Diana M. Rutowski

Partner

Silicon Valley

Diana has always loved complex puzzles – studying each piece until the solution emerges. She applies that same determined curiosity to her IP practice. After carefully listening to each client, Diana examines every legal, business, and human element, arranging disparate pieces into elegant solutions. With Diana as their advocate, her clients can confidently develop and expand their IP strategy and portfolios.

As a seasoned IP litigator and counselor, Diana’s practice has run the gamut from high stakes trials, to take-down and anti-counterfeiting campaigns, to employee departure and trade secret investigations. She represents clients in District and state courts and before administrative bodies including the ITC and the USPTO. For example, Diana tried and won a complex case in which the other side sought to extend the monopoly of an expired utility patent by claiming trade dress rights in a technical product feature. Drawing upon experience handling both complex patent and trademark matters, her team successfully argued that the intersection of patent and trademark policy prevented the other side from continuing its monopoly, clearing the way for her client to enter the market. With Diana at their side, companies can rest assured that their essential assets are protected, from their core technologies, to assets including their company name, logo, and website.

While at Orrick, Diana was seconded to the City and County of San Francisco, where she had the privilege to serve as an Assistant District Attorney, and first-chair several trials. She was also seconded to Salesforce, where she learned first-hand that the law comprises just one component of a company’s overall business strategy.

Diana is also passionate about her pro bono work. For example, she represented two detainees in Guantanamo in connection with their petitions for a writ of habeas corpus, and she is currently working with the Lawyers’ Committee for Civil Rights of the San Francisco Bay Area. Before joining the firm, Diana worked for the Legal Aid of Cambodia where she assisted with the prosecution of former Khmer Rouge officials and represented individuals who sought to reclaim land rights.

Diana is a member of the International Trademark Association, of ChIPs: Advancing Women in IP and of the Harvard Club of San Francisco.

    • C5 Medical Werks/CoorsTek Medical v. CeramTec GmbH. When manufacturer CeramTec tried to block CoorsTek Medical from using the color pink for its ceramic hip replacement products, we rose to CoorsTek’s defense. Claiming trade dress rights in the color pink, a byproduct of the chromium oxide used in CoorsTek’s manufacturing process, CeramTec sued C5 in France and Germany and threatened to file actions in other jurisdictions including the United States. Rather than wait until CeramTec filed its lawsuit in the United States, C5 took initiative to file a complaint seeking a declaratory judgment of non-infringement in Federal District Court in Denver. Following a 13-day bench trial in district court, the team won CoorsTek the right to make, offer and sell its pink ceramic hip components in the United States. Moreover, this precedential ruling confirmed that a color that is the natural result of a functional attribute described in an expired patent cannot serve as trade dress. Orrick now represents CoorsTek before the TTAB.
    • BBAM Aircraft Management LP v. Babcock & Brown LLC et al. We represent BBAM (Babcock & Brown Aircraft Management), the third-largest manager of leased commercial jets in the world, in a trademark infringement litigation against four defendants who started using Babcock & Brown trademarks to which BBAM claims ownership rights.
    • Nreal Technology v. Epic Games. We represented Nreal, an award-winning start-up that develops ready-to-wear mixed reality glasses, in District Court and trademark opposition proceedings against by Epic Games in which Epic was challenging the NREAL trademark. Epic Games alleged that the NREAL mark is confusingly similar to its alleged UNREAL trademark.
    • Magic Leap v. Nreal Technology. Diana and an Orrick team defended Nreal, and its CEO Chi Xu, against Magic Leap, a prominent augmented-reality headset maker. Magic Leap filed suit in the Northern District of California alleging that Xu, a former Magic Leap employee, took confidential designs belonging to Magic Leap and used them to form Nreal. We challenged the pleading with a thorough motion to dismiss, attacking the underlying legal theories as well as the sufficiency of Magic Leap’s allegations. The Court granted our motion and dismissed Magic Leap’s complaint in its entirety.
    • Tekmira Pharmaceuticals Corp. v. Alnylam Pharmaceuticals, Inc. We secured a significant victory for client by helping obtain a US$75 million cash settlement in a multi-country patent, licensing and trade secrets dispute involving RNAi delivery technology and manufacturing. Tekmira also obtained assignment of approximately 150 of Alnylam patents and patent applications and will receive milestones and royalties for Alnylam products incorporating Tekmira's technology. Alnylam also agreed to dismiss counter-suits for patent infringement that it had filed in Massachusetts and Canada. The San Francisco Daily Journal described the settlement as a “huge win” for Tekmira. See R. Swan, “Orrick Nabs Win for Pharmaceutical Client.”
    • Williams-Sonoma, Inc. v. Amazon, Inc. Diana and an Orrick team successfully represented Williams-Sonoma (WSI) in a highly contentious battle against Amazon for multiple IP infringement claims including design patent and trademark infringement, dilution, false advertising and unfair competition relating to Amazon’s knockoff of WSI’s West Elm furniture designs; its misleading use of the registered WILLIAMS SONOMA service mark; and for copyright infringement in connection with Amazon’s selection and publication of WSI’s copyrighted product photos.
    • AGNC v. Bosch. We represented Bosch in a five-patent case filed by American GNC involving MEMS sensors and related technologies.
    • Novitaz, Inc. v. Shopkick, Inc. We represented Shopkick in a two-patent case involving retail and shopping applications and technologies.
    • Wilbur-Ellis Company. We represented Wilbur-Ellis in a patent infringement suit in the Northern District of California involving plant fertilizer technology. The Orrick team successfully defeated a motion for a preliminary injunction, and successfully settled the case.
    • CardSoft, LLC v. First Data Corporation, et al. We represented First Data Corporation in a multi-patent case involving operating systems for credit and debit card reader PoS (Point of Sale) terminals.
    • CardSoft v. VeriFone and Hypercom. We represented Verifone in a patent case directed to Virtual Machine functionality for credit card payment terminals.
    • SiRF Technology Inc. We defended respondents SiRF Technology, Inc., E-TEN Corp., Pharos Science & Applications, Inc., MiTAC International Corp., and Mio Technology Ltd., USA in In the Matter of Certain GPS Devices and Products Containing Same (ITC Investigation No. 337-TA-602, 2007). The investigation concerned Global Locate, Inc. and Broadcom’s allegations that the respondents’ global positioning satellite (GPS) devices infringe claims of six Global Locate patents.
    • Blizzard Entertainment v. JoyFun. Diana and an Orrick team defended JoyFun in a copyright suit brought by Blizzard Entertainment in the Central District of California. Blizzard, a sophisticated copyright litigant, alleged that Joyfun, SZNT, and others participated in the development of a game that infringed Blizzard’s popular Warcraft video games and copied distinctive elements into the Glorious Saga games.
    • Humu v. Hulu. Diana and an Orrick team successfully represented Humu Inc., a startup that uses artificial intelligence to help large companies develop their human resources and human talent, against Hulu, the prominent video streaming service, in a contentious trademark matter in the Northern District of California. Hulu contested Humu’s trademark registrations and demanded that Humu abandon its investment in the HUMU mark by changing its name. We filed a declaratory judgment action on Humu’s behalf to vindicate its right to use its name and trademark, alleging that there is no likely confusion between the two brands. Hulu sought to have the suit dismissed so that it could continue to challenge Humu’s mark before the Trademark Trial and Appeal Board. We defeated Hulu’s motion, allowing Humu to establish its right to broad use of the HUMU mark in human capital management.
    • Kampachi v. Blue Ocean. Diana defended Blue Ocean Mariculture in anticybersquatting, trademark, and trade secret litigation brought by Kampachi Worldwide Holdings (KWH) asserting our client acted improperly in registering domain names, based on names that KWH was considering using as its brand. We sought a quick resolution by filing a motion to dismiss. The plaintiff voluntarily dismissed the entire lawsuit without filing a response to our motion.
    • Corto Olive , LP et al. v. Gemsa Enterprises. Diana and an Orrick team filed a trademark and trade dress lawsuit against Gemsa Enterprises in district court, which we settled favorably for our client.
    • Open Mortgage v. Opendoor Mortgage. Diana and an Orrick team represented defendant Opendoor in a trademark infringement litigation filed by Open Mortgage in the Eastern District of Texas. The case was resolved and dismissed by plaintiff before Opendoor had to respond to the complaint.
    • Sata v. Rongpeng. Diana and an Orrick team represented defendant Rongpeng in a case in which SATA accused it of infringing alleged trademarks in model numbers for paint spray guns. The case settled favorably for our client after Orrick successfully defeated a preliminary injunction.
    • MGA v. Mattel. We obtained a widely reported jury verdict that MGA, not Mattel, owns the rights to the Bratz doll, and that Mattel stole MGA's trade secrets through a campaign of corporate espionage. MGA had previously been found to have infringed Mattel's copyright and ordered to pay $100 million. We were hired to handle the appeal. After three months of testimony, a California federal jury rejected all of Mattel's claims to the Bratz franchise and awarded MGA $310 million in damages and attorneys' fees.
    • eBay. We settled trademark litigation in favor of eBay.
    • Pharmavite v. Del Monte Fresh Produce. We protected Pharmavite's flagship brand NATURE MADE by successfully settling a trademark infringement case against Fresh Del Monte.
    • Hon-Hai Precision Co., Ltd. We represented Foxconn Corporation in a patent infringement suit in the Northern District of California involving seven patents. Foxconn, a subsidiary of Hon-Hai Precision Industry Co., is Taiwan’s largest manufacturer of connectors for use in PCs and a leading global manufacturer of connectors and cable assemblies.