Gregory Byron Wood

Gregory Byron Wood

Gregory Byron Wood

Experience

  • Patent, trademark and copyright infringement
  • Trade secret misappropriation
  • Publicity rights
  • Numerous court and jury trials and appeals
  • Electronic discovery
  • Architectural Copyright protection
  • Appellate practice
  • Copyright and trademark anti-counterfeiting
  • Arbitration and mediation
  • Import issues related to IP rights and U.S. Customs
  • ITC proceedings

Industries

  • Computer Hardware, Software and Services
  • Electronics and Other Technology
  • Telecommunications
  • Non-Profit Organizations
  • Energy and Utilities
  • Consumer Products
  • Leisure and Entertainment
  • Publishing and Media

Current Employer-Title:   Self-employed – Neutral Arbitrator, Mediator, Settlement Counsel
Profession:   Attorney and ADR Neutral

Work History:

  • Arbitration and Dispute Resolution Neutral, 1991-present;
  • Part time General Counsel, AuriQ Systems Inc., 2011-2015.
  • Retired Partner, Fulbright & Jaworski, LLP 2002-2010;
  • Partner, Oppenheimer Wolff & Donnelly 1999-2002;
  • Partner, Merchant & Gould 1992-1999;
  • Partner Nilsson Robbins, Dalgarn, Carson & Wurst 1977-1992;
  • Patent Counsel Hughes Aircraft 1975-1977;
  • Adjunct Professor Southwestern Law School, Loyola Law School and Masters College
  • Professional Control Systems Engineer, Hughes Aircraft, 1969-1977.

Experience Overview:

  • Neutral: Arbitrator, mediator, settlement counsel, entrepreneur coaching over broad range of commercial, personal injury, consumer real estate, employment, professional fee agreements and corporate governance.
  • Commercial Trial Attorney: Unfair competition; contracts; intellectual property including patent, copyright, trademarks; entertainment; trade secret litigation; Markman (claim construction hearings; RICO; FRCP Rule 11 Sanctions proceedings.
  • Commercial Transactions: IP and technology licensing; patent pools; RAND licensing; trade secrets; publicity rights; domain names; trademark; copyrights; distribution; supply; manufacturing; R&D; product endorsement; agency agreements, real estate transactions and broker agreements regarding business and real estate sales; international trade and enforcement of rights; architectural rights in commercial structures; insurance coverage issues arising out of advertising injury coverage.
  • International: Ongoing engagement with foreign counsel in connection numerous countries in connection with the filing and foreign prosecution of patent and trademark registration applications; US Customs and foreign importation matters including seizure of counterfeit products; foreign grey market importation matters; discovery in Japanese courts; depositions in Europe (primarily Germany) in connect with US litigation; service of process under the Hague Convention; assist Holland company in the assignment of international patent rights and the enforcement of those rights; managed patent enforcement and patent validity litigation in Germany; negotiated and drafted numerous international patent and trademark license agreements and foreign territory product distribution agreements; managed Polish counsel in legal matters conducted in Poland; interacted UK engineers, inventors and legal counsel in connection with prosecution of hip transplant
  • invention; represented client in international arbitration matter between Japan and US related to copyright license agreements; enforcement of judgments in foreign countries; represented Italian client in litigation regarding a weaving product including pursuing litigation in Italy regarding same; represented Swiss company in connection with product development and IP protection; Represented client in connection with commercial agreement with Mexico company; specific countries include Eurasia, Saudi Arabia, Iran, Iraq, Holland, Poland, Germany, Switzerland, Italy, Mexico, Japan, South Korea, Australia, China among others.
  • Employment: Consultant agreements, employee and employer non-compete, employee IP ownership rights, confidentiality, employment agreements.
  • Corporate: Non-profit board governance, executive compensation, audit committee duties and independence, conflict of interest reporting and obligations of board members, regulatory financial reporting; merger and acquisition due diligence matters.
  • Government and Regulatory: Proceedings before the ITC, U.S. Customs, U.S. Patent Office – patent prosecution and board of appeals matters – U.S. Bankruptcy Court, Department of Justice patent pool matters; ESI discovery disputes.
  • Insurance: GCL advertising injury, duty to defend, reservation of rights, personal injury insurance coverage.
  • Appellate: CAFC, 9th Circuit, 5th Circuit, and California Appellate.
  • Electronic Discovery: ESI management and discovery numerous speaking engagements on the topic; actively participated in eDiscovery matters; published numerous articles including Sedona Conference White Papers on eDiscovery

Representative Matters:

  • Commercial Litigation: (Contracts) creation, ownership and transfer of IP rights; manufacturing, software development, business and real estate broker, landlord / tenant agreements. (Trademark) trademark ownership; publicity rights; rights in iPhone app; celebrity publicity rights and trademark rights in architectural works; product counterfeit matters.  (Patents) infringement, ownership, patent marking and damages matters in electronics, consumer products, computer, telecommunications, medical device, oil field systems, electronic components, electro optical systems; design patent infringement; reexamination proceedings; Patent Board of Appeals; patent pools; claim construction (Markman) hearings. (Copyrights) unauthorized use of urban art in major motion picture; software copyright infringement; architectural copyright rights; fabric design copyrights; sound recordings. (Trade Secret – Unfair Competition) misappropriation of smart ID card technology including e-discovery disputes and spoliation, large scale memory technology, intraocular lens, customer lists, domain name disputes.
  • Commercial Transactional: Agreements related to employment; non-disclosure; consulting; development; import-export; distribution; publicity rights; IP licensing; business broker agreements; product endorsement.
  • Employment / Labor: Non-compete agreements; employer limitations of rights to employee inventions; work for hire agreements.
  • Insurance: GCL coverage and duty to defend (advertising injury coverage); General liability and personal injury coverage.
  • Corporate & Non-Profits: Governance; audit committee and independence; board disclosure of conflicts; board-management relations; compensation committee standards and obligations; M&A due diligence.
  • Government and Regulatory: DOJ patent pool and essential patents matters; patent, trademark and copyright registration and prosecution; U.S. Customs and counterfeit product exclusion; foreign patent and trademark registration and prosecution.

Alternative Dispute Resolution Experience:

  • Panels
  • Member of the AAA’s Commercial Arbitration Panel.
  • Member ICDR panel.
  • Member of USDC Central District ADR Panel;
  • LACBA Fee Arbitration Panel;
  • Agency for Dispute Resolution Panel;
  • LA Superior Court ADR Panel.
  • California Department of Insurance Mediation Panel

Arbitrations

Served as sole arbitrator, panelist and panel chair in 50+ commercial arbitration matters. Recent matters include patent litigation; numerous patent fee disputes; Software license agreement matter; consumer education contract matter; software development contract to develop App for Android platform; business agent agreement in sale of business; agreement related to unpermitted property improvements; post judgment marriage dissolution matter; panel chair regarding TV rights asset purchase; panel chair in matter of copyrighted jewelry designs; panel chair in fee dispute regarding attorney services.

Mediations

Mediated approximately 250 matters. Recent matters include ownership interests in screenplay; trademark infringement; patent infringement matter related to environment protection product; contract and trade secret misappropriation matter related to international manufacturing of electronic component parts; matter related to electronic smoking pipe; matter related to optical particle counter; contract matter  regarding reverse engineering and trade secret misappropriation; matter related to sale of educational material; matter regarding inventor claim of patent ownership; dispute related to agricultural product; dispute related to commercial rights in article of clothing; numerous personal injury and consumer matters.

Professional Activities And Memberships:

American Bar Association (IP, Litigation and ADR Sections); Los Angeles County Bar Association; Los Angeles Intellectual Property Law Association;

Association Of Business Trial Lawyers; Sedona Conference Working Group On Electronic Discovery And Privacy, Confidentiality And Public Access.

Corporate and Commercial, Employment, Insurance and Reinsurance, International Arbitration, Mining

U.S. Supreme Court; Supreme Court, California; Ninth Circuit Court of Appeals; Fifth Circuit Court of Appeals; Court of Appeals of the Federal Circuits; U.S. District Court (California Central, Southern, Northern, Eastern, Wisconsin Eastern District, Nebraska), U.S. Patent Office.

2014 – Advanced Mediation Training, Pepperdine University School of Law
2010 – Certificate in Dispute Resolution, Pepperdine University School of Law;
1984 – National Institute for Trial Advocacy;
1978 – Advanced Copyright Law, USC;
1975 – J.D. (honors) University of La Verne College of Law;
1971 – M.S., Control Systems Engineering, UCLA;
1967 – B.S., Electronic Engineering, UCLA.

English
Los Angeles

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