One man’s patent troll is another man’s patent protector. Originally established to protect inventors from patent infringers, NPEs—or Nonpracticing Entities—have come under severe criticism for not practicing the inventions of their patents but rather focusing on licensing and litigation. Recent legislation and Supreme Court cases have changed the playing field making it harder for NPEs to win their patent infringement cases and broadening the effects of a case lost. To understand how the changing NPE model affects attorneys, Law360 interviewed Joey Liu of One LLP for his insight as a litigator who has both represented and defended against NPEs. “For attorneys who are willing to take on these riskier cases, we’re seeing some of the economic terms of contingency cases shifting toward attorneys receiving extra compensation, taking higher percentages of fees recovered or having separate agreements to offset costs,” Liu says. “So now, attorneys are negotiating whether to handle [certain [...]
Evaluating the Effectiveness of the Inter Partes Review Process: Nate Dilger and John Lord Author Article in Los Angeles Lawyer Magazine
While (IPR) petitions are on the increase, Nate Dilger and John Lord provide an analysis of the overall effectiveness of IPR Proceedings and benefits of investing early in the process. “IPR proceedings have achieved their stated goal of providing an effective and efficient way to challenge a patent’s validity.” Nate Dilger explains. John Lord also explains, “Patent owners thus must fight early and hard to prevent IPR institution, if possible, or at least to narrow the issues for which trial is instituted.” Nate Dilger and John Lord are registered patent attorneys and partners at One LLP. Mr. Dilger’s practice focuses on litigating patent disputes, including representation of patent challengers and owners in PTAB inter partes review proceedings. Mr. Lord’s practice focuses on intellectual property litigation, including representation of companies in post-grant PTAB proceedings. Read full article.
The U.S. Supreme Court Monday decided in Cuozzo Speed Technologies LLC v. Lee that the Patent Trial and Appeal Board can continue to use a claim construction standard to review patents in America Invents Act reviews that is different from the one used in district court. Law360 quotes William O’Brien on why the decision is significant. “The Supreme Court followed its precedents on agency deference, but the result is to permit inconsistencies in claim constructions that would never be tolerated if infringement and validity were both being determined in court. By petitioning the Patent Trial and Appeal Board, an accused infringer gains a broader playing field for contesting validity, because the board will compare the prior art to the ‘broadest reasonable construction’ of the patent claims it reviews. If the claims nonetheless survive, the case returns to court, where the accused infringer can invoke different claim construction rules and play infringement defense on [...]
A Practical Guide to Music Licensing: Burgundy Morgan Authors Article in Intellectual Property Magazine
Licensing music is a prominent way that artist, songwriters, producers, record labels and music publishers generate revenue from the music they own. Copyright owners of the music must properly license the music for use in film, television, or any other commercial application. In the Intellectual Property Magazine article "A Practical Guide to Music Licensing," One LLP Attorney Burgundy Morgan provides detailed insights into the two distinct licenses copyright owners can grant giving the necessary rights for use of their work and the differences between the two licenses. "Copyrighted music can generate a significant income for rights owners, but they have to secure two different licenses first," says Ms. Morgan. Ms. Morgan also outlines licensing scenarios for recordings and musical compositions to better explain the differences in a master-use license and a synchronization license. Ms. Morgan proceeds to explain the importance of clearing a musical composition and sound recording “One should [...]
Partner John Lord presents at the “Legal Do’s and Don’ts” session of the Port of Los Angeles Advanced Trade Connect program on exporting. The program, held on May 19 at Phoenix University, is hosted by the Port of Los Angeles and the Los Angeles County Bar Association. Trade Connect offers a series of workshops at a range of levels, from the basics involved in exporting to advanced workshops targeted at helping export companies effectively add or expand export activities. The program provides presentation by subject matter experts, information about sources for research, and references to a wide range of public and professional support resources.
William O’Brien Addresses the Uncertain Boundaries of the Copyright Law with Respect to “Useful Articles”
The Intellectual Property Law Section of the California State Bar recently published One LLP Partner William O’Brien’s “Copyright Commentary” column in the Spring 2016 edition of its magazine New Matter. In a commentary entitled, “Policing the Boundaries of Copyright: Is It Time for the Supreme Court to Step In?,” Bill points out the uncertainty that has been created by conflicting decisions in U.S. Courts of Appeals about when features of useful articles—ranging from clothing to cars—can be protected by copyrights rather than by other forms of intellectual property, like utility or design patents, that are more carefully tailored for that purpose. Bill points out the important practical effects of applying copyrights to useful articles, such the much longer term of protection for copyrights and protection of features that would not meet patent-law requirements for novelty and non-obviousness. To illustrate the present uncertainly in copyright law, Bill points out that ten [...]
In a recent Q&A conducted by Law360, Partner Chris Arledge sat down to discuss his trial experiences, including the most interesting trial he’s worked, how to deal with unexpected occurrence in the courtroom and how he prepares for trial. Citing his most difficult trial as his most interesting, Chris discusses a trade-secret misappropriation case in which he represented the defendant, a former employee of the plaintiff who left to start a new business. Chris took over on the eve of trial, and his client had conducted very little discovery and had failed to designate experts to rebut the other side’s expert witnesses. But, noting the weaknesses in the plaintiff’s damages case, Chris and his team exposed the flaws in the expert’s opinion during cross examination, prevailed, and were able avoid a multi-million dollar verdict. Chris also mentioned the importance of expecting the unexpected, including witnesses delivering information in a surprising [...]
The sports-media industry has experienced a proliferation of litigation involving right of publicity claims asserted by student athletes for the unauthorized use of their names, images and likenesses. This raises the question of whether collegiate athletes should be paid for the commercial use of their identity, as they are currently only allowed to be compensated through scholarships. In the article “When Keeping It Real, Goes Wrong: How Ed O’Bannon Changed the Game,” published in Sports Litigation Alert, Partner Uleses Henderson discusses several prominent cases of publicity rights in video games that feature collegiate sports players’ likenesses without compensating them. One main issue in sports media cases is the use of avatars that resemble the height, weight, positions, playing abilities and special movies of certain collegiate players. Similar right of publicity claims don’t just stop at the collegiate level, as EA recently lost its appeal before the Ninth Circuit Court to [...]
One of the biggest dangers in trying a patent case is the risk of overwhelming the judge or jury with too much information. The widely-read online legal publication Law360 recently asked for the advice of One LLP Partner William O’Brien and other experienced patent trial lawyers about how best to present the best evidence in a patent trial. The Law360 article, “5 Tips for Showcasing Evidence at a Patent Trial,” highlights key trial techniques such as focusing on a central theme, using sophisticated and varied visual aids, showing the human angle of the case, looking for witnesses with a fresh viewpoint, and always expecting the unexpected in the courtroom. For example, Bill O’Brien explains in the article that the best evidence about an invention doesn’t necessarily come from the inventor himself. Bill describes how, in representing the owner of a patent on dialysis needle guards, he decided not to call the [...]
Founding Partner John Tehranian participates on the panel, “Litigation: Entertainment and Sports Cases Updates” at the 24th Cutting Edge Entertainment Law Seminar in New Orleans, LA on August 26, 2016. John, along with other panelists, will discuss successful strategies, tactics and techniques in today’s entertainment and sports business industries. The three-day seminar examines the latest in entertainment law, including litigation trends, publishing, current contractual agreement safeguards, as well as firm contracts and digital agreements. Cutting Edge provides an intimate environment where musicians, entertainment professionals, and attorneys can connect with speakers and ask questions in a relaxed atmosphere. Register today.
Copyright law has become the weapon of choice for 21st-century censorship. Copyright violations are ubiquitous, liability can be massive and copyright lawsuits are difficult to fend off. And, perhaps most importantly to the sophisticated censor, the federal courts have almost systematically immunized infringement suits from explicit First Amendment defenses. In the Recorder article “Copyright Law Has a Free Speech Problem,” One LLP Founding Partner John Tehranian discusses the growing use of copyright law for the purposes of censorship, as well as how this trend undermines both the vitality of our copyright regime and public discourse. “New tools are needed to fight the threat posed by censorious copyright litigation to public debate, expressive rights and freedom of speech,” Mr. Tehranian said. “Reform efforts would ideally introduce a consistent and uniform procedural mechanism for addressing the copyright-as-censorship problem.” Mr. Tehranian also outlines how some courts have attempted to deal with this problem [...]
To escape the congestion of Los Angeles, certain entertainment industry professionals, including One LLP Partner and film producer Judd Funk have set up shop in Orange County. As reported in an article published by Coast magazine, Judd references his years as an attorney and business affairs executive on films, such as The Empire Strikes Back, Return of the Jedi, Field of Dreams, Jurassic Park, Schindler’s List, The Lord of the Rings (I, II, and III), and a host of other billion-dollar blockbusters. To add to his entertainment industry resume, Judd serves as a member of the executive branch of the Academy of Motion Picture Arts and Sciences. “Until I lived here in Orange County for a few years, I couldn’t fully appreciate how living in the congestion of Los Angeles aggravates everything, making it more difficult to go from point A to point B,” says Judd about the joys of living in Orange County. “Once I’m [...]
Prestigious firm adds litigator and transactional attorney to their burgeoning Southern California presence DEL MAR, CA – One LLP, an intellectual property, technology and media law firm, has opened a new office in San Diego and has added Partners Nicholas Janda and Neil Ray to the growing practice. Mr. Janda and Mr. Ray will be joining seasoned IP attorneys Mitchell Brook and Stephen Lobbin at the new office, located in the Del Mar area. This San Diego submarket is well-known for having a large presence in biotechnology and life sciences, information communications technology and clean technology sectors with significant intellectual property needs. With established offices in Newport Beach and Beverly Hills, One LLP handles patent, copyright, trademark and trade secret cases; patent prosecution; entertainment and media litigation; and entertainment and technology transactions. “The Organization for Economic Co-Operation and Development recently ranked San Diego as the world’s second most innovative city [...]
One LLP Beverly Hills Big firms are great at what they do, said One LLP co-founder Chris Arledge, but they price themselves out of a lot of case work with large staffs, high billable rates and other ballooning costs. “We wanted to fill that void,” Arledge said. One LLP is a boutique intellectual property law firm with a staff of less than 30 attorneys who have worked at some of the nation’s largest and most prestigious firms. Together they handle all facets of intellectual property law including trademark, copyright, patent, licensing and transaction and intellectual property counseling. With their combined experience, they have navigated decades of high-profile intellectual disputes and transactions for companies ranging from Fortune 500 businesses to individuals. Their clients have included Kelly Blue Book, Pacific Sunwear, University of Southern California, New York Times bestseller Chester Elton, Broadcom, Abbot Labs and QLogic. “What we have done is [...]
Electronic Urban Report Speaks With Uleses Henderson on Court Dismissal for Presiding Church of God In Christ Bishop
In an article published by Electronic Urban Report, Partner Uleses Henderson discusses how a court dismissal was obtained on behalf of Bishop Charles Blake, Presiding Bishop of the Church of God in Christ (COGIC)—the fifth largest Christian denomination. The dismissal came as a result of a counterclaim filed by the defendant, Minister Earl Carter after Bishop Blake stated Mr. Carter illegally profited off his reputation. A defamation lawsuit filed by Bishop Blake alleged Mr. Carter used the Internet to engage in outrageous and malicious attacks, criticizing Bishop Blake’s moral character. “Mr. Carter’s purposeful and continual attempts to defame Bishop Blake are egregious,” commented Uleses, who serves as general counsel for COGIC. “The filing of the defamation lawsuit was Bishop Blake’s only recourse to stop Mr. Carter’s harmful conduct.” The Order of the Court concluded the counterclaim lacked factual data and was ultimately dismissed without prejudice. “We are delighted that the [...]
For junior associates who often dream of arguing in federal appellate courts, the U.S. Court of Appeals offers the Ninth Circuit’s Pro Bono Program, giving attorneys an opportunity to argue at the court in exchange for pro bono assistance in civil cases. In an article published by Bloomberg, Founding Partner Peter Afrasiabi comments on this incredible opportunity for young associates. The program is primarily intended to assist the court in handling complex appeals, ranging from all types of civil cases. Peter, who has volunteered to help facilitate the program comments, “When the program started, there was a massive number of pro se appeals—cases where the litigants represented themselves without the help of a lawyer.” One alluring aspect of the court’s program for young associates is that the court hears oral arguments in every case referred through the Pro Bono Program. For the associates undertaking the appeal without compensation, the court provides [...]
Four One LLP Partners Selected as 2016 Southern California Super Lawyers Partners Peter Afrasiabi, Chris Arledge, Lester Savit and John Tehranian and have been selected for inclusion on the 2016 Southern California Super Lawyers list for their work in intellectual property litigation. John and Chris have been named Super Lawyers for two consecutive years, Peter for four consecutive years, and Lester for six years. Super Lawyers is a rating service of the top five percent of outstanding lawyers who have attained a high-degree of peer recognition and professional achievement. The selection process is multi-phased and includes independent research, peer nominations and peer evaluations.
One LLP Partner Chris Arledge represented defendant X17, a Hollywood photography company that publishes celebrity news and photographs, in a lawsuit filed by sobriety coach Peter Dice. X17 photographers and videographers recorded an interaction between celebrity Lindsay Lohan, Mr. Dice and another man. In the video, Mr. Dice showed Ms. Lohan and her companion a small plastic baggie. X17 published the video, photographs and an accompanying story on its website. Mr. Dice alleged that the story implied Ms. Lohan was buying drugs from him. Mr. Dice sued for defamation and for violation of his privacy and publicity rights. The lawsuit sought more than one million dollars in compensatory and punitive damages. During trial, Mr. Arledge impeached Mr. Dice with his prior inconsistent statements to undermine the plaintiff’s damages case. This strategy succeeded, as the jury awarded only $10,000 to the plaintiff, a tiny fraction of the amount sought.
William O’Brien Featured in Law360 Article on Mistakes Lawyers Make in Negotiating Patent Settlements
In the article “4 Mistakes Lawyers Make in Negotiating Patent Settlements,” Law360 explores common mistakes attorneys make when working to settle a patent dispute. These include: viewing the case only from their client’s perspective, failing to understand their clients’ industries and goals, and overestimating confidentiality in settlement talks. Another big mistake lawyers make is becoming so focused on the current suit that they fail to consider the potential for further disputes with the same opponent. “For patent owners, attorneys must consider the risk on an accused infringer designing around the patent-in-suit in a way that either continues to infringe the patent or violates other patents,” says One LLP Partner William O’Brien. “There’s no great solution for that, but you can try to negotiate specific features will constitute infringement and negotiate procedures for dealing with future issues, such as including an arbitration clause.” In the article, Bill also advises lawyers for [...]
Joined by University of California, Irvine researchers, committed members of the Huntington’s Disease fundraising community and a consultant, Partner Lester Savit participated in a meeting of Americans for Cures discussing the future of stem cell research funding in California. Mr. Savit serves on the Board of Directors for the University of California, Irvine’s HD-CARE, an organization devoted to advancing Huntington’s Disease research and clinical care. Americans for Cures is an organization that supports fellow advocates in the fight for stem cell research and cures, providing them with the information and tools to help distribute factual information, communicate effectively and encourage fund research.
— One LLP has doubled its size over the past five years and was recently named one of The Daily Journal’s Top 25 Boutique Firms in California — NEWPORT BEACH, CA – Intellectual property, technology and media law firm One LLP welcomes litigators Gunnar Gundersen and David Jones as partners. From high-tech patent disputes to advocating for artists under the Visual Artists Rights Act, Mr. Gundersen has extensive experience with patent, copyright, trade dress, consumer rights litigation, art law and intellectual property consulting. Mr. Jones has a wide range of experience with intellectual property matters, including developing and managing patent portfolios, patent prosecution, trademarks and unfair competition, copyright, as well as developing strategies for corporations to protect, enforce and procure patents. “Gunnar and David are highly-qualified intellectual property attorneys who help fortify the bench strength of our firm,” said Peter Afrasiabi, Founding Partner of One LLP. “Their work has encompassed [...]
This year, Matt Rabin became Supervising Attorney and General Counsel, Entertainment Launch Lab at Chapman. Essentially Entertainment Launch Lab is an incubator for Chapman business, film and law students and alumni who have technology and entertainment-focused start ups. Matt’s entertainment and technology-oriented practice at One LLP runs the gamut of intellectual property issues.
One LLP prevailed in a long-standing trade dress and trademark dispute before the Ninth Circuit. Its client is Bettie Page Clothing, the licensee to the famed Bettie Page pin-up girl of the 1950’s. Chris Arledge and Peter Afrasiabi litigated the case through trial before Judge Fischer in the Central District of California. The result is a complete defense judgment, which the Ninth Circuit affirmed.
Chris Arledge prevailed for his client in a software dispute case. One LLp’s client was a developer hired to work on the creation of the state exchanges under the federal Affordable Care Act. When the deal went south, the client secured One LLP to pursue the defendant and secure compensation. At the arbitration hearing , Chris secured a complete plaintiff’s verdict, recovering every dollar sought.
The One LLP team of Paul Y. Feng, Stephen M. Lobbin, and John E. Lord recently secured a preliminary injunction in a patent infringement case for client Cordelia Lighting, Inc. of Los Angeles, which is a very rare and special achievement in patent litigation. The litigation concerns one of Cordelia’s premium and popular LED recessed lighting fixtures, which is protected by Cordelia’s U.S. Patent No. 8,474,204 (“the ‘204 patent”). Mr. Feng prosecuted the ‘204 patent, which the Patent Office approved without any objection. The ‘204 patent is directed to the particular heat-dissipating and magnetic trim features of Cordelia’s product, which it sells exclusively through Home Depot stores throughout the United States. Cordelia’s opponent in the litigation—China-based Zhejiang Yankon Group Co., Ltd. (“Yankon”)—recently began selling its accused infringing LED lighting fixture, also nationwide, at Home Depot’s chief retail competitor Lowe’s. In his April 27, 2015 Order, U.S. District Judge Jesus G. [...]
Founding Partner John Tehranian will serve on the panel, “Taking Your Brand to the Next Level: Licensing, Celebrity Branding & Protecting it All” at the MAGIC Conference in Las Vegas, NV on February 17, 2016. John, along with other panelists, will discuss the necessary steps fashion companies can take to protect their brand, maximize its goodwill and prevent it from being counterfeited or knocked-off. The presentation will also provide attendees with a primer on the licensing and protection of marks and the practical considerations in partnering with a celebrity to increase opportunities in sales and marketing.Watch Justice League vs. Teen Titans (2016) Full Movie Online Streaming Online and Download MAGIC is the global pillar for fashion tradeshows that covers the top hottest brands in men’s, women’s, and children’s apparel and accessories, footwear and resources. With 85 years of experience and attendance from over 120 countries, MAGIC moves fashion forward globally.
One LLP lawyer John Lord successfully raises a section 101 defense, and prevails in patent dispute. The Court granted the defendant’s motion for judgment on the pleadings invalidating 84 claims across three patents for claiming ineligible subject matter. Read Article Here.
For the second time, the litigation team of Nate Dilger and Bill O’Brien have prevailed in major inter partespatent review proceeding in Washington, D.C. on behalf of their client, SSW. “Key to our success has not only been diligence and hard work, but also recognizing the incredible importance of telling a coherent, accessible story of our client’s invention, instead of relying on a dry and uninteresting legal narrative” Dilger said. As a firm, One LLP has been recognized as one of the top litigation boutiques in California, based in part on its successes in the field of intellectual property, including its surprising success rate defending against inter partes review challenges. Indeed, recent data from the Patent Office shows that while barely 15% of patentees have succeeded in defending the patentability of all the challenged claims during these proceedings, One LLP has the near-unprecedented success of defending the patentability of all the challenged claims [...]
Peter and Chris prevailed today in a federal appeal against Electronic Arts. The case is a copyright ownership dispute involving the EA Sims video game PlumbBob USB drive, and was brought on behalf of their client Direct Technologies, LLC against EA. The copyright case was in the Ninth Circuit and the Ninth Circuit panel included Judges O’Scannlain, Trott and Clifton.
Peter argued a significant patent appeal in the Federal Circuit. The case involves a United States Naval Research Laboratory patent and the legal issues revolved around questions of inequitable conduct. The United States of America filed an amicus brief supporting Peter’s client. The case was argued in Washington, D.C. on May 10, 2013.
Peter Afrasiabi and John Tehranian Named to Variety’s 2013 Legal Impact Report Feature On the Top 50 Entertainment Lawyers
Founding partners Peter Afrasiabi and John Tehranian, were recognized in Variety’s 2013 Legal Impact Report, which profiles the world’s top 50 entertainment lawyers. Variety’s 2013 Legal Impact Report featured Peter and John, along with other noted attorneys from O’Melveny & Myers, Gibson Dunn & Crutcher, Munger Tolles & Olson, Kirkland & Ellis, and Loeb & Loeb, in its list of the top litigators in the business. Variety highlighted Peter and John’s victory in Mavrix Photo, Inc. v. Brand Technologies, Inc., 647 F.3d 1218 (9th Cir. 2011), cert. denied, 132 S. Ct. 1101 (2012), which resulted in a widely watched and precedent-setting decision for the entertainment industry that has substantially increased the ability of content owners to bring suit in their home jurisdiction when infringers exploit copyrighted works online before a national audience. In the past year, at least 86 federal court decisions have cited to the case, which earned an extensive recent write-up in the Harvard Law Review.
Peter Afrasiabi spoke at an annual Intellectual Property conference at the University of Utah in Salt Lake City, Utah. Peter provided a presentation on Domain Name Law Developments, focusing on federal statutory remedies and international arbitrations for domain name infringement actions.
One LLP prevailed on behalf of the Diocese of the Pacific and Southwest of the Holy Catholic Church (Anglican Rite) in the Orange County Superior Court. The case arose out of a split in the Anglican Catholic Church. One LLP’s clients had been officers and directors of the Diocese for a number of years. Their status was challenged by a group who asserted that they were the rightful officers of the Diocese and were thus entitled to all of the Diocese’s books, records, and property. The Court rejected their claims and granted summary judgment to One LLP’s clients.
One LLP obtains dismissal with prejudice of all claims against its client, American Re-Insurance Company
One LLP obtains a dismissal with prejudice of all claims against its client, American Re-Insurance Company, in a multi-million dollar case alleging interference with contract and unfair business practices.
One LLP achieves a favorable settlement for client whose trade secrets were stolen by former employee
One LLP achieved a favorable settlement for a client whose trade secrets had been stolen by a former employee. The lawsuit had been pending in the federal district court in Santa Ana. The settlement agreement, the terms of which are confidential, allowed One LLP’s client to protect its proprietary information and receive cash compensation.
On the first day of trial, One LLP obtains a favorable settlement for its client, the managing agent for all homes in California owned by the Department of Housing and Urban Development, in a premises liability case arising out of a gangland shooting.
Peter Afrasiabi prevailed in a domain name arbitration against a cybersquatter who had registered a domain name that was confusingly similar to that of One LLP’s client, Inco-Check, Inc. Read the Article.