Elliott Williams

Elliott Williams helps businesses make creativity profitable. As an intellectual property attorney, he helps companies protect market share for innovative products and services. For startup companies this is often the crown jewels of the company. Elliott handles enforcement and defense litigation relating to inventions, brands, trade secrets, product designs, software, and other forms of creative work product. This often happens in federal court; before federal agencies, e.g., the U.S. Patent and Trademark Office, International Trade Commission, Customs and Border Protection; and through online enforcement channels. Many of Elliott’s cases begin and end with a friendly letter. He enjoys discovering creative ways to use IP to enhance revenue by limiting unfair competition.

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Education

Harvard Law School, J.D.

University of St. Andrews, M. Litt., Modern History

Hillsdale College, B.S., Physics

Admissions

Oregon

United States District Court for the District of Oregon

United States District Courts for the Eastern and Western Districts of Texas

United States District Court for the Eastern District of Wisconsin

U.S. Patent and Trademark Office

United States Court of Appeals for the Federal Circuit

Litigation

• Represented multiple clients in connection with enforcement and defense of patents, trademark, and copyrights in e-commerce environment.
• Represented multiple clients in connections with software contract disputes.
• Represented multiple clients in responding to copyright infringement notices.
• Represented building materials company in trademark enforcement litigation, securing a favorable settlement during discovery.
• Represented consumer products company in trademark enforcement litigation.
• Represented visual arts artist in litigation against anonymous online sellers of infringing works.
• Represented outdoor products company in patent enforcement matters, including securing a favorable royalty after a year of federal court litigation.
• Represented patent owner SnapRays LLC d/b/a SnapPower in patent enforcement including before the U.S. International Trade Commission, winning determinations of patent infringement and validity and a general exclusion order; before U.S. Customs and Border Protection, winning determination that competitor products were infringing and excluded by application of general exclusion order.
• Represented clothing company in patent enforcement litigation, obtaining dismissal of defendant’s invalidity contentions under local patent rules resulting in favorable settlement.
• Defended grocery chain against copyright lawsuit and negotiated successful settlement.
• Defended international consumer products company against patent infringement complaint resulting in manufacturer indemnity and dismissal of claims.
• Defended online mapping service against copyright lawsuit resulting in voluntary dismissal of claims.
• Represented patent owner for a medical training device in successful appeal of claim construction to Federal Circuit and subsequent summary judgment of infringement, resulting in favorable settlement.
• Defended SOFA Entertainment, owner of the rights to the Ed Sullivan Show, from copyright infringement claims in federal court in Oregon. We won summary judgment against the plaintiff’s claim for statutory damages under the copyright act, and the plaintiff dismissed the suit shortly thereafter.
• Represented online training services company in federal court against former reseller to recover unpaid royalties and unauthorized use of training modules, resulting in recovery of content and monetary settlement.
• Defended heavy equipment manufacturer from patent infringement claims through discovery and summary judgment hearing. Plaintiff settled for small fraction of original demand.
• Filed lawsuit to challenge false allegations of trademark infringement online, resulting in a release of all claims and payment of compensation to our client.
• Recovered attorneys’ fees in trademark litigation on behalf of successful defendant.

IP Arbitration, Advice, and Attorney Letters

• Represented multiple clients in domain name arbitrations (UDRP) before the Arbitration Center of the World Intellectual Property Organization in Geneva, Switzerland.
• Represented multiple clients in brand enforcement for wine labels, restaurants, sporting goods, consumer products, education and information services, payment services, among others.
• Represented multiple clients in patent licensing programs.
• Draft cease and desist letters addressing patent, trademark, and copyright infringement.
• Advise clients regarding bequests of copyright interests and termination rights.

U. S. Patent and Trademark Office and U.S. Copyright Office

• Represented multiple clients in opposition and cancellation proceedings in the Trademark Trial and Appeal Board (TTAB), for goods and services including distilled spirits, beer, wine, packaging services, laboratory research, carrying bags, financial services, health care services.
• Secured favorable written TTAB decision on behalf of winery, barring registration of conflict trademark.
• Applications for trademark registration for client goods and services including restaurants, waterproofing and decorative coatings, clothing, education services, marketing, fundraising, coffee makers, fresh vegetables, beer.
• Applications for copyright registration for works including software, user manuals, photographs, and logos.
• Ex Parte and Inter Partes proceedings before the Patent Trial and Appeal Board and before the Central Reexamination Unit of the USPTO.
• Advise clients regarding application strategy for patent, trademark, and copyright registration.

Customs and Trade

• Advise clients regarding trade and import rules, including classification of goods, country of origin, and application of trade remedies.
• Advise clients regarding trade remedy proceedings in the U.S. Department of Commerce, legal challenges to trade remedies, and impact of trade remedies on commercial activities.
• Assist clients to prepare submissions to trade agencies, including Customs ruling letter requests under 19 CFR Part 177.
• Advise client regarding U.S. import laws.

Other

• Develop credit card acceptance strategy for compliance with applicable state, federal, and credit card issuer rules.
• Non-disclosure agreements.

Insights & Presentations

• Presenter, “Spotting International Trade Issues in Corporate Transactions,” Stoel Rives Technology and Intellectual Property Group, January 2024.
• Presenter, “New IP Administrative Proceedings: Copyright Claims Board and Trademark Expungements,” Stoel Rives Technology and Intellectual Property Group, December 2023.
• Presenter, “Patent Infringement Letters,” Strafford Webinars, October 3, 2023.
• Presenter, “U.S. Patents,” Invent Oregon, May 5, 2023.
• Presenter, “IP Enforcement and E-commerce,” Stoel Rives Technology and Intellectual Property Group, February 2023.
• Co-author, “Litigation,” Chapter 10, The Law of Solar: A Guide to Business and Legal Issues, Stoel Rives LLP, Sixth Edition, 2022
• Presenter, “Intellectual Property Protection for Architectural Works & Drawings: Considering the Line between Inspiration and Copying,” American Institute of Architects CLE, April 8, 2021
• Co-author, “The status of solar and wind tax credits and tariffs as we enter 2021,” Solar Power World, December 7, 2020
• Presenter, “New Enforcement Tool for E-commerce,” Utah State Bar IP Section, January 23, 2020
• Presenter, “Validity Issues,” Stoel Rives Patent Law Group, November 2019
• Presenter, “Spotting IP Issues—For Real Estate Attorneys,” Stoel Rives Real Estate and Construction Group, September 2019
• Presenter, “Litigating Patents,” Stoel Rives Patent Law Group, April 2019
• Presenter, “Automated Data Processing,” Stoel Rives Business Law Group, March 2019
• “Blockchain + Renewables = Red Tape?,” Renewable Energy World, March/April 2018
• Presenter, “Crypto-currencies and the Law,” co-hosted by Stoel Rives, February 2018
• “ITC Prepares to Vote on the Suniva/SolarWorld proceeding re Crystalline Silicon Photovoltaic Cells,” Stoel Rives Renewable + Law^® blog, September 13, 2017
• “Blockchain 101,” Presentations to Corporate Section of Alaska State Bar; Stoel Rives Energy Initiative, Corporate Group, Technology Group, 2017
• Co-author, “At the Halfway Point: The Effect of California’s Energy Storage Mandate,” Renewable Energy World, November 22, 2016
• “Trade Secrets Challenges for Patent Prosecutors and Litigators,” Randolph C. Foster and Elliott J. Williams, 2016 Electronic and Computer Law Summit, Electronic and Computer Patent Law Committee of the American Intellectual Property Association (paper presented and published June 14, 2016)
• Presenter, “Construing ‘Consisting Essentially Of’,” Stoel Rives Patent Law Group, April 2016
• Contributor, “Chapter 17: Employee Mobility, Restrictive Covenants, and Trade Secrets,” Recent Developments in Business and Corporate Litigation, American Bar Association, 2016 edition
• Presenter, “Trade Secrets, Noncompetes, and Preventing Employee Data Theft,” Stoel Rives Breakfast Briefing, September 2015
• Presenter, “Teva v. Sandoz,” Stoel Rives Patent Law Group, February 2015
• Contributor, “Chapter 17: Employee Mobility, Restrictive Covenants, and Trade Secrets,” Recent Developments in Business and Corporate Litigation, American Bar Association, 2015 edition
• Contributor, “Intellectual Property Considerations,” Washington Lawyers’ Practice Manual, Business Law Chapter, 2015
• “Equitable Discretion and the Patent Owner’s Delay,” Boston Patent Lawyers Association Newsletter, 2014

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• Included in Best Lawyers^®: Ones to Watch in America (Intellectual Property Law), 2021–present

Professional

• Oregon Entrepreneurs Network, Member
• Federal Circuit Bar Association, Member
• Oregon State Bar, Intellectual Property Section, Member of Executive Committee

Civic

• Legal Aid Society of Oregon, Volunteer Attorney
• Oregon Volunteer Lawyers for the Arts, Volunteer Attorney