Representative Experience

• Perfect 10 v. Giganews, et al.: Represented Giganews in the Central District of California in a high-profile copyright infringement case, prevailing on summary judgment on both direct and indirect copyright infringement, and fees and costs award of over $5.6M.
• The Clorox Company v. AlEn USA: Represented AlEn in a trademark and unfair competition dispute in the ITC and federal courts that resulted in a global settlement of claims.
• San Bernabe Vineyards v. Pacific Gas and Electric Company, et al.: Represented San Bernabe Vineyards (part of Delicato Family Vineyards) in a tort action involving damages in the millions to SBV’s grape vines. After establishing the entitlement to monetary discovery sanctions against PG&E and thwarting a last-minute attempt to continue the trial date, SBV reached a successful settlement.
• Innospan v. Intuit, et al.: Represented Intuit and Mint Software in the Northern District of California in a dispute involving trademark and copyright infringement, successfully opposing plaintiff’s motion for preliminary injunction and attempt to expand the litigation to sue current and former employees of Intuit for vicarious trademark and copyright liability. After establishing that plaintiff had engaged in serious discovery noncompliance and misconduct, the court ordered a forensic collection and production of documents, and imposed witness preclusion sanctions and significant monetary sanctions (one of the highest awards in recent California history). The court later dismissed the action for plaintiff’s failure to pay sanctions and other violations of court orders, which the Ninth Circuit affirmed on appeal.
• Actuate v. International Business Machines, et al.: Represented Actuate in the Northern District of California in a dispute involving breach of license, fraud and copyright claims against IBM in connection with IBM’s unauthorized distribution of Actuate’s software.
• ActivIdentity v. Intercede: Represented Intercede in this patent litigation matter in the Northern District of California involving smart card technology, bringing counterclaims for fraud, unfair competition, and antitrust violations in connection with a technology standards body. After coordinating an innovative “second front“ declaratory judgment action in the United Kingdom, which exposed Plaintiff to payment of Intercedes attorneys fees, the matter settled.

Furthermore, Joseph represented Asyst Technologies in trial in the patent lawsuit Asyst Technologies v. Empak, where the jury found Asyst’s patent valid and infringed, and awarded Asyst $74.7 million in damages for lost sales and price erosion.

Joseph was also significantly involved in the district court and court of appeals phases of Leegin Creative Leather Products, Inc. v. PSKS, Inc., Leegin’s successful effort to overturn the long-standing per se rule against vertical price agreements, which the U.S. Supreme Court decided in 2007–551 U.S. 877 (2007).

Joseph worked at Synopsys on secondment, handling a variety of IP and general litigation matters.

In addition, Joseph spent a one year on secondment in London with the IP litigation group at Allen & Overy, a leading global law firm with whom Fenwick has a strategic relationship. Working with A&O’s attorneys and clients throughout the world, Joseph gained substantial experience regarding IP and litigation matters in the UK and Europe, including the following:

• Represented Assa Abloy AB and Aontec Teoranta in a patent dispute against Smartrac N.V. involving infringement and nullity actions in Germany, the UK and Ireland, as well as an action in Delaware where Smartrac sought an order enjoining all of the invalidity actions based on assignor estoppel under U.S. law. Assa Abloy and Aontec successfully fought Smartrac’s motion to stay the UK patent action based on the U.S. action and estoppel arguments, and the parties reached a global settlement of all litigation.
• Represented Nexon, an online game developer, in a worldwide IP rights enforcement action against infringers who set up and played infringing versions of Nexon’s massive multiplayer online role-playing game on free servers.
• Advised a European company on the risks of U.S. litigation arising out of a former business relationship and a plan to directly sell products into the U.S. market, including possible contract, tort and IP claims.
• Represented an international company in connection with the acquisition of IP rights, analysis of competitors’ IP rights and advice regarding licensing relationships.
• Advised an international company in connection with a UK government agency recommendation regarding advertising claims.

Representative Clients

• Actuate
• Amazon.com
• Asyst Technologies
• Giganews
• Hewlett-Packard
• Intercede
• Intuit
• SAP SE