Diana Szego Fassbender has significant experience in a broad array of intellectual property matters, including patent, copyright, and trademark issues.

She has been involved in all phases of litigation, from inception through trial and appeal. Ms. Fassbender has worked closely with other attorneys and client representatives to develop innovative and cost-effective case strategy to help prepare cases for trial or obtain early resolution on favorable terms. Ms. Fassbender has significant experience representing international clients, including particularly businesses and organizations in Asia and Europe.

Ms. Fassbender regularly litigates complex multi-defendant, multi-patent district court infringement actions and Section 337 Investigations in the International Trade Commission, representing clients in the consumer electronics, semiconductor, e-commerce, Internet media, and life sciences industries.  Ms. Fassbender also routinely represents clients in trademark matters, including trademark infringement cases, domain name arbitrations under the Uniform Dispute Resolution Policy, and proceedings before the Trademark Trial and Appeals Board, and provides representation in international trademark prosecution and branding strategy. Ms. Fassbender also works on intellectual property issues surrounding the Internet, such as pursuing actions under the AntiCybersquatting Consumer Protection Act, and drafting terms of use and other similar agreements governing content for website operators. Ms. Fassbender has worked on several copyright, unfair competition, defamation, and contract actions in federal and state trial courts on behalf of clients in the music, entertainment, and sports industries.

  • Ms. Fassbender currently serves as a deputy to Orrick's Women's Initiative, and previously served on the Associates Committee of Orrick's Washington, D.C., office including as co-chair for the 2011 year. Ms. Fassbender also sits on the planning committee for the Successful Women in Intellectual Property events sponsored by the firm, and acted as emcee of the 2011 annual program. Ms. Fassbender joined Orrick's New York office in 2007. While in New York, Ms. Szego served on the Associates Committee for the Children's Aid Society in New York City and helped plan substantive programming by the Copyright Society of the USA.

    Prior to joining Orrick, Ms. Fassbender was an associate in Akerman Senterfitt's Miami office. She served the Miami community on the Board of Directors of the Dade County Bar Association and as a member of the Dade County eMentor program and the Women's Fund of Miami-Dade.

    Ms. Fassbender is on the Board of Directors of Sister Cities Nashville and is a member of the Japan-America Society of Tennessee.

  • Some of her notable matters include:

    Patent

    • Defended Universal Lighting Technologies, Inc., in a patent infringement lawsuit brought by a subsidiary of Acacia Research Corporation, one of the largest patent holding companies, including through a high profile patent appeal. Following a week-long jury trial in the United States District Court for the Northern District of Texas, Orrick helped its client obtain a ruling in favor of Universal Lighting before the en banc United States Court of Appeals for the Federal Circuit, which affirmed and reinstated a January 2013 panel decision that likewise had ruled in favor of Orrick's client and invalidated the asserted patent. See Lighting Ballast Control LLC v. Universal Lighting Technologies, Inc., Case No. 7:09-CV-00029 (N.D.Tex.). The en banc Court of Appeals also addressed the question of the standard to be used in reviewing district court rulings construing patent claims, and reaffirmed its prior holding that patent claim construction should be reviewed de novo on appeal. The Supreme Court subsequently vacated the Federal Circuit’s decision and remanded the case to the Federal Circuit to apply the newly-established clear error standard of review. While the Federal Circuit ultimately affirmed the judgment in favor of the plaintiff, the jury’s damages award was less than 5% of what plaintiff sought and the jury also found that Universal Lighting had not wilfully infringed.  
    • Defended Panasonic Corporation and Panasonic Corporation of North America in a patent infringement suit in the District of Delaware and a related, concurrent patent infringement investigation in the International Trade Commission. The infringement matters were brought by the same non-practicing entity and involved a combined total of seven patents-in-suit relating to graphics, computer processing, and display capabilities asserted against television, monitor, and tablet products.
    • Represented defendant Fujifilm Corporation in two related infringement lawsuits involving digital cameras. Ms. Szego defended fact depositions, was heavily involved in expert discovery, and prepared pretrial disclosures and drafted motions in limine in the district court litigation, and helped prepare arguments in the simultaneous appeal of an earlier litigation involving the same plaintiff and the same asserted patents. On appeal, the Federal Circuit ruled in favor of Fujifilm and reversed the district court's judgment of infringement. See St. Clair Intellectual Property Consultants, Inc. v. Canon et al.; 2009-1052, 2010-1137, -1140 (Fed. Cir.); St. Clair Intellectual Property Consultants, Inc. v. Fujifilm Corporation, et al., C.A. No. 08-373 (D. Del.).
    • Represented a leading global Internet provider and media company in multipatent infringement case. Negotiated and drafted complex settlement arising out of mediation.
    Trademark

    • Regularly provides trademark prosecution and branding advice to emerging companies in the technology sector.
    • Represented international sporting association with respect to the misuse of its trademarks by non-licensed entities. Obtained successful resolution of the matter without the need for litigation.
    • Successfully defended band members in an injunction action over disputed name, including preparing for an evidentiary hearing on an expedited basis in order to allow the band to proceed with a previously planned world concert tour.
    • Drafted complaint on behalf of a global financial services institution over unauthorized use of the client’s mark, and obtained a favorable resolution of litigation for client.

    Copyright

    • Representing automotive components manufacturer in action alleging violations of the Audio Home Recording Act under the Copyright Act.
    • Represented recording companies in copyright infringement actions based on the illegal downloading of copyrighted recordings, including appearing on behalf of the plaintiff record labels in federal hearings.
    • Defended a national television broadcasting station in a work-for-hire copyright dispute over ownership of copyright in actor performances on television program.
    • Represented a state agency in a copyright infringement and work-for-hire dispute with a former employee, including evidentiary proceedings on a request for permanent injunction.
    • Counseled a major industrial designer on issues relating to use of client’s mark by licensees.

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