Synopsys Emulation and Verification S.A. in a patent dispute in the hardware emulation segment of the Electronic Design Automation industry. Scott wrote a motion for summary judgment on cutting-edge legal issues, damages and procedural law. To date, we have knocked out four of five patents. We continue to litigate this matter. 

Posts by: Scott Lonardo

Sneaker Wars: Adidas Defeats Summary-Judgment Motion That Claimed Stan Smith Shoe Design Lacks Distinctiveness

Order Granting in Part and Denying in Part Motion for Summary Judgment,  Adidas America Inc. et al. v. Skechers USA Inc., D. Or. (August 3, 2017) (Judge Marco Hernández)

The ever-increasing popularity (and collectability) of athletic shoes seems to have brought along with it an increase in the amount of litigation involving trade dress protection for the look of some of the more popular shoe designs. Last year, the International Trade Commission found that Converse’s trademark rights in the design of the Chuck Taylor sneaker were invalid due to widespread use of similar designs by competitors.  That decision is now the subject of a closely watched appeal at the Federal Circuit.  More recently, in a dispute between adidas and Skechers, a court found that factual issues prevented entry of summary judgment regarding whether the look of adidas’ Stan Smith shoe design is generic and whether it has acquired secondary meaning. READ MORE