John Sganga

Representative Matters
Articles
Speeches & Seminars

Representative Matters

JS Products v. Kabo Tool (Fed. Cir.) Invalidated patent on summary judgment for DJ plaintiff by demonstrating that micron level dimensional differences in accused tools retailed at Lowe’s were also inherently present in prior art. Argued successfully to obtain affirmance on appeal.

Kreative Power v. Monoprice, Inc.  (N.D. Cal)  Defended on-line retailer of consumer electronics against claims of infringing utility patent, design patent, and copyright relating to a pyramid-shaped power outlet/surge protector. Obtained summary judgment of invalidity and no infringement within 6 months after complaint was filed, with no need for depositions or claim construction hearing.

Inogen v. Inova  (Fed. Cir.)  Obtained affirmance of PTAB decision in favor of patentability for manufacturer of portable oxygen concentrators used for respiratory therapy.

Bierman v. Toshiba (Cal. Sup. Ct., Marin County)  Obtained summary judgment for accused defendant based on statute of limitations in case alleging trade secret misappropriation and breach of NDA, stemming from alleged confidential disclosure of software used to protect computers in the event of power loss.

John Deks Australia Pty, Ltd. v. Atlas Bolt and Screw Company (N.D. Ohio). Represented defendant in a patent and copyright infringement suit involving construction products in a five-week jury trial. Obtained directed verdict and attorney fee award on the copyright claim, and favorable judgment on the patent claim, which was upheld on appeal to the Court of Appeals for the Federal Circuit, 14 U.S.P.Q. 2d 1077 (Unpublished).

Archive Corp. v. Cipher Data Products, Inc., 12 U.S.P.Q.2d 1464 (C.D. Cal.). Represented accused infringer of patent on a computer tape drive. Successfully opposed two motions for preliminary injunction, even though the patent had been found valid and infringed in prior litigation with a third party. Obtained stay of proceedings to permit hostile takeover of patent owner, which ultimately resolved the lawsuit.

Stillwell Developments, Inc., Sleepsafe Industries, Inc. v. Chen et al., 11 U.S.P.Q.2d 1328 (C.D. Cal.). Defended claims of trade secret misappropriation relating to a portable fire alarm, and related claims of unfair competition, breach of contract and commercial fraud. Brought successful directed verdict motion, which lead to attorneys fees award for successful defense of trade secret claim.

Atari Games Corp. v. Nintendo of America, Inc., (N.D. Cal.). Represented video game manufacturer accused of infringing patents and copyrights in hardware and software used to lock out unlicensed video games. Conducted extensive discovery in Japan. Obtained voluntary dismissal of one patent infringement claim, and participated in three-week jury trial on remaining patent. 

Applied Materials, Inc. v. Advanced Semiconductor Materials of America, Inc. (N.D. Cal.). Represented defendant in post-trial proceedings in patent infringement case relating to semiconductor wafer processing equipment. Successfully obtained a stay of permanent injunction pending appeal with favorable security terms, which were upheld on appeal to Federal Circuit.

The Beam System, Inc. v. Checkpoint Systems, Inc., 42 U.S.P.Q. 2d 1461 (C.D. Cal.). Represented defendant in computer software copyright infringement lawsuit. Obtained a protective order from the court to maintain the confidentiality of client's code. Ultimately, obtained a dismissal of the entire action based upon plaintiff's violation of that court order.

Cook v. Makita USA, Inc., (Cal. Sup. Ct., Riverside). Defended against claims of trade secret misappropriation related to power tool design. Negotiated settlement shortly before trial in which plaintiff dismissed all claims without any compensation from defendant.

Cabinet Vision v. Cabnetware, (S.D. Cal.), aff’d, 2000 U.S. App. LEXIS 2030 (unpublished). Represented defendant in post-trial proceedings patent infringement action relating to computer-aided design software. Initially obtained injunction against patent owner making misrepresentations to potential customers regarding anticipated outcome of lawsuit. Later successfully obtained judgment as a matter of law overturning unfavorable jury verdicts on invalidity.

Yamaha Motor Company, Ltd. Represented personal watercraft manufacturer in a series of patent enforcement actions in both District Court and the United States International Trade Commission relating to a portfolio of dozens of patents. The actions against major competitors were each resolved by license agreement resulting in significant royalties to the client.

Gart v. Logitech, Inc., CV 98-05957 CBM (Mcx) (C.D. Cal.) Represented plaintiff in a patent infringement suit relating to the ergonomic design of computer mice. After a successful appeal regarding claim construction issues, obtained a favorable settlement of the case. Continued enforcement efforts have resulted in several other licenses with mouse manufacturers. Published opinions: 254 F.3d 1334 (Fed. Cir. 2001); 67 USPQ2d 1263 (C.D. Cal. 2003).

Zimmer Inc. v. Nobel Biocare, USA, Inc. Defended dental implant manufacturer in an arbitrated patent infringement dispute. Conducted arbitration through final hearing, obtaining a judgment of no infringement in connection with a patent that six major competitors had previously licensed and paid millions of dollars in royalty payments. Obtained attorney fee award in excess of $2 million.

Nazomi v. HTC (N.D. Cal) Defended mobile phone handset manufacturer in multi-defendant action against two patents relating to Java processing technology, obtained summary judgment of non-infringement on both patents.

University of North Dakota v. James Hardie (D. N.D.) Represented construction products manufacturer in contract dispute regarding ownership of technology relating to fillers used in reinforced concrete products. Obtained preliminary injunction against University filing patents on the technology, and summary judgment that key technology rights were not owned by the University.

Nobel Biocare USA v. Technique D’Usage Sinlab (ED Va) Brought declaratory judgment action against patentee on patents relating to computerized dental surgical planning and CAD/CAM techniques for custom dental prosthetics. Obtained summary judgment of no infringement on all four patents.

Nobel Biocare USA v. Materialise (C.D. Cal) Brought declaratory judgment action against patentee on patent relating to CAD/CAM techniques for designing and rapid prototyping custom surgical templates. Obtained summary judgment of no infringement.

Dr. Paula Small v. Nobel Biocare USA (SDNY) Defended dental implant manufacturer against patentee on two patents relating to dental implant design. Although patents survived re-exam and re-issue, obtained summary judgment of invalidity due to on-sale bar, lack of written description requirement, and re-issue recapture.

Kruse Technology Partnership v. Caterpillar (C.D. Cal) Represented inventor of patent portfolio relating to computerized fuel injection controls to improve fuel efficiency and reduce emissions. Obtained favorable claim construction after 4 day evidentiary hearing, leading to settlement with Caterpillar. Enforced patents against GM, Isuzu, and other major diesel engine manufacturers, including Cummins.

Intamin Ltd. v. Magnetar (Fed. Cir.) Represented accused patent infringer against world’s largest amusement park ride manufacturer regarding patent on eddy-current magnetic braking system. On second appeal, affirmed favorable judgment that patent was unenforceable due to unclean hands. Also obtained attorney fee award.

Acuff v.Custom Control Sensors (AAA arbitration) Represented licensee and manufacturer of aerospace pressure sensing switches in royalty dispute on technology and patent license agreement. Licensor alleged that $11M in back royalties were owed. Obtained award that licensee owed no further royalties and instead was itself owed $7M in overpaid royalties. 

Hansen Beverage Co. v. National Beverage Co. (9^th Cir) In trademark infringement suit, obtained preliminary injunction against competitor of Monster Energy brand energy drink, and successfully enforced settlement agreement on appeal to 9^th Circuit.

Hansen Beverage Co. v. Cytosport (C.D. Cal) In trademark infringement suit, obtained preliminary injunction against competitor of Monster Energy brand energy drink, leading to settlement on eve of trial.

Monster Energy Co. v. HRHH Hotel Casino (JAMS arbitration) Successfully enforced trademark assignment agreement from Hard Rock Hotel relating to REHAB brand, and obtained attorney fee award.

Victoria’s Secret v. Urban Decay (S.D. Ohio) Represented cosmetics company owning trademark rights in NAKED brand against Victoria’s Secret, leading to favorable settlement and Victoria’s Secret discontinuing use of NAKED on cosmetic.

Articles

“Direct Molding Statutes: Potent Weapons, But Are They Constitutional?” Journal of the Patent & Trademark Office Society, Vol. 71, No. 1, 1989.

“Copyright Law, The U.S. Joins The Berne Convention,” Orange County Lawyer, December 1989.

“Legal Protection For Works Of Art,” Orange County Lawyer, March, 1991.

“Building A Winning Paper Trail For Intellectual Property Litigation,” Orange County Business Journal, September, 1991.

“What The Japanese Businessman Should Know About U.S. Copyright Law,” Kaigai Chuzai, May 1992.

“Growing Software Intensive Companies,” ABL Key Observer Report, May 1992.

“A Primer on Patents,” Orange County Business Journal, September 1993.

“The Pitfalls Of Providing Intent-to-Use Trademark Applications As Loan Security,” Los Angeles Daily Journal, February 7, 1997; Orange County Reporter, February 10, 1997.

“Recent Developments In Intellectual Property Law,” 1996 Annual Review of the Business Law Section of the State Bar of California, 1997.

“Swap Talk: Retail-Space Operators and Internet Providers May Be Secondarily Liable for Infringement,” Los Angeles Daily Journal, September 5, 1997.

“Secondary Liability for Copyright and Trademark Infringement: Where Cyberspace and Retail Space Meet,” Orange County Lawyer, March 1998.

“Litigating Obviousness: A New Approach for Using Expert Witnesses,” Journal of the Patent and Trademark Office Society, Vol. 81, No. 3, March 1999.

“Ch. 11 – Pretrial Proceedings,” co-author with Don W. Martens, Patent Litigation, Edited by Laurence H. Pretty, PLI Press, 2000.

“Pre-Litigation Patent Enforcement,” Thomson-Reuters, co-author with Don Martens, 2008-2013.

Speeches & Seminars

"IP Year in Review," CLE Wrap-Up: Substance Abuse, Elimination of Bias & the IP Year in Review, Knobbe Martens Hosted CLE Seminar (January 7, 2016)

"The Practitioner’s Perspective: The Effect of Patent Non-Practicing Entities on Industry," Trolls or Toll-Takers: Do Intellectual Property Non-Practicing Entities Add Value to Society? 2015 Chapman Law Review Symposium, Orange, CA (January 30, 2015)

Program Chair, The Third Annual Technology Seminar – Program Chair for Using Technology in Trials Today: What is a Must and What is a Bust, The Orange County Bar Association Masers Division, Irvine, CA (November 18, 2014)

"Woke Up This Morning – My Patent’s Gone: Recent Pro-Accused Infringer Trends in Patent Law," 2014 ACC-SoCal Double Header, Anaheim, CA (August 28, 2014)

“Best Practices and Trends in U.S. Patent Litigation and Prosecution,” US Litigation and Patent Prosecution Seminar, Osaka, Japan (July 11, 2014)

“Best Practices and Trends in U.S. Patent Prosecution,” US Patent Prosecution Seminar, Tokyo, Japan (July 8, 2014)

“Trends in U.S. Patent Litigation: Pro-Accused Infringer,” US Litigation Seminar, Tokyo, Japan (July 7, 2014).

Chapman University School of Law, Adjunct Professor 2013-2014, “Patent Litigation”

ACC-SoCal Double Header, “What to do in the First 30 Days of an IP Suit” (April 2013)

JAMS “Recent Trends in Intellectual Property Litigation”, roundtable participant (July 2006)

“Rule 11 in Patent Cases,” Intellectual Property/Technology Law Section Meeting, Orange County Bar Association (March 2006)

Los Angeles Intellectual Property Lawyers Association, Annual Seminar, “One Year Down the Road: Claim Construction Post-Phillips” (May 2006)

USC Gould School of Law, 2005 Intellectual Property Institute, “You’ve Been Sued for Patent Infringement – Now What?” (May 2005)

“ADR in Intellectual Property Cases,” Orange County Patent Law Association (March 2005)

Intellectual Property Owners Association (I.P.O.), “Drafting ADR Clauses – Lessons From the Battlefield,” Washington D.C. (November 2004)

Chapman University School of Law 3rd Annual Preview of the Supreme Court: “An Update of Intellectual Property Law,” Phillips v. AWH Corp (October 2004)

“Timing Summary Judgment in Federal Court,” Orange County Barristers (September 2004)

“Fundamentals of Business Practices Litigation,” Continuing Education of the Bar (CEB), Costa Mesa, (September 2000)

Entrepreneurs Conference, Harvard Business School Association of Orange County, “Intellectual Property Protection for the Internet,” Irvine (May 2000)

William P. Gray Legion Lex Inn of Court, “Everything You Wanted to Know About Motion Practice,” Costa Mesa (May 2000)

Lead defense counsel in patent infringement case, Costa Mesa, Whittier College School of Law, Mock Trial presentation (February 2004, 2005, 2006)

Lead defense counsel in trade secrets case, Costa Mesa, Whittier College School of Law, Mock Trial presentation (February 2003)

Mr. Sganga has also lectured on Intellectual Property Law issues for Orange County Patent Law Association, Orange County Barristers, Orange County Barristers, SO/CAL/TEN (Southern California Technology Executives Network), Practicing Law Institute (PLI), and Continuing Education of the Bar (CEB).