IP Litigation

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Garteiser Honea is a different kind of law firm.
We represent clients in high-value, high-risk intellectual property disputes. Because we represent both plaintiffs and defendants, we have insight into what motivates parties on different sides of the bar. We’re committed to never losing sight of what success means for our clients. Sometimes success requires stand-up trial lawyers taking the fight to the other side in a six-week trial. We can do that. It’s what we love. But sometimes achieving success for our client requires the skill, business judgment, and creativity to work out a solution that gets an even better result than what’s possible in the courtroom. At Garteiser Honea, you get a true team—from our support staff to our trial and appellate lawyers—committed to your success.

We invite you to review this sampling of cases handled by the firm:

  • Currently represent Blue Spike, Inc. as its patent infringement counsel to monetize over 60 patents related to digital watermarking technology, secure transactions over a network, monitoring, tracking digital purchases with a receipt, digital rights management, software protection via watermarking, or use of encryption, or key.
  • Currently represent defendant Aptus GRC, LLC adverse Fox Technologies, Inc. in a breach of contract dispute now pending in the Superior Court of California, County of San Francisco. See Fox Technologies, Inc. v. Aptus GRC, LLC, Inc., Case No. 111-cv-212703 (2011).
  • Currently represent third party defendant Blue Earth, Inc. adverse Genesis Fluid Solutions, Ltd, et al., in a breach of contact lawsuit now pending in the Northern District of California. See Press Rentals, Inc. v. Genesis Fluid Solutions, Ltd., et al., Case No. 5:11-cv-02579 (N.D. Cal. 2011).
  • Currently represent defendant iShopUSA Services, Inc. adverse DE Technologies in a patent infringement lawsuit now pending in the Western District of Virginia after a court in Eastern District of Texas granted our motion. See DE Technologies, Inc. v. iShopUSA Services, Inc. and International Checkout, Inc., Case No. 7:11-cv-00183-GEC (W.D. Va 2011).
  • Currently represent PanTerra Networks, Inc. as counsel in a breach of contract dispute adverse Dynamix Systems, Integration, Inc. in PanTerra Networks, Inc. v. Dynamix Systems Integration, Inc., Case No. 1-10-CV-177853, Superior Court of California, County of Santa Clara (2010).
  • Currently represent Martin Hellman in contract dispute involving patent rights with AOL involving network security authentication.
  • Represented Cornerstone Pharmaceutical adverse class action plaintiff to get defendant dropped from lawsuit prior to filing a response where Plaintiff was attempting to obtain venue, improperly, in San Francisco County. Mary Keene, et al. v. McKesson Corp., et al., Superior Court of California, County of San Francisco, Case No. CGC-11-516031 (2011).
  • Represented defendant Carl Raff, a software programmer adverse prior CEO in a case involving conversion of alleged trade secrets. Obtained successful result for our client by filing a demurrer that the court sustained without leave to amend in Marin County. Carson v. Raff, Superior Court of California, County of Marin, Case No. CIV-1106045 (Judge D’Opal) (2011).
  • Represented i4i, Inc. against Microsoft relating to their XML technology used in Microsoft Office, in which the Supreme Court recently affirmed a jury award of over $290 million, Microsoft Corp. v. i4i, Inc., 131 S.Ct. 2238 (2011).
  • Represented Roche Molecular Systems, Inc. defending against patent infringement claims from Stanford University relating to HIV research. Found the “smoking gun” agreement between a Stanford University professor and Roche Molecular System’s predecessor granting it rights to the patents-in-suit, and which eventually was upheld by the Supreme Court, Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc., 131 S.Ct. 2188 (2011).
  • Represented Wi-LAN, Inc. in the Eastern District of Texas as part of its lawsuits and licensing that has led to 230 companies, including Cisco, Nokia, Panasonic, Samsung, RIM, Sharp, Sony and Toshiba, licensing Wi-LAN technologies.
  • Represented Sony Electronics in defending patent infringement claims brought by Adams and Associates, Inc., in which Phillip M. Adams had taken millions from the floppy disk market, including Toshiba and Gateway. Sony Electronics was found not liable at trial, Adams and Associates, Inc. v. Sony Electronics, Inc., et al., District of Utah, Case No. 1:05-cv-00064 (filed May 12, 2005).
  • Represented Taiwanese based MediaTek, Inc. in defending patent infringement claims brought by Matsushita Electric Industrial Company, Ltd., in which MediaTek was able to acquire and assert its own patents that led to a favorable settlement, Matsushita Electric Industrial Company, Ltd. v. MediaTek, Inc., et al., Northern District of California, Case No. 3:05-cv-03148 (filed August 3, 2005).
  • Represented global discount airline easyJet and Bulletproof Technologies in defending copyright infringement and trade secret misappropriation claims relating to software used in easyJet’s booking system brought by Navatiare and which resulted in a favorable settlement, Bulletproof Technologies, Inc. v. Navitaire, Inc., District of Utah, Case No. 2:03-cv-00428 (filed May 6, 2003).
  • Wrote the Software and Information Industry Association’s amicus brief, which was cited by the U.S. Solicitor General, supporting Microsoft’s successful petition for certiorari in Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007).
  • Coauthored the prevailing appellants’ brief in In re Napster Copyright Litigation, 479 F.3d 1078 (9th Cir. 2007), which reversed a district court’s order to disclose privileged information.
  • Represented NexTag in defending trademark and copyright infringement claims brought by LowerMyBills, Inc. relating to online lending advertising which resulted in a quick and favorable settlement. Lowermybills, Inc. v. NexTag, Inc., Central District of California, Case No. 2:04-cv-09751 (filed December 1, 2004).
  • Represented Monsanto in a patent infringement lawsuit adverse The Regents of the University of California. This case notably resulted in a favorable settlement for our client.
  • Represented Intuit in a lawsuit alleged Intuit had improperly charged customers recurring monthly service charges. Obtained a favorable settlement for Intuit.
  • Represented IBM adverse a Patent Holding Company in a patent infringement lawsuit involving Business Process Monitoring software. Obtained a favorable settlement for IBM.
  • Represented MediaTek (an integrated circuit design company based in Taiwan) adverse Matsushita Electric Industrial (“MEI”) in a patent infringement lawsuit. Obtained a favorable settlement for MediaTek.
  • Represented Oberthur Card Systems against an alleged inventor in a patent infringement lawsuit. Obtained a favorable settlement for Oberthur.
  • Represented Sony Electronics, Sony Computer Entertainment America, and Sony BMG in a patent infringement lawsuit filed by a Patent Holding Company in the Eastern District of Texas involving downloading video and streaming video over the Internet. Successfully stayed the litigation pending reexamination.
  • Represented Actavis in Abbreviated New Drug Application (“ANDA”) litigation adverse King Pharmaceuticals concerning extended release morphine formulations. Drafted opening and responsive claim construction briefs that resulted in favorable construction of disputed claim terms for our client.
 

Local Counsel

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We act as counsel to corporations with Intellectual Property disputes in both the the United States District Court for the Eastern District of Texas and the Northern District of California. With offices both in the SF/Silicon Valley Bay Area and in Tyler, Texas, we are intimately familiar the Rules of those two courts. The Rules are among the most complex of any of the 94 District Courts in the United States.

Mr. Garteiser previously clerked for the current Chief Judge James Ware in 2003-2004. With significant experience both litigating and clerking under these Rules, we can add a real advantage to your side of the case.

If you are a plaintiff or a defendant with a patent infringement, trademark, copyright, unfair competition, trade secret theft, licensing, Bus. & Prof. Code 17200 or other Intellectual Property dispute in NDCAL or EDTX, and your in-house or outside General Counsel or Litigation Counsel needs Counsel expertise, please contact Garteiser Honea for a consultation to see how we can make your work easier and more effective here in our Courts.

 

 

 

Startups and Venture Capital

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Helping Your Business Accelerate Through Responsive Legal Representation.

Garteiser Honea is a different kind of law firm – one that caters to start-up companies that need high quality IP advice at reasonable and predictable prices. Engaging large law firms, which require quarter million dollar retainers, rarely fits into the budget of smaller companies. We recognize the financial realities facing smaller companies. Garteiser Honea aims to assist your company by serving as its outside general counsel and providing answers to the IP related issues that start-up technology businesses often face. In 2012, we have handled IP disputes for start-ups: Aptus, Blue Earth, and Extenda Communications. We aim to offer IP advise at a cost that provides the most value to your company.

Garteiser Honea attorneys are currently serving or have served as outside general counsel for the following companies:

Represent iShopUSA as outside general counsel. We are currently defending iShopUSA in a patent infringement lawsuit adverse DE Technologies. We also provide IP counsel on issues involving IP strategy, branding, trademark registration, domain name issues, and employee related IP issues.

Represent Event Productions as outside general counsel. We previously assisted Event Productions in handling a labor union issue.

Represent 80 West, Inc. as outside general counsel. We previously represented 80 West in a breach of contract dispute.

Represented Big Star media as outside general counsel. Assisted with financing issues impacted directly by IP valuations.

Represented Southwest Resources as outside general counsel. Assisted with financing issues impacted directly by IP valuations.

 

 

Employment Law (Technology Sector)

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Employment law is always an issue with any start-up or established technology company. When technology and, or alternatively, financing of a start-up are important issues to a company, employment issues must be handled by attorneys that understand the larger implications with respect to human resource decisions.

We have handled departures of executives at start-up companies and understand the delicate tack that must be taken. When the departure of an employee or executive involves the potential for a later claim of ownership or inventorship in a patent (or patent application), we recommend you utilize our experience in handling these employment matters confidentially.

With partner Chris Honea’s prior in-house start-up experience, we routinely handle employment agreements, non-compete agreements, and, or alternatively, nondisclosure agreements, in the technology sector.

“I was very pleased with not only the great result, but the level of professionalism that Mr. Garteiser showed me in handling my dispute with the County of Marin. — Mary Neel”

 

 

Real Estate Law

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Our attorneys frequently represent clients in the following areas of real-estate law.

Eminent Domain.

Eminent domain is the power of the state or federal government, and private companies acting under government authority, to condemn and force the sale of private property for public purposes. As California’s population continues to grow, its need for basic infrastructure—highways, roads, rail lines, electric-transmission lines, gas pipelines, water pipelines, and other public projects—will continue to rise. While updates to existing infrastructure will accommodate some of this growth, there will still be a need for new projects.

The United States and California Constitutions guarantee just compensation when a condemning authority takes private property. Yet the true value of the property to be taken is often a matter of intense debate. Given this fact and the complexity of the legal process in this area of the law, landowners and condemning authorities alike can benefit from hiring legal counsel with the skill and experience to seek a favorable outcome.

Our lawyers have successfully represented both landowners and condemning authorities in condemnation proceedings. On the landowner side, our attorneys have helped achieve multimillion-dollar judgments and settlements. Our attorneys have used the same trial skills and understanding of property valuation to help some of the country’s larger condemning authorities.

Commercial Disputes Involving Real Estate.

Our attorneys have handled a broad range of commercial and complex litigation related to real estate, including disputes about real-estate-development contracts, land sales, real-estate partnerships, inheritance, and commercial leases. Our attorneys have helped clients achieve success in both federal and state courts and in both trials and appeals. Equally important, our clients often seek our advice before their disputes develop into actual litigation, helping them to avoid litigation altogether or to strengthen their position in advance of the filing of a suit.

Appointment of Receivers for Distressed Real Estate.

If required, we will appear ex parte to appoint a receiver and obtain a temporary restraining order to obtain rents, issues and profits. We can assist with the entire court process until resolution is obtained on the distressed property.

Real-Estate Related Loan Workouts.
We have experience representing borrowers and lenders in loan workouts, including litigation prompted by recent California legislation affecting second-home mortgages.

Commercial Leases.
As former in-house counsel at Evolution Fuels and Evolution Resources, named partner Chris Honea understands how to protect clients from the pitfalls of commercial leases. Changed circumstances and disagreements about lease language often arise, prompting one side to push for lease termination or to argue that there has been a breach of the lease. We have real world experience protecting lessors and lessees to help avoid litigation. But when litigation is required, we have the experience and skill to achieve solid results for our clients.

 

 

White-Collar Defense

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Without realizing it, individuals and corporations may run afoul of the law or government regulations. Grand jury subpoenas may be directed at innocent targets and present logistical record-gathering challenges for legitimate businesses. Clients who find themselves accused of fraud, Medicare/Medicaid fraud and abuse, environmental crimes, criminal misconduct, criminal tax fraud, fraud in government procurement, criminal antitrust and RICO violations, and a variety of business-related offenses, require experienced counsel who understand the legal and professional ramifications of such acquisitions and procedures. Even ordinary commercial disputes can give rise to allegations of fraud and abuse.

Our criminal defense lawyers are able to represent both individuals and corporations facing state and/or federal allegations of criminal and professional misconduct. We will work closely with financial institutions, corporate entities and their corresponding regulatory agencies to manage these challenges, whether they be suspension or disbarment, individual tax controversies or criminal prosecution to ensure you get the best result possible. We understand the special circumstances of media exposure.

Jeff Atterbury, former Deputy District Attorney in Santa Clara County, heads the firms white-collar criminal defense group. He has resolved over a 1000 criminal cases and tried over 50 to verdict.

We handle cases in the Bay area, including the following California Superior Court counties: San Francisco, Alameda, Oakland, Napa Valley, San Mateo, Santa Clara, Sonoma, and Marin; and in United States District Court for the Northern District of California, including Oakland, San Jose and San Francisco Divisions.