Robert W. Dickerson

Rob Dickerson, an Intellectual Property partner in Orrick's Los Angeles office, specializes in litigation of intellectual property cases.  Over the past 30 years, he has been first- and second-chair in many evidentiary hearings and judge and jury trials involving patent, trademark, copyright, trade secrets and franchise cases.  He has litigated in state and district courts throughout the United States, including the International Trade Commission and the Trademark Trial and Appeal Board, and he has argued numerous appeals to state and federal appellate courts and state supreme courts.  Rob's patent litigation experience has involved a wide range of technologies, including laser sintering, stereolithography, flashlights, biotechnology, integrated chip design, electronic medical devices, veterinarian products, commercial garment processing, laminated flooring panels, computer switch products, non-volatile memory, business methods, database management and mechanical devices, among many others.  He also has litigated a number of general business litigation matters.  In addition, he is a registered to practice patent law by the United States Patent and Trademark Office, oversees patent and trademark prosecution matters and advises clients on their overall IP portfolios, including national and global IP strategies and licensing programs for patents and trademarks.

In the patent law area, Rob was a founding member of the board of directors for the Association of Patent Law Firms (1999-2001).  He is a contributing author of Proof in Competitive Business Litigation (CEB, 1993) and is a frequent speaker at seminars on intellectual property law.  He has repeatedly been named a "Southern California Super Lawyer" by Law & Politics and the publishers of Los Angeles Magazine, and has been repeatedly listed in various Who's Who Legal publications.  In December 2007, Rob was lead counsel in a pro bono matter that resulted in the largest judgment ever obtained for a Public Counsel pro bono consumer case.  He has acted as a mediator and arbitrator in IP matters and has served as an arbitrator for the Superior Court for the County of Los Angeles.

In the franchise law area, Rob has represented a national distributor of motor vehicles and handled a wide variety of motor vehicle distributor-dealer issues and litigation throughout the country.  He also has represented a motor vehicle industry organization in its opposition to distributor dealer legislation that was introduced in many states.  Rob negotiated on the organization's behalf with dealer groups throughout the country regarding the proposed legislation, as well as the negotiation and drafting of compromise legislation.  Furthermore, he has testified before legislative committees regarding such proposed legislation and its likely impact on distributors, dealers and consumers.

Prior joining Orrick, Rob was managing partner of IP boutique Lyon & Lyon, and head of the IP group in Jones Day's Los Angeles office.  Before attending law school,  Rob worked for Shell Development Corporation in Modesto, California, worked as a cowboy on his father's cattle ranch, and put himself though college playing lead guitar in a rock & roll band.

Experience

3D Systems, Incorporated

• Board of Regents, University of Texas, et. al. v. EOS GmbH Electro Optical Systems.  Represented the University of Texas and its licensee, 3D Systems, in a patent infringement action relating to solid free-form fabrication.
• EOS GmbH Electro Optical Systems v. DTM Corporation, and related cross-actions.  Defending against patent infringement claims asserted by licensee of client (3D Systems) against a corporation it had acquired (DTM Corporation) and one of that company’s customers.

Activision Publishing, Inc.

• Activision Publishing, Inc. v. Tam et al, (C.D. Cal.) Case No. CV-07-00464 PA (Ex).  Represented Activision Publishing, Inc. in a suit against several of its former employees, a former consultant and a competitor of the company who had engaged in a secret plan to set up a competing business to Activision’s phenomenally successful GuitarHero™ video game.

American Honda Motor Co., Inc.

• Represented American Honda in automobile, motorcycle and power equipment franchise sales across the country for more than 15 years.  Cases involved antitrust, RICO, unfair competition, contract and state dealer law issues.

Arelli Alloy Wheels, Inc.

• Group Lotus, PLC v. Arelli Alloy Wheels, Inc. (Trademark Trial and Appeal Board) Opposition No. 91160998.  Represented Arelli in defense of Lotus’ attempt to prevent Arelli’s registration of the trademark ILAN.

AVX Corporation

• AVX Corporation v. Classic Components, (C.D. Cal).  Trademark infringement relating to electrical capacitors.

Bay Area Telecom

• Bay Area Telecom v. Bay Area Cellular Telephone Company, (Superior Court, San Francisco).  Contract dispute regarding cellular phone service.

Belkin Corporation and Belkin International, Inc.

• In the Matter of Certain Switches and Products Containing Same, (International Trade Commission, Inv. No. 337-TA-589).  Represented Belkin against claims of infringement of a patent relating to KVM switches.
• Clear With Computers LLC vs. Belkin et al, (E.D. Tex.) Case No. 6:08-cv-188LED.  Represented Belkin against claims of infringement of a patent relating to a computer-assisted parts sales system.

Bird Barrier of American

• Nixalite v. Bird Barrier of American, (CAFC). Trademark opposition.

Dongtai Huawei Component Corp.

• Penn Engineering & Mfrg Corp. v. Dongtai, (D. Nev.) Case No. 2:07-cv-01505 PMP.  Represented Dongtai against claims of infringement of trademarks.

Envirometics

• Envirometics v. Millipore, (D. Conn). Patent infringement involving the use of a medium to test for the presence or absence of bacteria in a sample (for example, food or water) suspected of bacterial contamination.

Friedman’s Jewelers

• Dedeians v. Friedman's Jewelry Stores, (C.D. Cal.). Copyright case involving jewelry designs.
• Bogarz v. Friedman’s Jewelry Stores, (C.D. Cal.). Copyright case involving jewelry designs.

Fujitsu Ltd and Fujitsu Network Communication

• Fujitsu v. Tellabs, (E.D. Tex). Patent case involving fiber optical networks
• Tellabs v. Fujitsu, (N.D. Ill). Patent case involving fiber optical networks
• Oyster v. Fujitsu (S.D.N.Y).  Patent and trade secret case involving fiber optical networks.

Gen-Probe Incorporated

• CNS v. Gen-Probe, (S.D. Cal.). Ownership rights to patents relating to biotechnology used in medical diagnostic kits.
• University of California v. Gen-Probe and Center for Neurological Studies v. Gen-Probe, (S.D. Cal.). Successful representation of Gen-Probe in patent ownership cases involving genetic probes resulting in complete ownership of probe technology being awarded to Gen-Probe.

Hanzhou Zhongce Rubber Co., Ltd.

• Yokohama Rubber Company v. Hangzhou Zhongce Rubber Co., Ltc. (S.D. Fla) Case No. 08‑210142-CIV-Altonaga. Represented Hangzhou against claims of infringement of a design patent on a tire tread design.

Jesco Imports Inc.

• Jesco v. O’Neill, (Trademark Trial and Appeal Board). Trademark opposition.
• Jesco v. The Hamilton Group, (Superior Court, Los Angeles). Trademark case involving the trademark KEWPIE®.
• Clokey v. Jesco, (Superior Court, Los Angeles). Licensing dispute regarding trademarks and copyrights pertaining to GUMBY® characters.
• Jesco v. Hsu, (Superior Court, LA County). Trademark case involving the trademark KEWPIE®.

Laminated Floor Panels

• In re Certain Laminated Floor Panels (ITC). Patent infringement action involving glueless laminated floor panels.

Levi Strauss & Co.

• Golden Trade S.r.L. vs. Levi Strauss & Co., (Belgium). Patent infringement action involving a method for finishing denim garments.
• Levi Strauss & Co., v. Golden Trade, (D. Del.). Representation of Levi Strauss in patent infringement case regarding fabric finishing technology resulting in settlement of litigation.

Mag Instrument, Inc.

• Mag Instrument v. Nordic Technologies, (C.D. Cal). Patent Infringement action regarding flashlights.
• Mag Instrument v. Gillette, (C.D. Cal). Patent and trademark action regarding flashlights.
• Mag Instrument, Inc. v. Bison Sportslights, Inc. et al., Case No. CV-023187. Represented Mag Instrument in a several-week jury trial concerning trade secret misappropriation and false advertising.
• Mag Instrument, Inc. v. Dollar Tree Stores, Inc. et al., Case No. 03-6215 RSWL (SHx). Represented Mag Instrument in a patent and trademark infringement action related to the Mini Maglite® flashlights.  Mag Instrument won a summary judgment of patent infringement and, on the eve of trial, the parties settled, with the defendants agreeing to the entry of a judgment of infringement against them.

Mentor Corporation

• Mentor Corp. v. NASI (Superior Court, LA County). Breach of contract and trade secret action involving brachytherapy.

Mycogen Corporation

• Mycogen v. Monsanto, Mycogen v. Monsanto II, and Monsanto v. Mycogen, (D. Del.). Successful representation of Mycogen in patent infringement cases regarding transgenic corn and soybean plants.
• DeKalb v. Mycogen, (N.D. Ill.). Successful representation of Mycogen in patent infringement case regarding transgenic corn plants resulting in cross-licensing of technology.

PriceGrabber.com

• PartsRiver, Inc.  v.  PriceGrabber.com., (E.D. Tex.) Case No. 2:07-cv-440DF. Represented PriceGrabber against claims of infringement of a patent relating to a method for executing a guided parametric search.

Reid Mfg. Co.

• Liqui-Box v. Reid Mfg. Co., (N.D. Pa). Design patent infringement involving fluid containers.

SanDisk Corporation

• In the Matter of Certain Flash Memory Controllers, Drives, Memory Cards, and Media Players and Products Containing Same, (International Trade Commission) Inv. No. 337-TA-619. Represented SanDisk asserting patent infringement of patents relating to flash memory devices.

SAS Institute, Inc.

• Diagnostic Systems Corp. v. SAS Institute, (C.D. Cal) Case No. SACV07-9601. Represented SAS against claims of infringement of a patent relating to database management.

Skahill

• Vartazarian v. Skahill, (Superior Court, Los Angeles). Business dispute involving purchase of car wash.

Southland Sod, LLC.

• Southland Sod LLC v. SynLawn (C.D. Cal). Case No. CV-07-3387 VBF. Represented Southland Sod in a case asserting trademark infringement for the trademark MARATHON®.

Span-America Medical Systems

• Span-America Medical Systems v. B.G. Industries, (C.D. Cal). Patent infringement action regarding bed mattresses.

SP Systems, LLC.

• SP Systems, LLC v. HD Hudson Manufacturing Company, (C.D. Cal) Case No. 2:07-cv-02122-DSF-AJW. Represented SP in a case asserting trademark infringement involving the shape, style and overall appearance of the tank portion of a backpack sprayer.
• SP Systems, LLC v. Ledgent, et al (Cal. Sup. Ct.) Case No. BC 371494. Represented SP in a case asserting breach of contract and other related causes of action.
• SP Systems, LLC v. SOLO Inc. (Trademark Trial and Appeal Board). Represented SP in a trademark opposition proceeding involving applications for registration of a trademark in the shape, style and overall appearance of the tank portion of a backpack sprayer.

Spinal Kinetics

• Synthes v. Spinal Kinetics (N.D. Cal). Patent case involving spinal implants.

Stamford Tires and Wheels, Inc.

• Yokohama Rubber Company v. Stamford Tires and Wheels, Inc. (C.D. Cal) Case No. BC 371494. Represented Stamford against claims of infringement of a design patent on a tire tread design.

Vanier Mfg. Co.

• Eldon v. Vanier Mfg. Co., (C.D. Cal). Utility and design patent infringement involving soldering irons and tips.

Strategic IP Counseling

• Animal Supply Incorporated - advise ASI on various patent and trademark matters.
• Anthony E. Zuiker - patent and trademark portfolio prosecution and management.
• Bird Barrier of America, Inc. - patent and trademark portfolio management regarding pest deterrents.
• Doskocil Industries - advise Doskocil on various patent matters.
• Easton Sports - various patent matters involving sporting goods.
• Ecology Controls, Inc. - advise ECI on various patent matters.
• Experian - advise Experian on various patent matters.
• Jack DeLiddo & Associates DBA DEERS - advise DEERS on various patent and trademark matters.
• Jesco - trademark and copyright portfolio prosecution and management; licensing.
• Kingman Group - advise Kingman on various patent and trademark matters.
• Los Angeles Tennis Club - advise LATC on various trademark matters.
• Meggitt PLC and Meggitt-USA, Inc. - advise Meggitt on various intellectual property matters.
• Padmore, LLC - advise Meggitt on various intellectual property matters.
• Southland Sod, LLC - trademark portfolio prosecution and management.
• SP Systems, Inc. - various patent and trademark matters; licensing.
• Stamford Tyres Corporation - advise Stamford on various intellectual property matters.
• Swissmex, Inc. - patent and trademark portfolio prosecution and management.

Admitted in

• California
• United States Patent and Trademark Office

Court Admissions

United States District Court

• Central District of California
• Eastern District of California
• Northern District of California
• Southern District of California
• Eastern District of Michigan
• District of Columbia

United States Court of Appeals

• First Circuit
• Fifth Circuit
• Sixth Circuit
• Ninth Circuit
• Tenth Circuit
• Federal Circuit

United States Court of Federal Claims

Memberships

• Founding Member of the board of directors, Association of Patent Law Firms (1999-2001)
• Member, State Bar of California
• Member, The Federal Circuit Bar Association
• Member, ITC Trial Lawyers Association
• Member, American Intellectual Property Law Association
• Member, Los Angeles Intellectual Property Law Association
• Member, Executive Committee, Intellectual Property and Entertainment Law section of Los Angeles County Bar Association
• Former Member, American Arbitration Association Board of Intellectual Property Neutrals
• Member, Southwestern University Law Review
• Member, Order of Barristers
• Member, Moot Court Honors Program
• Member, Board of Directors, Los Angeles County Bar Foundation

Multimedia

Publications

• "8 Simples Rules for Successful Mediation in IP Cases" Pennsylvania Bar Institute - June 2004
• "Proof in Competitive Business Litigation" (CEB, 1993) (Chapter 9) - 1993

Speeches & Programs

• “Major Changes in Patent Law,” JD University - Los Angeles, California, January 2008
• “Sea Changes in Patent Law, 2006 in Review, 2007 in [P]review” JD IP Symposium - Los Angeles, California, September, 2007
• ACCA-SoCal DoubleHeader Event at Dodger Stadium: Avoid the Warning Track ...Guiding Your Company in Crisis Management and Protecting its IP Assets - Los Angeles, California, September 25, 2007
• “Patent Law for ‘Dummies’” Los Angeles County Bar - Intellectual Property and Entertainment Law Section - Beverly Hills, California, February 2007
• “Real Court vs. Moot Court,” UCLA Moot Court Competition Finals - Los Angeles, California, April 2006
• “Tying Claims, Market Analysis and the Licensing of Intellectual Property,” JD IP Symposium - April 2006
• “How to Avoid the Pitfalls and Start Strong as a New Lawyer,” Los Angles County Bar Association, Barrister’s Section - Los Angeles, California, March 2006
• “The 2005 Patent Reform Act; Long Overdue Overhaul or Unnecessarily Undermining Innovation” - Los Angeles, California, December 2005
• “ADR in Intellectual Property Matters” - Pittsburg, Pennsylvania, June 2004
• “ADR in Intellectual Property Matters” - Philadelphia, Pennsylvania, June 2004
• “The Entertainment Value of Patents, 10 or So Things Every Entertainment Lawyer Ought to Know About Patents” - Los Angeles, California, December 2003
• “IP Considerations for the Start- Up Company” - Los Angeles, California, June 2002