- 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
- Computer Hardware, Software and Services
- Electronics and Other Technology
- 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
- 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.
- 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
- 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:
- 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
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.
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.