Knobbe Martens Olson & Bear LLP

The firm has an extensive and highly successful appellate practice. Like our litigation practice, our appellate practice extends to all areas of intellectual property law, including appeals involving patents, trademarks, copyrights, rights of publicity, unfair competition, false advertising, and licensing disputes. In some cases, our appellate work is a continuation of the work we peformed for our client in the trial court. However, because of our expertise in appellate practice and intellectual property law, we are often called upon to handle appeals for clients who were represented by other counsel in the trial court.

Our firm's success in appellate practice is founded upon the expertise and experience of our lawyers. Many of our lawyers have served as law clerks to appellate judges with the Court of Appeals for the Federal Circuit, the Court of Appeals for the Ninth Circuit, and other Courts of Appeals. For this reason, these lawyers have great familiarity with the intellectual property precedents of these courts, as well as the intricacies of appellate practice.

Our lawyers also have an extraordinary wealth of experience in representing the firm's clients before appellate courts, often establishing important precedents for our clients and for the nation as a whole. For example, in Lockwood v. American Airlines, 107 F.3d 1565 (Fed. Cir. 1997), we represented the defendant, American Airlines, at both the trial and appellate levels. We obtained rulings on summary judgment that American Airlines had not infringed any of the three asserted patents and that two of the patents were invalid. The Federal Circuit affirmed all of these summary judgment rulings on appeal. In its decision, the Federal Circuit established the standard for satisfying the patent law's written description requirement, a standard which still controls today.

In that same case, we successfully petitioned the Supreme Court to grant certiorari to decide the scope of the constitutional right to a jury trial in patent cases. American Airlines v. Lockwood, 515 U.S. 1121 (1995). The Supreme Court agreed to decide whether a patent owner has a right to a jury trial to determine the validity of his patent when all of his damages claims have been dismissed. After the Supreme Court granted certiorari, the patent owner withdrew his jury demand, and this constitutional issue remains unresolved to this day.

In Flex-Foot, Inc. v. CRP, Inc., 238 F.3d 1362 (Fed. Cir. 2001), we represented the plaintiff and patent owner, Flex-Foot, both in arbitration and on appeal to the Federal Circuit. The Federal Circuit affirmed the arbitrators' finding of infringement and held that the infringer was barred from challenging the validity of Flex-Foot's patent by the terms of a prior settlement agreement between the parties. The Federal Circuit's decision remains the leading case for determining whether a defendant is barred from challenging a patent's validity by its own prior agreements.

In Practice Management Information Corp. v. American Medical Association, 121 F.3d 516 (9th Cir. 1997), we represented a publisher of medical books that sought the right to publish one of the American Medical Association's copyrighted books, a book used by the federal government and nearly all health care providers in the administration of Medicare and related programs. In a landmark decision, the Ninth Circuit held that the American Medical Association had misused its copyright by entering into a contract with the federal government that prohibited the government from using any competing book. The American Medical Association, therefore, was barred from enforcing its copyright. The Ninth Circuit's decision established for the first time the existence of the copyright misuse defense in this Circuit. It remains one of the leading cases on copyright misuse, and one of the very few cases finding that a copyright holder's conduct in fact constituted misuse.

In Mathis v. Spears, 857 F.2d 749 (Fed. Cir. 1988), we obtained a judgment after a bench trial that the plaintiff's patent was unenforceable due to inequitable conduct before the Patent & Trademark Office. The District Court awarded our client its lawyers' fees, expert witness fees, various expenses including travel expenses, and post-judgment interest. The Federal Circuit affirmed all of these rulings and held, in addition, that our client was entitled to pre-judgment interest. The Federal Circuit's decision established for the first time the availability of pre-judgment interest in patent cases, and it remains one of the leading cases on the remedies available to the prevailing party in cases involving inequitable conduct and other exceptional cases.

In Gart v. Logitech, Inc., 254 F.3d 1334 (Fed. Cir. 2001), we represented an individual inventor who had patented an ergonomic computer mouse. After the District Court entered summary judgment of non-infringement against our client, we successfully persuaded the Federal Circuit that the District Court had incorrectly adopted a narrow claim construction. The Federal Circuit vacated the District Court's decision and remanded for further proceedings using the broader claim construction. The Gart decision is now one of the leading Federal Circuit decisions instructing the District Courts not to adopt unduly narrow claim constructions.

In Schering Corp. v. Roussel-UCLAF SA, 104 F.3d 341 (Fed. Cir. 1997), we represented one of two co-owners of a patent. Our client had licensed its patent to a third party, without the permission of the other patent owner. The second patent owner sued our client and its licensee for patent infringement. In a case of first impression, the Federal Circuit held that our client, as a co-owner of the patent, had the unilateral authority to license its patent. The Federal Circuit accordingly affirmed the dismissal of the infringement claims against our client and its licensee.

In addition to these groundbreaking cases, we have represented our clients successfully on appeal in many other matters of great importance to our clients. For example, in a series of cases against various infringers, we represented the inventors of a revolutionary saw for cutting grooves in wet concrete. In each case, we obtained affirmance on appeal of preliminary and permanent injunctions against infringement of our clients' patents, protecting our clients' competitive position and its valuable assets. Chiuminatta Concrete Concepts, Inc. v. Cardinal Industries, Inc., 145 F.3d 1303 (Fed. Cir. 1998); Chiuminatta Concrete Concepts, Inc. v. Target Products, Inc., 19 F.3d 41 (Fed. Cir. 1994).

In Yamaha Motor Company, 124 F.3d 228, 1997 U.S. App. Lexis 26595 (Fed. Cir. 1997), the plaintiff filed suit challenging the validity of several patents owned by our client, Yamaha Motor Company. Yamaha agreed not to sue the plaintiff for infringement of these patents, but the plaintiff insisted that it still wanted to proceed with its suit to invalidate them. We obtained a writ of mandamus from the Federal Circuit directing the District Court to dismiss the plaintiff's claims. Yamaha's agreement not to sue for infringement, the Court of Appeals held, divested the District Court of jurisdiction.

In Rhodes v. Rhodes Music Corp., 35 Fed. Appx. 686 (9th Cir. 2002), the District Court held on summary judgment that the defendants had infringed the plaintiff's trademark rights and violated the plaintiff's right of publicity through the use of the plaintiff's name and likeness. The District Court awarded the plaintiff more than $1 Million in damages and lawyers' fees. We took over representation of the defendant on appeal and obtained a reversal of the District Court's summary judgment ruling, its award of damages, and its award of lawyers' fees.

In Cabinet Vision v. Cabnetware, 230 F.3d 1382, 2000 U.S. App. Lexis 2030 (Fed. Cir. 2000), a jury returned a verdict of patent infringement against the defendant, finding that the defendant's sales of computer software for custom cabinetry designers infringed the plaintiff's patent. We took over representation of the defendant after the jury returned its verdict. We persuaded the District Court to set aside the jury verdict and rule as a matter of law that the plaintiff's patent was invalid in light of the plaintiff's own prior art. On appeal, we successfully obtained affirmance of the invalidity ruling from the Federal Circuit.

In Oakley v. Sunglass Hut International, 316 F.3d 1331 (Fed. Cir. 2003), we represented Oakley, a well-known designer and manufacturer of sunglasses, which had obtained a patent on multi-layer sunglass lenses that create a vivid appearance. One of Oakley's principal competitors was planning to market infringing sunglasses and, just before their release, we obtained a prelimary injunction against the sale of the competing sunglasses. On appeal, the Federal Circuit affirmed the preliminary injunction in its entirety.

In Glaxo Group v. Ranbaxy Pharmaceuticals, 262 F.3d 1333 (Fed. Cir. 2001), we represented a generic drug manufacturer which planned to market an antibiotic. The District Court had entered a preliminary injunction against our client, finding that the antibiotic would infringe the plaintiff's patent. Because of the urgency of bringing our client's antibiotic to the public, we obtained an expedited appeal, arguing our case to the Federal Circuit just four months after the District Court's ruling. We successfully obtained a reversal of the preliminary injunction in its entirety, with the Federal Circuit holding that the plaintiff was unlikely to prove infringement under the correct interpretation of its claims.

In addition to these cases, our lawyers frequently represent clients and public interest groups as amici curiae ("friends of the court") before the Supreme Court, Courts of Appeals, and state courts, in cases of great significance. For example, in the field of patent law, we filed amicus briefs in the Supreme Court's landmark decision in Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), holding that patent claims are construed by the Court as a matter of law, and its landmark decision relating to the scope of the doctrine of equivalents, Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997). We also represented amici curiae before the Supreme Court in Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (1998), which set new standards for the patent law's on-sale bar. In addition, we filed an amicus brief in Cardinal Chemical Co. v. Morton Int'l, Inc., 508 U.S. 883 (1993), a case establishing that claims for a declaration of patent invalidity must be decided by the Federal Circuit, even if the Federal Circuit has concluded that the disputed patent is not infringed. In many of these cases, we also filed amicus briefs before the Federal Circuit.

In the field of copyright law, we participated on behalf of an amicus curiae in the recent case of Eldred v. Ashcroft, 123 S.Ct. 769 (2003), which upheld Congress' extension of the terms of existing copyrights. We also participated on behalf of an amicus curiae before the California Supreme Court in Comedy III Productions, Inc. v. Gary Saderup, Inc., 25 Cal.4th 387 (2001), cert. denied, 534 U.S. 1078 (2002), a landmark right of publicity case setting a new standard for deciding when assertion of the right of publicity is inconsistent with the First Amendment.