Boris Zelkind

Attorney User

boris.zelkind

Education

DePaul University - College of Law

1994

J.D.

Aerospace Engineering & Mechanics

University of Minnesota

1991

B.S.

Awards & Honors

Mr. Zelkind has received multiple awards and has been honored for his legal accomplishments:

Selected for inclusion in the San Diego Super Lawyers list from 2009 to 2016, and was recognized for his work in intellectual property litigation.
Selected by his peers for inclusion in the 2014 - 2016 editions of The Best Lawyers in America®. He was recognized for his work in Copyright Law.
Named as a “Super Lawyer” in intellectual property litigation published in the Southern California Super Lawyers magazine (2009 - 2016).
Selected to the January 2010 Corporate Counsel edition of Super Lawyers in the area of intellectual property litigation.
Named to the San Diego Daily Transcript's 2011, 2012, and 2014 "Top Attorney" lists in the area of Intellectual Property Litigation.

Telephone

858-707-4000

Office Location(s)

San Diego

Professional Profile

Boris Zelkind is a partner in our San Diego office. Mr. Zelkind’s practice focuses on intellectual property litigation, including patent infringement, trade secrets, trademark, copyrights and unfair competition cases.

For more than 20 years, Mr. Zelkind has represented clients in federal courts and jury trials throughout the United States and in European patent proceedings. He has litigated numerous trade secret misappropriation cases and advises clients on best practices for protecting and maintaining trade secrets. Mr. Zelkind has been on the forefront of the new federal trade secrets legislation. Mr. Zelkind also has an extensive appellate practice and has presented numerous oral arguments to the Federal Circuit Court of Appeals.

Mr. Zelkind handles matters in a variety of technology areas, including software, medical device, consumer products, video compression, telecommunications, commercial diving equipment, solar energy, home automation systems, and cycling technology. He lectures frequently on intellectual property litigation subjects and is a Lawyer Representative to the United States District Court of Southern District of California.

Mr. Zelkind began practicing law in Minneapolis, Minnesota where he focused on intellectual property litigation, as well as patent preparation and prosecution. Prior to joining the firm in 2005, Mr. Zelkind practiced law as a founding member of Zelkind & Shackelford LLP. He became partner in 2008.

Additional Information

Teaching/Adjunct Professor

University of California San Diego, Extension

Principles of Patent Law (Fall 2007 – 2014)

Guest lecturer at Thomas Jefferson School of Law

Principles of Patent Law (Fall 2006, Fall 2007, Fall 2008)

Language Proficiency

Fluent in Russian

Specializing In

Litigation

Appellate Practice and the Federal Circuit

Arbitration and Other ADR

Consumer Electronics Litigation

Medical Device Litigation

Nationwide Litigation

Trade Secret Litigation

Trademark and Unfair Competition Litigation

Trials

TTAB Proceedings

Cases, Articles, Speeches & Seminars

Articles

Trade Secret Bill Boosts Protection, EE Times (April 28, 2016) (author)

United States Chapter, Trade Secret Protection: A Global Guide, published by Global Law and Business (January 2016) (contributing author)

Recent Trends and Developments in Trade Secret Litigation, Minnesota Institute Legal Education, Intellectual Property Litigation Course (1999) (co-author)

Intellectual Property for Business Lawyers, West Group (1996) (co-author)

Distinctive Characteristics of Excel VR Rate Adaptive Pacemaker with an Innovative Activity Sensor, 1990, Vol. 13, No. 9, Pacing And Clinical Electrophysiology (co-author)

Speeches & Seminars

"The Current State of Trade Secret Law and How the New Federal Statute Will Shape the Landscape," Presenter at a San Diego Intellectual Property Law Association meeting (May 19, 2016)

"Recent Trends in Obviousness," Moderator of the ACC-SD Intellectual Property Roundtable (October 15, 2013)

"Developing Your Initial Patent Litigation Case Strategy," Presenter at Knobbe Martens' IP Impact 2011 Seminar hosted in San Diego (August 15, 2011)

"Recent Developments in US Patent Law and Practice," Presenter at the TECH IP 2011 Seminar in Auckland, Sidney and Melbourne (March 14-17, 2011)

"CPA Expert Witnesses - What Attorneys Expect," Presenter at the CalCPA seminar (July 22, 2010)

"2010 Amendments to the Federal Rules of Civil Procedure" (January 26, 2010)

"ebayv. MercExchange and Other Developments in the Supreme Court,” Presenter and moderator of ACCA’s IP Practice Group Roundtable (June 2006)

“How To Present a Successful Appeal to the Federal Circuit," Presenter at the 2006 Joint OCPLA/SDIPLA Meeting, La Costa Resort and Spa (March 24-26, 2006)

“Claim Construction in Light of Phillips and Other Developments at the Federal Circuit,” Presenter and moderator of ACCA’s IP Practice Group Roundtable (March 2006)

Representative Matters

Bern Unlimited v. Dye Precision, Inc., et al. (2013). Defended trademark infringement, trademark dilution and unfair competition action in the District of Massachusetts (Boston) in multi-defendant case regarding alleged product configuration trade dress for helmets for use in action sports. Achieved favorable settlement for client.

I-Flow Corporation. v. Apex Medical Technologies, Inc., et al., 07cv1200 DMS (NLS) (S.D. Cal.) Representing patent holder, I-Flow Corp. in a patent infringement, trade secret misappropriation and unfair competition action from complaint through trial and a favorable jury verdict.

99¢ Only Stores v. 99¢ Plus Discount Store, et. al., C 07-6395 CRB (N.D. Cal.) After obtaining judgment against defendants for trademark infringement, initiated contempt proceedings on behalf of client 99¢ Only Stores, which resulted in a favorable settlement including payment of monetary damages.

Automobile Club of Southern California v. The Auto Club, Inc., CV-05-3940 (C.D. Cal.) Represented Automobile Club of Southern California and obtained summary judgment that Defendant committed acts of unfair competition. On the eve of trial, obtained a consent judgment with respect the remainder of the causes of action in the client’s favor.

Sorensen v. ITC (and Mercedes-Benz USA, LLC, Intervenor), 427 F.3d 1375 (Fed. Cir. 2005). Argued appeal to the Federal Circuit on behalf of Appellant Sorensen and obtained a reversal of the ITC’s claim construction and finding of non-infringement. Subsequent to the successful appeal, obtained a favorable settlement for the client.

Sephra LLC v. Buffet Enhancements International, Inc.,, 06 CV 2452 (S.D. Cal.) Obtained a favorable settlement for patentee, Sephra LLC.

American Cal Car, Inc. v. BMW of North America, LLC, 04 CV 0614 (S.D. Cal.) Represented American Cal Car, Inc. against BMW, and on the eve of trial, obtained a favorable settlement for patentee.

Sephra LLC v. Jarden Corp., 06 CV 0836 (S.D. Cal.) Obtained a favorable settlement for patentee, Sephra LLC.

Sephra LLC v. The Helman Group, Ltd., 06 CV 0385 (S.D. Cal.) Obtained a favorable settlement for patentee, Sephra LLC.

Express, LLC v. Fetish Group, Inc., CV 05-2931 (C.D. Cal.) Obtained summary judgment of copyright infringement for DJ defendant Fetish Group, Inc. and summary judgment defeating the other sides counterclaims.

99¢ Only Stores v. Best Bargain, CV 06-967 RMT (C.D. Cal.) Obtained judgment in favor of Plaintiff 99¢ Only Stores, enjoining defendant from infringing plaintiff’s family of trademarks.

Patterson Fan Co. v. Romla Co., Civil Action No. 3:05 CV-1843 (D. S.Car.) Obtained dismissal of action for lack of personal jurisdiction.

99¢ Only Stores v. Allen’s 99¢ et a, (S.D. Cal. 2004). Representing 99¢ Only Stores, obtained a TRO and preliminary injunction to prevent the defendant from infringing plaintiff’s trademarks. After obtaining preliminary relief, obtained a favorable settlement that included a consent judgment in client’s favor.

Turn-Key-Tech, LLC v. Toyota Motor Co., et al., 01 CV 2157 (S.D. Cal.) Obtained a favorable settlement for patentee.

Turn-Key-Tech, LLC v. Kia Motors Corp., et al., 01 CV 1885 (S.D. Cal.) Obtained a favorable settlement for patentee.

Turn-Key-Tech, LLC v. Hyundai Motor Co. Ltd, et al., 01 CV 1884 (S.D. Cal.) Obtained a favorable settlement for patentee.

Turn-Key-Tech, LLC v. Honda Motor Co. Ltd, et al., 01 CV 2155 (S.D. Cal.) Obtained a favorable settlement for patentee.

Turn-Key-Tech, LLC v. Mitsubishi Motors, et al., 01 CV 2156 (S.D. Cal.) Obtained a favorable settlement for patentee.

Koito Manufacturing Inc. v. Turn-Key-Tech, LLC, 381 F.3d 1142 (Fed. Cir. 2004) Represented patentee Turn-Key-Tech, including arguing the appeal before the Federal Circuit, which resulted in a modification of the claim construction and a subsequent favorable settlement for the patentee.

On Command Video v. LodgeNet Entertainment Systems (C.D. Cal. 1996). After a favorable claim construction and avoiding summary judgment of infringement, obtained a favorable settlement for defendant saving over $100 million in asserted patent infringement damages.