Experience

Patent Infringement

• Representation of Skedco, Inc., an Oregon-based manufacturer of rescue gear and medical training equipment, in patent litigation brought in federal district court in Portland against Strategic Operations, Inc., a San Diego-based company. The patented technology was a simulated bleeding system for use in training first responders. Ultimately, Skedco prevailed on summary judgment as to infringement, and the case settled a few weeks before trial on damages and certain remaining defenses.
• Representation of BN3TH, a British Columbia-based designer and wholesaler of men’s apparel, in litigation brought in the Western District of Washington against Rampion, another B.C.-based apparel company. Following a claim construction ruling favorable to our client, the parties settled the litigation and Rampion took a license in BN3TH’s patents.
• Representation of Emerging Acquisitions, Inc. (dba Bulk Handling Systems), a designer and manufacturer of recycling handling systems sold worldwide, as lead counsel in a series of three patent infringement cases. After its patent counsel sent a cease and desist letter to a UK manufacturer, the target and related companies brought a declaratory judgment action in the Middle District of Tennessee against our client. We moved to dismiss for lack of personal jurisdiction, which was ultimately granted. The day the Tennessee case was dismissed, we filed a patent infringement action against the same parties in the Western District of Washington to enforce the patents attacked in the Tennessee litigation. Some of those entities and others then brought a second case in Tennessee alleging patent infringement against Emerging Acquisitions, a joint venture in which it was involved, and another company based on unrelated patents. Our motion to dismiss the first Tennessee case for lack of personal jurisdiction was granted, as was our motion for costs. The Washington case and our motion to dismiss the second Tennessee case were pending when the parties settled their disputes.
• Representation of Leupold & Stevens in related actions against Bushnell, Inc. Leupold sued Bushnell in the District of Oregon on a just-released patent covering ballistic ranging methods and systems for inclined shooting. Within a week, Bushnell sued Leupold in the District of Kansas on a just-released patent of its own relating to a handheld rangefinder operable to determine hold over ballistic information and other patents. Result: The parties ultimately resolved their disputes.
• Representation of a manufacturer of systems designed to prevent debris from entering open storm drains. Following the Markman hearing, we stayed the litigation and sought reexamination of plaintiff’s patent. The Patent Office ruled that the claims-in-suit were unpatentable. As a result of Plaintiff’s claim amendment, the PTO issued a re-examination certificate on the narrowed patent. On summary judgment the court held that our client did not engage in infringing activity pre-certification and had full intervening rights. The case settled, and the patent holder’s claims were dismissed with prejudice.
• Representation of Strands, Inc., an Internet-based business, in a patent infringement case pending in the Southern District of Florida. Strands was dismissed from the case shortly after we filed for summary judgment.

Trademark Infringement

• Representation of U.S. Cellular Corporation in a trademark infringement case brought by the owner of the federally registered mark “Edge Wireless” and several related common law marks that included “edge” (e.g., AccessEdge, LocalEdge, WesternEdge). Result: U.S. Cellular prevailed at trial, and the case was dismissed. U.S. Cellular subsequently launched a new suite of wireless data services under the “easyedge” brand name.
• Representation of Troy Healthcare LLC in a trademark and trade dress infringement case brought against Troy’s former distributor, Nutraceutical Corporation, in the Western District of Washington. Troy sought to enjoin defendants’ use of the mark DROPAIN and trade dress confusingly similar to that used with Troy’s STOPAIN® topical analgesic products. Result: The Court entered a preliminary injunction requiring Nutraceutical to stop using the DROPAIN name and trade dress and recall product from resellers nationwide. The case ultimately settled.
• Representation of The Learning Internet dba Learning.com in a declaratory judgment action brought in response to a demand by Florida-based Learn.com that our client cease and desist using the mark LEARNING.COM.Summary judgment of non-infringement was granted in Learning.com’s favor.
• Representation of Michaels of Oregon in trademark infringement litigation brought in the Eastern District of Virginia by Blackhawk Industries (BHI), the owner of the mark BLACKHAWK. Michaels and BHI both manufacture and sell gear for military and law enforcement use. BHI argued that Michaels’ use of the mark BLACKWATER on gear similar to that BHI marketed under the BLACKHAWK mark caused actual confusion in the marketplace. The case settled, and Michaels continues to use The BLACKWATER mark.

Copyright Infringement

• Representation of Radisys Corporation, a software company, in a copyright infringement case brought by Actian Corporation in the Northern District of California. Actian alleged that by selling Radisys’s Trillium+ software platform with Actian’s Versant Object Database embedded in it to Radisys customers, Radisys exceeded the scope of a license agreement between the parties. Specifically, Actian claimed the license was limited to sales to end users, and that Radisys’s sales to its customers, which included telecom equipment manufacturers, exceeded the scope of the license and thereby infringed Actian’s copyright covering the software. Result: After extensive discovery and motions practice, the case settled.

Trade Secrets

• Representation of Bob Evans Farms, Inc. and BEF Foods, Inc. in a trade secrets case in which a supplier and competitor of our clients sought a preliminary and permanent injunction against the manufacture and sale of a particular product line. After the court denied the preliminary injunction motion, the supplier/competitor terminated all supply to our clients essentially without notice. We counterclaimed for intentional interference with business relations, breach of contract, promissory estoppel, and fraud. Under pressure to produce support for its trade secrets claim, the supplier/competitor dismissed all its original claims. The court granted our motion for attorney fees and costs incurred in fighting the dismissed claims. After four of our clients’ claims survived motions for summary judgment, the parties settled through mediation.
• Representation of Columbia Industries, Inc. in a suit for misappropriation of trade secrets in federal district court in Oregon. Columbia discovered that a recently departed employee had taken highly confidential materials and information relating to the design of Columbia landfill tippers. We investigated, brought suit, and moved for a preliminary injunction against the former employee and individuals and companies with which he did business with upon leaving Columbia. As part of a settlement reached by the parties, a final judgment of permanent injunction was entered in the case.
• Representation of Extended Systems, Inc. in a trade secret suit against three of its former salesmen and a competitor in Idaho state court. The suit alleged misappropriation of confidential customer information and sales leads that the former salesmen took before departing to join the competitor. The court granted our preliminary injunction motion and enjoined the individual defendants from contacting directly or indirectly ESI’s customers, prospects, and partners for 120 days and ordered the defendants to make available immediately for discovery their computers and other devices containing electronically stored information. The case subsequently settled.
• Representation of Welch Allyn against a software design engineer and former employee who took copies of source code and hacked into Welch Allyn’s intranet to download information. Our motions for a temporary restraining order and a seizure order were granted. Welch Allyn recovered all the misappropriated information, and the defendant stipulated to entry of judgment.
• Prosecuted an inevitable disclosure of trade secrets action against a competitor and an engineer specializing in the design of integrated circuits who resigned to join a direct competitor. Result: The case settled after a preliminary injunction was entered in our client’s favor.

False Advertising

• Representation of Vacasa LLC in a false advertising case brought by a competing short term vacation rental business. We moved to dismiss based on failure to state a claim because the plaintiff did not allege a market with the specificity required to allow the Court to decide whether the allegedly false and misleading statements were sufficient to constitute false advertising. The Court granted our motion to dismiss with leave to amend. In its Amended Complaint, the plaintiff alleged a specific market, but we again moved to dismiss because the market as alleged was too big to permit a few allegedly false or misleading statements constitute actionable advertising under the Lanham Act. The Court granted our second motion and dismissed with prejudice.

Covenants Not to Compete/Non-solicitation

• Enforced a non-solicitation agreement against an investment advisor who left our client, a wealth management company, and began calling on our client’s accounts. We defeated a defense based on an unlawful limitation on trade and our client was awarded liquidated damages based on the value of the pirated accounts.
• Enforced a covenant not to compete on behalf of Bunzl Distributing. Preliminary injunction was entered enjoining defendant, Bunzl’s former Portland area sales manager, from joining a competitor in the same capacity.

Patent Licensing

• Obtained summary judgment for U.S. Natural Resources, a manufacturer of lumber processing equipment, against the plaintiff/inventor’s claim to enforce a patent licensing agreement.

Honors & Activities

Professional Honors & Activities

• Named by Best Lawyers^® as Litigation—Intellectual Property “Lawyer of the Year,” Portland, 2022
• Included in The Best Lawyers in America^® (currently: Commercial Litigation, Litigation—Intellectual Property, Litigation—Patent), 2009–2023
• Listed in Oregon Super Lawyers^® (Intellectual Property, Antitrust Litigation), 2014–2018
• Selected as one of “America’s Leading Lawyers for Business” (Oregon) by Chambers USA (currently: Intellectual Property), 2014–2022
• Listed in Intellectual Asset Management’s IAM Patent 1000—The World’s Leading Patent Practitioners, 2013–2022
• Member, Executive Committee of the Oregon State Bar Litigation Section, 2012–2018
• AV Preeminent Peer Review Rated with Martindale-Hubbell^®
• Member, Intellectual Property and Litigation Sections, American Bar Association
• Member, Antitrust and Trade Regulation, Intellectual Property and Business Litigation Sections, Oregon State Bar

Civic Activities

• Member, Board of Directors, Big Brothers Big Sisters/Columbia Northwest, 2013–2020
• Member, Board of Trustees, Oregon Episcopal School, 2004–2012
• Trustee, Playwrite Inc., 2006–2008
• President and Trustee, Grace Memorial Church Foundation, 2002–2006
• Member, Vestry of Grace Memorial Episcopal Church, 2002–2004 (Senior Warden, 2003 and 2004), 2016–2018 (Senior Warden, 2017 and 2018)
• Member, Disciplinary Committee, Episcopal Diocese of Oregon, 2011–2013

Other Professional Experience

Before attending law school, Steve was a professional actor. He studied with Bill Esper and Joanne Baron at William Esper Studios in New York City and appeared in a number of Off-Off Broadway productions and summer Shakespeare festivals.

Insights & Presentations

• Presenter, “Seeking Preliminary Injunctive Relief: When, Why and How,” Oregon State Bar Young Lawyers Division; Multnomah Bar Association Lunch Time CLE Series
• Presenter, “Comparative Advertising,” client presentation
• Moderator, “EU Privacy Law Developments,” Stoel Rives Seminar Series
• Presenter, “What Every Business Lawyer Should Know About IP Disputes,” Stoel Rives Business Attorney Training Seminar
• Presenter, “The Attorney-Client Privilege and the Duty of Confidentiality for In House Counsel” (co-presenter, Brianne Bridegum), Stoel Rives’ Rooftop CLE Series
• Presenter, “Competing Within The Law: Online Advertising and Keyword Use” (co-presenter, Jeremy Sacks), Stoel Rives Seminar Series
• Presenter, “Knocking Off the Knockoffs” (co-presenter, Jay Rafter), Stoel Rives IP Seminar Series
• Presenter, “Responding to IP Demand Letters” (co-presenter, Randy Foster), Stoel Rives IP Seminar Series
• Presenter, “Enforcing Covenants Not-to-Compete,” Oregon State Bar CLE
• Presenter, “Computer Forensics and Electronic Discovery,” Multnomah Bar Association CLE
• Author, “Online Advertising Requires Truth, Proof and Transparency,” Portland Business Journal, April 27, 2012
• Author, “Computer Litigation” (editor), Advising Oregon Businesses, Oregon State Bar
• Author, “On the Stand: Executives Can Prepare to Give Testimony” (co-author, Jeremy Sacks), Portland Business Journal, August 4, 2006

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