Fred Berretta

12790 El Camino Real
San Diego, CA 92130
Tel: 858-836-9000
Fax: 858-836-9001
Email:

Legal Areas of Emphasis

Patent Litigation

Trademark and Trade Dress Litigation

Trade Secrets and Unfair Competition Litigation

Appeals

Arbitration/Mediation

Client Counseling

Licensing

Professional Profile

Fred Berretta is a partner in our San Diego office.  He focuses his practice on cases filed in the Southern District of California, and on clients located in San Diego that are litigating in venues throughout the nation, including in Texas, Delaware, New York, Massachusetts, Washington, nad Oregon.

Mr. Berretta has experience in all aspects of intellectual property litigation, including representing plaintiffs and defendants in patent, trademark, and trade secrets disputes in both federal and state courts.  He primarily handles patent infringement cases in many different technology areas, including medical devices, electronics and communications, software, biotechnology and diagnostics, chemicals, semiconductors, and mechanical devices.  Mr. Berretta has experience in both jury and bench trials, as well as appellate work, and has received the highest (AV) rating from Martindale-Hubbell.  Prior to attending law school, Mr. Berretta was a development engineer with Hewlett-Packard Company and is a co-inventor on a patent in the field of ink-jet technology. 

Mr. Berretta joined the firm in 1994 and became a partner in 1998.

Education

Harvard Law School (J.D. 1989) cum laude

Massachusetts Institute of Technology (B.S. Mechanical Engineering 1979, M.S. Mechanical Engineering 1980)

Representative Patent Matters

The Laryngeal Mask Company Ltd., et al. v. Ambu A/S, et al., Civil Action No. 07 CV 1988 (S.D. Cal). Representing plaintiff asserting patent in field of laryngeal mask airway devices, a medical device used to administer anesthesia gases and establish an airway in unconscious patients. Obtained disqualification of initial defense counsel. Published opinion at 2008 WL 558561, 2008 U.S. Dist. Lexis 15320 (S.D. Cal 2008). Case still pending.

Golden Hour Data Systems, Inc. v. emsCharts, Inc., et al., Civil Action No. 06 CV 381 (E.D. Tex.). Obtained $3.5 million jury verdict on behalf of San Diego-based Golden Hour Data Systems in patent case involving computerized integrated data management services for the emergency medical services industry.  Brought case before Judge T. John Ward in the Eastern District of Texas.

American Calcar v. BMW of North America, Civil Action No. 04 CV 0614 (S.D. Cal.) Represented plaintiff asserting multiple patents in the areas of car/driver graphical user interfaces, telematics and navigation systems – defendant took a license under the asserted patents and the case settled before trial.

Raytheon v. Overland Storage, et al., Civil Action No. 03 CV 013 (E.D. Tex.).  Defended manufacturer of mass data storage products against patent infringement claim brought in the Eastern District of Texas (Judge T. John Ward).  After filing summary judgment motion, plaintiff offered full license at nominal cost and case settled.

Hewlett-Packard v. Mustek, Civil Action No. 99 CV 0351 (S.D. Cal.).  Represented defendant against five asserted HP patents in the field of image scanning — obtained complete defense victory after jury trial and appeal.  Published decision at 340 F.3d 1314 (Fed. Cir. 2003).

Flex Products v. Advantage Sealing Systems, Civil Action No. 00 CV 0231 (S.D. Cal.).  Represented plaintiff asserting patents in the field of rubberized asphalt compositions – obtained preliminary injunction that was affirmed on appeal – defendant took a license under the asserted patents.

Farnbach v. Hewlett-Packard, Civil Action No. 99 CV 0884 (S.D. Cal.).  Represented plaintiff inventor asserting patents covering oscilloscope trigger circuits – successfully settled case with defendant taking a license under the asserted patent.

Millennium v. Cardiff Software, Civil Action No. 99 CV 1577 (S.D.N.Y.).  Represented defendant software company against four asserted patents in the field of electronic forms and data entry systems – successfully settled case allowing defendant to continue selling accused products.

Representative Trademark Matters

Eagle Precision Technologies, Inc., et al., v. Eaton Leonard Robolix, Inc., Civil Action No. 03 CV 352 (S.D. Cal.).  Represented defendant in complex contractual trademark dispute over use of the “Eaton Leonard” name and trademark for computer controlled tube bending equipment.  Successfully defended client’s continued use of its name and trademark and favorably settled case.

Creative Labs v. Mad Dog Multimedia, Civil Action No. C02-04575 (N.D. Cal.).  Defended client against motion for temporary restraining order and product recall alleging trademark/trade dress infringement and false advertising in connection with computer sound cards.  Published decision at 66 U.S.P.Q.2d 1625.

Polaris Pool Systems v. Letro Products, Civil Action No. 94 CV 7747 (C.D. Cal.).  Represented plaintiff in jury trial asserting registered trade dress of automatic swimming pool cleaners – obtained infringement verdict against defendant and permanent injunction.

Helix Technology v. Overland Data, Civil Action No. 98 CV 11292 (D. Mass.).  Represented defendant in trademark case involving technical service programs – obtained partial summary judgment against plaintiff – settlement allowed client to continue use of mark.

Yoder Brothers v. GroLink Plant, Civil Action No. 01 CV 2308 (N.D. Ohio).  Represented trademark owner in declaratory judgment action involving asexually reproduced plants – infringer agreed to stop using client’s mark and case settled.

Admissions/Qualifications

State Bar of California

Registered to practice before the U.S. Patent and Trademark Office

All U.S. District Courts for the State of California

U.S. Court of Appeals for the Federal Circuit

U.S. Supreme Court

Professional Memberships & Affiliations

Federal Bar Association (FBA)

Association of Business Trial Lawyers (ABTL)

J. Clifford Wallace Inn of Court

Articles, Speeches & Seminars

“Licensing After MedImmune v. Genentech,” presented to the San Diego Chapter of the Licensing Executives Society, Summer 2007.

“Southern District Rolls Out New Patent Local Rules,” published in the Association of Business Trial Lawyers – San Diego (ABTL) Report, Fall 2006 (with Joe Reisman).

“Enablement Requirements for Computer-Based Systems,” presented to the San Diego Intellectual Property Association, Fall 2005.

“Practical Tips on Enforcing and Defending Patents: Pre-Litigation Matters,” presented at the Intellectual Property Law Annual Summer Conference of the ABA, June 2003.

“Motion Practice in Patent Cases,” presented to the Intellectual Property Law Section of the San Diego County Bar Association, November 2000.

Awards & Honors

In a survey of his peers, Fred Berretta was selected by Super Lawyers magazine in 2007, 2008 and 2009 for Intellectual Property Litigation.