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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.
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Professional Profile
Boris Zelkind is a partner in our San Diego office. Mr. Zelkind’s practice focuses on litigation and licensing of intellectual property both in the United States and abroad. He has first-chaired patent infringement and trademark infringement actions in the United States and has conducted and overseen European patent infringement proceedings and nullity actions. He also has negotiated and procured national and international patent licensing programs. Mr. Zelkind has an extensive appellate practice and has presented numerous oral arguments to the United States Court of Appeals for the Federal Circuit as principal counsel of record.
Mr. Zelkind began practicing law at Kinney & Lange, P.A., in Minneapolis, Minnesota where he focused on intellectual property litigation, as well as patent preparation and prosecution in such diverse technologies as biomedical sciences and data communications systems. 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 – present)
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
Cases, Articles, Speeches & Seminars
Articles, Speeches & Seminars
Contributing author, United States Chapter, Trade Secret Protection: A Global Guide, published by Global Law and Business (January 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)
“Overview of Intellectual Property for Business Lawyers”
Presented topic of Patent Litigation (2000)
Presented topic of Trade Secrets Law (1998), (1999)
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)
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.
Professional Memberships
San Diego Intellectual Property Law Association (SDIPLA)
President, 2008
Board of Directors, 2006 – 2010
Federal Circuit Bar Association
Federal Bar Association, San Diego Chapter
American Intellectual Property Law Association (AIPLA)
San Diego County Bar Association
Alumni Member of the Louis M. Welsh American Inn of Court
Barrister 2006-2008
Barrister Member of the J. Clifford Wallace American Inn of Court
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