Diana Szego Fassbender
Of Counsel
Washington, D.C.Diana Szego Fassbender has significant experience in a broad array of intellectual property matters, including patent, copyright, and trademark actions.
Ms. Fassbender regularly represents international clients, including particularly businesses and organizations in Asia and Europe, on a range of IP matters. She works closely with clients to develop innovative and cost-effective case strategy to favorably resolve litigation or achieve other legal objectives.
Ms. Fassbender has been involved in all phases of litigation, from inception through trial and appeal. She regularly litigates complex multi-defendant, multi-patent district court infringement actions and Section 337 Investigations in the International Trade Commission. Ms. Fassbender also is experienced in representing clients in trademark disputes, such as trademark infringement cases and domain name arbitrations under the Uniform Dispute Resolution Policy. She also provides advice on international trademark prosecution and branding strategy, and often works with emerging companies in the technology sector on trademark and branding issues. Additionally, Ms. Fassbender has experience in 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.
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Ms. Fassbender currently serves as a deputy to Orrick's Women's Initiative. She previously co-chaired the Associates Committee of Orrick's Washington, D.C., office, and received the Mentory of the Year award in 2011. 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 the Miami office of Akerman. 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 the Board of Directors for the McNeilly Center for Children, a non-profit childcare center for children from low-income families.
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Some of her notable matters include:
Patent
- Defended Universal Lighting Technologies, Inc., in a patent infringement lawsuit and high profile patent appeal against a subsidiary of Acacia Research Corporation, one of the largest patent holding companies. 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 a January 2013 panel decision that 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, reaffirming 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. While the Federal Circuit ultimately affirmed the judgment in favor of the plaintiff using the newly-established clear error standard of review, 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.
- Obtained summary judgment on behalf of FUJIFILM defendants in patent infringement suit involving FUJIFILM imaging devices. See AntiCancer, Inc. v. FUJIFILM Medical Systems USA, Inc., No. 09-cv-1311 (S.D. Ca.).
- Represented defendant Fujifilm Corporation in two related infringement lawsuits involving digital cameras. Ms. Szego defended fact depositions; was heavily involved in expert discovery; 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.
- Represented French 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.
- Analyzed worldwide trademark rights and co-existence agreement on behalf of French business.
- 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.
