Experience

Representative Agribusiness, Food & Beverage Matters

Trademark Infringement

• Defense of Heart Pizza LLC in trademark infringement litigation in U.S. District Court, District of Oregon. Heart Pizza is a Portland-area chain of pizza restaurants. The company was accused of infringing the trademark of Heart Coffee, the owner and operator of a coffee roasting business and coffee shops. Following a preliminary injunction hearing, the parties resolved their differences.
• Representation of Leonetti Cellar LLC in trademark infringement litigation in U.S. District Court, Central District of California. Leonetti is one of the original and foremost vineyard and winery operations in what is now known as the Walla Walla Valley AVA. When a California winery came to market using the mark LEONESSE, and with font and colors on their packaging similar to what had long been used by Leonetti, our client objected. When Leonesse would not agree to stop using its confusingly similar name, Leonetti sued for trademark infringement. After discovery, the parties mediated a settlement and the defendant changed its name.
• Provide counsel in trademark-related disputes between wineries and between breweries. Most often, the parties are able to find common ground and come to an understanding short of litigation. On occasion, however, we have litigated trademark infringement cases for our alcohol, food and beverage clients, including Domaine Serene and Leonetti.

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. Result: under pressure to produce support for its trade secrets claim, the supplier/competitor dismissed all its original claims. The court granted our clients’ 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.

Covenants Not to Compete

• Enforced a covenant not to compete on behalf of Bunzl Distributing. Result: preliminary injunction was entered enjoining defendant, Bunzl’s former Portland area sales manager, from joining a competitor in the same capacity.

Other Representative Matters

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^SM” brand name.
• Representation of Troy Healthcare LLC in trademark and trade dress infringement case against Troy’s former distributor, Nutraceutical Corporation, in U.S. District Court, Western District of Washington. Troy sought to enjoin Nutraceutical’s 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 parties ultimately settled.
• Representation of The Learning Internet dba Learning.com in declaratory judgment action brought in response to demand by Florida-based Learn.com that our client cease and desist using the mark LEARNING.COM. Result: summary judgment of non-infringement was granted in Learning.com’s favor.
• Representation of Michaels^® of Oregon in trademark infringement litigation brought in U.S. District Court, Eastern District of Virginia by Blackhawk Industries (BHI), 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. Result: the case was settled, and Michaels continues to use the BLACKWATER mark.

Patent Infringement

• Representation of Skedco, Inc., an Oregon-based manufacturer of rescue gear and medical training equipment, in patent litigation brought in U.S. District Court, District of Oregon against Strategic Operations, Inc., a San Diego-based company. The patented technology is a simulated bleeding system for use in training first responders. Result: Skedco prevailed on summary judgment as to infringement; the case settled prior to trial on damages and certain remaining defenses.
• 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. Result: 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. Result: Strands was dismissed from the case shortly after we filed for summary judgment.

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 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. Result: 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. Result: 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.

Antitrust

• Representation of Zenith Electronics in an action brought by one of its independent distributors alleging nine separate legal claims, including that Zenith’s cooperative advertising policy and retail buying group program constituted illegal resale price maintenance. Result: Zenith was awarded summary judgment on all the plaintiff’s claims, and the case was dismissed.

Technology

• Defense of Intel Corporation in an action arising from a server crash and alleged data loss that occurred following a power surge at the plaintiff’s location. The plaintiff, a manufacturer of industrial handles and joysticks, claimed its entire archive of electronically stored drawings and other production files was permanently lost because of instructions it received after the crash from Intel customer service regarding reinstalling a piece of Intel equipment. Result: After extensive discovery and filing of Intel’s motion for summary judgment, the plaintiff voluntarily dismissed all claims with prejudice.

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), 2014–2023
• 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–present
• 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

Insights & Presentations

• Presenter, “Seeking Preliminary Injunctive Relief: When, Why and How,” Stoel Rives Seminar 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