Scott Lonardo

Senior Associate
Intellectual Property

Scott Lonardo focuses his practice on intellectual property litigation and counseling, including in trademark, patent, copyright and trade secret matters. He has experience in federal and state court litigation, trademark registration proceedings before the United States Trademark Trial and Appeal Board, and Uniform Domain Name Dispute Resolution proceedings before international dispute resolution bodies. In addition, Scott’s practice includes developing and implementing trademark enforcement strategies.

Before joining Orrick, Scott served as a law clerk to the Honorable Kathleen M. O'Malley both at the United States Court of Appeals for the Federal Circuit and at the United States District Court for the Northern District of Ohio. He also worked as an associate at a boutique law firm in Chicago, Illinois, with a focus on trademark, copyright and false advertising. A representative sample of his cases includes:

  • Mentor Graphics Corp. v. Synopsys, Inc. et al. (D. Or.) (patent infringement) Scott is part of a team representing Synopsys, Inc., EVE-USA, Inc., and Synopsys Emulation and Verification S.A. in a patent dispute in the hardware emulation segment of the Electronic Design Automation industry.
  • Del Monte International GmbH v. Del Monte Foods, Inc. (C.D. Cal.) (trademark)  Scott is part of a team representing Del Monte Foods, Inc., the primary global owner of the DEL MONTE brand.  Del Monte successfully opposed an application by its licensee to register <.delmonte> as a top-level domain in a proceeding before the World Intellectual Property Organization (WIPO), then successfully moved to dismiss its licensee's lawsuit in U.S. District Court to overturn WIPO's decision.    
  • Bayer HealthCare LLC v. High Tech Health Ltd. (TTAB) (trademark opposition) Scott was on a team representing Bayer HealthCare LLC in an opposition to an application to register ULTRALIEVE for portable ultrasound devices, based on Bayer’s famous ALEVE trademark. Following a successful motion to compel and motion for sanctions, the Trademark Trial and Appeal Board sustained the opposition and refused registration.
  • Tekmira Pharmaceuticals Corp. and Protiva Biotherapeutics, Inc. v. Alnylam Pharmaceuticals, Inc. and Alcana Technologies, Inc. (Mass. state court) (trade secret misappropriation) Scott was part of a team that represented Tekmira in this trade secret misappropriation case against Tekmira’s former collaborator Alnylam in the Business Litigation Section of Massachusetts state court. Tekmira alleged that Alnylam had taken advantage of the collaboration to misappropriate Tekmira’s secret RNAi delivery and manufacturing technology, including by applying for patents on technology developed by Tekmira and by passing off Tekmira's technology as its own. The case settled one week before trial in a settlement the San Francisco Daily Journal described as a "huge win" for Tekmira.
  • World Wide Sales, Inc. v. Church & Dwight Co., Inc. (N.D. Ill.) (trademark infringement) Scott was part of a team that obtained summary judgment in favor of Church & Dwight Co., Inc., owner of the ARM & HAMMER brand, on the plaintiff’s claims that Church & Dwight’s use of the mark FRIDGE FRESH for a refrigerator air filter infringed the trademark “Forever Fresh For The Fridge” for a refrigerator deodorizer.
Scott Lonardo
Select Publications
Admitted In
  • California
  • Illinois
Court Admissions
United States Courts of Appeals
  • Federal Circuit
United States District Court
  • Northern District of California
  • Central District of California
  • Northern District of Illinois

Education
  • B.A., Government, Georgetown University, 1999
  • J.D., cum laude, Georgetown University Law Center, 2005
Clerkships
  • Hon. Kathleen M. O'Malley, United States Court of Appeals for the Federal Circuit (2011-2012)
  • Hon. Kathleen M. O'Malley, United States District Court for the Northern District of Ohio (2005-2007)
Memberships
  • San Francisco Bay Area Intellectual Property Inn of Court

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