Anthony Tartaglio

Managing Associate

Silicon Valley


Read full biography at www.orrick.com

Anthony Tartaglio, a managing associate in Orrick's Silicon Valley office, is a member of the Intellectual Property Group. Tony defends corporations in patent litigation matters and prosecutes applications before the U.S. Patent Office.  He has also helped clients protect their trade secrets by securing injunctions in trade secret actions in both California state and federal court.

Array

Tony's Representative Matters include the following.

  • Rosenblum v. Oracle America, Inc.  Tony representing Oracle in litigation concerning the development and rollout of Oregon's state healthcare exchange website and IT backend. 
  • In re Certain Formatted Magnetic Data Storage Tapes and Cartridges Containing Same. Tony represented Oracle in an International Trade Commission Investigation concerning Oracle's enterprise magnetic tape cartridges.
  • Mentor Graphics Inc. v. Synopsys Inc. Tony represented Synopsys in a patent litigation concerning the ZeBu hardware emulator.
  • Oasis Research LLC v. EMC Corp. Tony was a member of a team representing EMC Corporation in a patent infringement action brought by Oasis Research, LLC.
  • Graphics Properties Holdings, Inc., v. Panasonic Corp.  Tony represented Panasonic Corporation in litigation concerning patents on LCD display screens and graphics rendering. There were two concurrent litigations in the District of Delaware and the International Trade Commission.
  • Apple Inc. v. Motorola Mobility. Tony assisted in Apple's appeal before the Federal Circuit on a complex, multi-patent case.
  • Fujitsu Limited v. Tellabs, Inc. Tony represented Fujitsu in the telecommunications patent litigation in the Northern District of Illinois.

Posts by: Anthony Tartaglio

Christmas Comes Early for “Useful Article” Copyright Holder

 

Order Denying Motion and Cross-Motion for Summary Judgment, Jetmax Ltd. v. Big Lots, Inc. et al., 15-cv-9597 (S.D.N.Y. Aug. 28, 2017) (Judge Katherine Forrest)

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

Federal Circuit Clarifies On-Sale Bar in Pharmaceutical Cases

Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., et al.Federal Circuit (May 1, 2017)

The “on-sale bar,” codified at 35 U.S.C. § 102, may invalidate a patent where the patentee sold “the invention” more than one year before filing an application to patent that invention. The on-sale bar applies where the invention is “ready for patenting,” a standard that had caused confusion in heavily regulated industries—such as the pharmaceutical industry—where government approval is needed to sell the invention to consumers. In its recent opinion in Helsinn Healthcare v. Teva Pharmaceuticals, the Federal Circuit analyzed the interplay between the on-sale bar and the FDA’s pharmaceutical evaluation and approval processes. The decision provides a cautionary tale for patentees in the pharmaceutical industry.

It was clear in Helsinn that there was a contract to sell the “invention” more than a year before the relevant patent application was filed. But the sales contract at issue was contingent upon the FDA’s approval of the drug to be sold. Helsinn argued that because regulatory approval was uncertain at the critical time period, the sales contract should not trigger the on-sale bar. The Federal Circuit disagreed, noting that under the Uniform Commercial Code, a “purported present sale of future goods . . . operates as a contract to sell.” Furthermore, “a contract for sale that includes a condition precedent is a valid and enforceable contract.” Thus, the regulatory approval condition precedent did not affect whether the “invention” was on sale. READ MORE

Step Aside! Trade Secret Preemption of Other Claims

Order Granting in Part and Denying in Part Motion to Dismiss, Henry Schein, Inc. v. Cook, et al., 16-cv-03166-JST (Judge Jon Tigar)

One purpose of the California Uniform Trade Secrets Act (“CUTSA”) is to preempt and displace many common law causes of action that could arguably apply in a trade secrets case, such as conversion. Nevertheless, it is still common for plaintiffs in trade secrets cases to plead a great variety of causes of action. A recent decision from Judge Tigar helps clarify when such causes of action are preempted and when they can coexist with a cause of action for trade secret misappropriation. READ MORE

“Use in Commerce”: Look Before You Leap

Order Granting Motion to Dismiss, With Leave to Amend, Stag’s Leap Wine Cellars, LLC, et al. v. Treasury Wine Estates Americas Co., 16-cv-04922-RS (Judge Richard Seeborg)

Plaintiffs in trademark cases may be tempted to file suit as early as possible to head off any potential consumer confusion. But as a recent order explains, plaintiffs need to keep in mind that the Lanham Act requires a “use in commerce” to maintain a complaint. Plaintiffs who fail to plead an adequate “use in commerce” could find themselves fighting (and losing) a motion to dismiss. READ MORE

Daubert Exclusion for Double Counting

Order Granting in Part Daubert Motion, Finjan, Inc. v. Sophos, Inc., Case No. 14-cv-1197 (Judge William Orrick)

Yogi Berra once said that “baseball is 90% mental; the other half is physical.” The humor in this statement, of course, is that Yogi’s percentages add up to more than 100%, which is impossible. The same idea applies to patent damages—a patent expert cannot double-count the value of patented features, especially when doing so might lead to damages greater than 100% of a product’s overall value. It sounds easy enough, but applying this rule can be difficult in multi-patent cases. A recent opinion from Judge Orrick sheds light on how to value patented features where multiple patents purport to cover similar features. READ MORE

Defendants in Default: Motions for Default Judgment Must Demonstrate Infringement

Order Staying Case In Part And Denying Motion For Default Judgement Without Prejudice. e. Digital Corp. v. Ivideon LLC, et al. Case No. 15-cv-00691-JST (Judge Jon S. Tigar)

In a recent opinion, Judge Jon Tigar sua sponte stayed the vast majority of a patent infringement case pending the outcome of inter partes review proceedings, and also denied a motion for default judgment that was predicated upon the Defendants’ alleged infringement of two claims not subject to the ongoing proceedings before the Patent Trial and Appeal Board (“PTAB”). The opinion underscores that plaintiffs do not get a “free pass” in proving infringement, but rather must fully establish the predicate bases of a patent claim, even where a defendant has failed to make an appearance. READ MORE

Judge Koh Nominated for Ninth Circuit

We here at the blog would like to congratulate Judge Lucy Koh for being nominated by President Obama to sit on the Ninth Circuit Court of Appeals. A press release from the White House stated that “Judge Lucy Haeran Koh has distinguished herself as a first-rate jurist with unflagging integrity and evenhandedness. [President Obama] is grateful for her service to the state of California and looks forward to adding her considerable wisdom and experience to the Ninth Circuit Court.” READ MORE

A Purr-fect Opinion on Copyright Registrations

Order Granting Defendants’ Motion to Dismiss, Epikhin et al. v. Game Insight N.A., et al., 5:14-cv-4383 (Judge Lucy Koh)

Cat videos are one of the most popular types of user-uploaded Internet videos. It is unsurprising, then, that there is now cutting-edge copyright case law about a cat-themed video game. In a case about who owns the copyright to the game “Cat Story,” Judge Koh recently issued an order dismissing the case because the plaintiff failed to deposit copies of the game at issue itself with the Copyright Office. As her opinion shows, this is something that plaintiffs need to get right. READ MORE

Fruitful Harvest of Attorneys’ Fees and Sanctions for Farmville Creator Zynga

Order Granting Motion for Attorneys’ Fees: Granting Motion in Part for Sanctions, Segan LLC v. Zynga Inc., Case No. 14-cv-01315-VC (Judge Vince Chhabria)

We previously reported on the Segan v. Zynga case when Judge Chhabria granted Zynga’s motion for summary judgement of non-infringement. Zynga, perhaps emboldened by the Supreme Court’s decision last year in Octane Fitness LLC v. Icon Health & Fitness Inc., 134 S. Ct. 1749 (2014), then moved to recover its attorneys’ fees, arguing that this was an “exceptional case” under 35 U.S.C. § 285. Judge Chhabria agreed. Zynga concurrently moved for sanctions against Segan’s law firm. Judge Chhabria granted that motion as well, but only in part. He levied a sanction of $100,000 against Segan’s law firm. In doing so, he sent a strong message to patentees that Rule 11 requirements are no mere game. READ MORE

Ninth Circuit Requires Fair Use Evaluation Before Issuing DMCA Take-Down Notices

DMCA Take Down Notices and Fair Use Evaluations, Lenz v. Universal Music Corp., et al., 13-16106 (9th Cir)

In a highly anticipated opinion in the so-called “Dancing Babies” case, the 9th Circuit clarified this week the steps under the Digital Millennium Copyright Act (“DMCA”) that copyright holders must take before issuing a “takedown” notice to content platforms such as YouTube. In a case of first impression, the Court of Appeals held that a copyright holder must analyze whether the allegedly infringing work is a “fair use” before sending the takedown notice. READ MORE