INTELLECTUAL PROPERTY

Extensive Experience

The firm has substantial experience representing both large, publicly traded companies and small start-ups in copyright, trade secret, patent and trademark litigation, as well as in contract cases centered around intellectual property issues. The firm has a deep understanding of the law, technology, and client business objectives. We work to bring key players from both sides of a dispute together early to foster efficient, pre-dispute business resolutions.

Aggressive and Efficient Advocacy

The firm collaborates with Jim Otteson and Agility IP Law on patent and other intellectual property cases. This collaboration allows both firms to be flexible and scalable as needed, while delivering a quality product to our clients. Bergeson and Agility IP Law are currently representing plaintiff MShift, Inc. in a patent case involving mobile banking technology in the Northern District of California (No. C10-00710 (WHA)). The firm also collaborates with affiliated counsel Peeyush Jain on licensing and other intellectual property matters. Jain is the former Sr. Corporate Counsel and Deputy General Counsel at United Microelectronics Corporation.

Experienced trial lawyers with record of success

The firm’s recent representation of clients in intellectual property cases includes the following matters:

DVS, Inc. v. C2 Microsystems, 1-06-CV-061760, Santa Clara County Superior Court Following a two-week jury trial, the Santa Clara County Superior Court granted C2 Microsystems, Inc.’s motion for nonsuit. The case concerned allegations of intentional misrepresentation relating to an IP licensing agreement. DVS, Inc., the licensor, brought suit against C2 Microsystems, Inc. (the licensee) and Edmund Sun (the former CEO of both companies). DVS alleged that Mr. Sun made misrepresentations on behalf of C2 Microsystems regarding the value of the licensed technology, and sought damages in excess of $10 million. The Court found that, as a matter of law, DVS failed to meet its burden of showing that a majority of the DVS Board of Directors relied on any alleged misrepresentations by Mr. Sun. The Court also awarded C2 Microsystems, Inc. $133,300 in attorneys’ fees and costs for its successful defense of DVS’ claim of breach of the covenant of good faith and fair dealing. The case is currently on appeal.

Verigy US Inc. vs. Romi Mayder., No. C07 04330, United States District Court, Northern District of California. The Bergeson team obtained a temporary restraining order (2007 WL 2429652), preliminary injunction (2008 WL 564634), and contempt citation for violation of temporary restraining order (2008 WL 2128145) against a former employee who started a competing company using Verigy technology; case settled on the eve of trial and Verigy obtained the IP at issue.

Rita Medical Systems, Inc. v. Resect Medical, Inc., No. C-05-03291 (WHA) (2007), United States District Court, Northern District of California (assignment of patent, trade secrets, false association). The Bergeson team defeated motion for preliminary injunction (2006 WL 2038328), obtained summary adjudication of several claims, including misappropriation of trade secrets and false association (2007 WL 161049), and obtained case dispositive rulings on motions in limine, including exclusion of plaintiff’s damages expert, exclusion of major portions of plaintiff’s technical expert’s report, and exclusion of plaintiff’s entire lost profits damages theory; case settled on the eve of trial.

Knowledgeplex, Inc. vs. Placebase, Inc., No. C08 04267 JF (RS) (2009), United States District Court, Northern District of California (Copyright Infringement/Breach of Contract/Trademark Infringement).

Variphy Inc, Danny Tran, and Layne Hoo vs. Clarus Systems, Inc., AAA No. 74 160 00662 06 DECR (2007) (misappropriation of trade secrets).

Sandisk Corporation v. LSI Corporation, Case No. C-09-02737 WHA (2010), Northern District of California (patent).

Gator.com Corporation v. L.L. Bean, Inc., 398 F. 3d 1125 (9th Cir. 2005) (Internet jurisdiction);

TRS Consultants, Inc. v. Rick Shi, et al., Case No. C-04-02171 JSW (2004) (copyright/trade secrets);

Excambria, Inc. v. Enable Solutions, Inc., Case No. CO3-03236BZ (2003) (trade secrets);

West Valley Engineering, Inc. v. Nicholas Schichtle, Case No. CV801705 (2001), Santa Clara County Superior Court (trade secrets);

Network Commerce, Inc. v. Preview Systems, Case No. C-00-1790, Western District of Washington (patent);

Unither Pharma, Inc. and The Board of Trustees of the Leland Stanford Junior University v. Herbalife Int’l, Inc., Case No. 03-5090JW, Northern District of California (patent);

Seagate Technology LLC v. Atmel Corporation, et al., Case No. CV809883, Santa Clara County Superior Court (semiconductor chip defect litigation);

America Online, Inc. v. Tribal Voice, Inc., Case No. 99-20434-JW ENE, Northern District of California (trademark);

Animatics Corporation v. Quicksilver Controls, Inc., Case No. C-99 05155 WHH, Northern District of California (patent);

RPG Music International Limited and Gramophone Company of India Limited v. Ghazal International, Case No. C-99-20106SW PVT, Northern District of California (trademark cases);

LG Semicon Co., Ltd. et al. v. NEC Corporation, et al., Case No. 98-03624 EDL, Northern District of California (patent);

Pearson v. Quickturn Design Systems, et al., Case No. 97-20907, Northern District of California (copyright/trade secrets);

Mediatek Inc. v. Oak Technology, Inc., Case No. C-97 21126 RMW, Northern District of California (patent);

Oki Electric Industry Co., Ltd. v. LG Semicon Co., Ltd., et al., Case No. 97-20310 (SW), Northern District of California (patent);

Molex Inc. v. Foxconn International, Inc., Case No. C-97-20107, Northern District of California and Case No. 97-C-0739, Northern District of Illinois (patent);

20/20 Software, Inc. v. Preview Software, Inc., Case No. 97-1355, District of Oregon (trade secrets);

Lattice Semiconductor Corporation v. Tan, et al., Case No. 95-20833, Northern District of California (copyright);

Scientific Technologies, Inc. v. Pinnacle Systems, Inc., et al. Case No. 94-3509, Northern District of California (patent);

NSA International, Inc. v. Intelligy Corp., et al., Case No. 94-2969, Western District of Tennessee (copyright);

Charles Evans & Associates v. Accurel Systems International Corp., et al., Santa Clara County Superior Court,
Case No. CV 772301 (misappropriation of trade secrets);

Amalar Inc. v. Luddy, et al., Santa County Superior Court, Case No. CV781303 (misappropriation of trade secrets);

Stanford Telecommunications, Inc. v. Advanced Broadband Communications, Inc., Santa Clara County Superior Court, Case No. CV784108 (misappropriation of trade secrets);

Adaptec, Inc. v. Brocade Communications Systems, Inc., Santa Clara Superior Court Case No. CV789393 (misappropriation of trade secrets and employee solicitation).