Intellectual Property Litigation

The Firm has substantial experience representing large, publicly-traded companies and small start-ups in patent, trade secret, trademark, and unfair competition litigation, as well as other commercial and business matters involving intellectual property and technology issues. We represent both plaintiffs and defendants and deliver high quality representation to individual entrepreneurs and Fortune 500 companies.

Aggressive and Efficient Advocacy

Profitable and responsible operation in today’s litigation-prone environment is one of the greatest challenges facing business. Our lawyers understand and advise clients in assessing the costs and benefits of litigation and the prospects of settlement of business disputes.  Getting the best possible results for our clients at a reasonable cost is our goal.  Our attorneys pursue cost-effective legal solutions that meet our client’s business objectives, through litigation, mediation, arbitration, or other alternative dispute resolution techniques.

Aggressive litigation of multi-million dollar disputes does not require multi-million dollar litigation fees. The Firm delivers cost-effective high quality representation that will not break the bank. Our team has a deep understanding of a range of technologies and the law, as well as client business objectives. We work to bring key players from both sides of a dispute together early to foster efficient, pre-dispute business resolutions. We focus the client’s litigation objectives to achieve the best possible outcome without needlessly increasing costs. The Firm also works with a network of specialists in intellectual property issues such as patent prosecution, Inter-partes Review (IPR) and patent and intellectual property licensing.

Patent Litigation

We defend clients against infringement lawsuits brought by non-practicing entities (NPEs) and representing both start up and mature technology companies in high stakes “bet the company” litigation.  Our attorneys have experience in preparing and presenting matters for both plaintiffs and defendants before federal trial courts across the United States and before the United States International Trade Commission (“ITC”).  Our experience includes all phases of litigation, including pre-filing investigations and negotiations, discovery, claims construction “Markman” hearings, deposing and defending witnesses, writing pre-trial and post-trial briefs, identifying experts and preparing expert reports, and preparing and conducting direct and cross-examinations of experts and other witnesses at trials and hearings.  We have litigated cases involving software, semiconductor devices and manufacturing processes, wireless products, cellular handsets, mobile devices, global positioning systems (GPS), medical devices, and online payments and secure online transactions.

Representative matters: 

  • Unisense Fertilitech A/S v. Auxogyn, Inc., No. CV11-05065. United States District Court, Northern District of California (declaratory relief patent action)

The Firm represented defendants Auxogyn and Stanford University in a declaratory relief action filed by Unisense as to noninfringement, invalidity, and unenforceability of Auxogyn’s ‘906 Patent. The Court granted defendants’ motion to dismiss the complaint.

  • Life360, Inc. v. Advanced Ground Information Systems, Inc., No. 5:15-cv-00151-BLF, United States District Court, Northern District of California (false patent marking litigation in mobile software applications)

The Firm represented Life360 which filed a false marking action against Advanced Ground Information Systems, Inc.  The matter settled after Life360 defeated a motion to dismiss.

  • California Institute of Computer Assisted Surgery, Inc. v. Med-Surgical Services, Inc., et al., No. C10 05067 CW, United States District Court, Northern District of California (patent infringement)

The Firm represented Med-Surgical in a patent infringement lawsuit that quickly settled after Med-Surgical obtained an award of sanctions after a discovery motion.

  • Guzik Technology Enterprises v. Western Digital Corporation et al., No. C11-03786 PSG, United States District Court, Northern District of California (patent infringement action involving hard disk drive testers)

Trade Secrets Litigation

Protection of trade secrets and related confidential information is vital for technology companies dealing with short product lifespans.  We have represented both companies and employees in disputes over the possession and misappropriation of trade secrets.  These matters often develop rapidly and require a quick and aggressive response to minimize the harm of improper disclosure and/or use.  Our attorneys have experience in all aspects of trade secrets litigation, including investigations, seeking and defending against temporary restraining orders and preliminary injunctions to prevent further misappropriation, and developing “clean room” and independent development defenses in response to claims of misappropriation of technical and business information.

Representative cases:

  • TIBCO, Software, Inc. v. RapidMiner, Inc., et al., No. CIV 534404, San Mateo County Superior Court (trade secrets)

The Firm is representing RapidMiner, Inc. in a trade secrets and breach of contract matter filed by TIBCO against RapidMiner and several RapidMiner employees.

  • NetApp, Inc. v. Nimble Storage, Inc., et al., No. 5:13-cv-05058, United States District Court, Northern District of California (trade secrets)

The Firm represented employees of Nimble Storage, Inc. in a trade secret and Computer Fraud and Abuse Act action filed by NetApp, Inc.  The Firm’s clients prevailed on motions to dismiss that resulted in the dismissal of several defendants and several claims in state and federal court (41 F. Supp. 3d 816 and 2015 U.S. Dist. LEXIS 11406).

  • Realization Technologies v. Srivistav, et al., No. 113CV253554, Santa Clara County Superior Court (trade secrets and contract)

The Firm represents Realization in a misappropriation of trade secrets action that led to Realization obtaining a stipulated preliminary injunction.

  • The Firm represented a Fortune 50 company in a declaratory relief action by a former employee, and obtained a denial of the Plaintiff’s application for a preliminary injunction. The matter settled soon after the denial of the preliminary injunction.
  • Verigy US Inc. vs. Romi Mayder, No. C07 04330, United States District Court, Northern District of California. The Firm obtained a temporary restraining order (2007 U.S. Dist. LEXIS 102774), preliminary injunction (2008 U.S. Dist. LEXIS 28315), and contempt citation for violation of the temporary restraining order (Order, May 22, 2008) 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 the motion for preliminary injunction (2006 U.S. Dist. LEXIS 52366), obtained summary adjudication of several claims, including misappropriation of trade secrets and false association (2007 U.S. Dist. LEXIS 7810), 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.  The case settled on the eve of trial.

  • NetApp, Inc. v. Baker, et al., No. CIV 524121, San Mateo County Superior Court (trade secrets)

Trademark and Unfair Competition Litigation

We have extensive experience counseling clients on trademark-related Internet and domain name matters that often arise in the digital age. We develop and conduct trademark and trade dress monitoring and policing programs in order to protect our clients’ brands. Our attorneys have conducted extensive protection campaigns against knock-offs and counterfeit products sold over the Internet for major companies. We also handle trademark oppositions and cancellations proceedings before the United States Trademark Trial and Appeal Board (TTAB), and in enforcing and defending trademark, trade dress, dilution, and unfair competition rights in litigation cases brought in various state and federal courts.

Representative matters:

  • Knowledgeplex, Inc. v. Placebase, Inc., No. C08 04267 JF (RS) (2009), United States District Court, Northern District of California (copyright infringement/breach of contract/trademark infringement)
  • America Online, Inc. v. Tribal Voice, Inc., No. 99-20434-JW ENE, Northern District of California (trademark)
  • 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)
  • DVS, Inc. v. C2 Microsystems, No. 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’s claim of breach of the covenant of good faith and fair dealing. The ruling was affirmed on appeal.

Licensing and Transactions

Our attorneys assist clients in maximizing the value of their existing intellectual property and acquiring new intellectual property necessary to enter new markets and technologies.  Our attorneys have established, developed and executed numerous intellectual property licensing and cross-licensing programs that generate revenue from previously untapped intellectual property assets.  We work closely with clients to identify potential intellectual property licensing opportunities and to obtain the best possible results for the client through negotiation.  The Firm 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.