Experience

Litigation

• Representation of outdoor products company in patent enforcement matters, including securing a favorable settlement royalty after a year of federal court litigation.
• On behalf of automotive lidar company, obtained stay of discovery in arbitration until plaintiff identified its asserted trade secrets with particularity, leading to resolution of dispute.
• Representation of defendant in patent venue challenge in Western District of Texas, obtaining one of the first TC Heartland transfer orders from Judge Albright.
• Representation of patent owner SnapRays LLC d/b/a SnapPower in trial before International Trade Commission, winning determinations of patent infringement and validity and a general exclusion order.
• Representation of patent owner clothing company in 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.
• Representation of 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.
• Defended flooring systems company from patent infringement claims. Successfully petitioned to stay litigation while asserted patents were reexamined by the U.S. Patent Office.
• Representation of copyright content developer in federal court against former reseller’s fraudulent royalty reporting and unauthorized use of training course content 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.
• Defended publishing company from false accusations of trademark infringement by suing accusers in federal court. Resulted in a release of all claims and payment of compensation to our client.
• Stopped imports of knockoff products by U.S. customer in federal court. Infringement claims based on registered trade dress resulted in an advantageous settlement for the client.
• Recovered attorneys’ fees in trademark litigation on behalf of successful defendant.
• Representation of electronics company in supply dispute with a primary customer and shareholder resulting in an advantageous settlement and re-purchase of shares.
• Filed declaratory judgment lawsuit against independent sales agency to resolve breach of contract allegations by the sales agency against our client.

Non-Litigation Enforcement

• Domain name (UDRP) enforcement for education services company.
• Brand enforcement examples: wine labels, restaurants, game controller, classroom furniture, dental products, LCD displays, prefab buildings, coffee makers, clothing, food decorating products.
• Patent enforcement and licensing program examples: sport optics, outdoor products, clothing.
• Draft cease and desist letters addressing patent, trademark, and copyright infringement.
• Draft and advise strategy on copyright termination notices.

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

• 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.
• Prepare and prosecute utility patent and design patent applications.
• Ex Parte appeals of patent applications before the Patent Trial and Appeal Board.
• Ex Parte reexamination of patents before the Central Reexamination Unit of the USPTO.
• Opposition and cancellation proceedings in the Trademark Trial and Appeal Board for goods and services including distilled spirits, beer, wine, packaging services, laboratory research, carrying bags, financial services, health care services.
• Advise clients regarding application strategy for patent, trademark, and copyright registration.

Other

• Advises clients regarding trade and import rules, including classification of goods and legal challenges to tariffs.
• Monitors current and forthcoming tariffs, anti-dumping duties, and countervailing duties.
• Develops credit card acceptance strategy for compliance with applicable state, federal, and credit card issuer rules.
• Non-disclosure agreements.

Honors & Activities

Professional Honors and Activities

• Included in Best Lawyers^®: Ones to Watch in America (Intellectual Property Law), 2021–2023
• Oregon Entrepreneurs Network
• Federal Circuit Bar Association
• Intellectual Property Section, Oregon State Bar

Civic Activities

• Volunteer Coach, Westside Soccer Club
• Volunteer Attorney, Legal Aid Society of Oregon
• Volunteer Attorney, Oregon Volunteer Lawyers for the Arts

Insights & Presentations

• 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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