REPRESENTATIVE CASES & CLIENTS

We win.

While the majority of disputes settle, we’re always willing to take a matter to whatever dispute resolution forum is appropriate, whether it is an administrative tribunal, arbitration or mediation trial court or an appellate court.

James Wagner acted on our behalf in a complex trademark suit which threatened to shut down our main product lines. He was entirely successful in defending the claim, and in our counterclaim invalidating both of the asserted marks. I highly recommend him to anyone who needs trademark litigation services.
Mike Urban, Owner, Urban Distilleries Inc.

Non-contentious

Large Telecommunication Company

  • Assisted in review and negotiations pertaining to US patents asserted by non-practicing entities
  • Consulting regarding RAND licensing agreements and proposals

Medical Science Corporation

  • Due diligence preparation on behalf of corporation being taken over (asset identification, chain of title verification and licensing of IP rights)
  • Subsequently assisted purchasers in registration of newly acquired IP rights

Computer Communications Device Developer

  • Review of patent portfolio and competitors patent positions
  • Preparing and filing patent protests/oppositions to oppose competitor’s USA and CA patent applications
  • Prior art searches, patentability opinions, supervision of patent preparation and filing

Industrial Drill Designer & Manufacturer

  • Review of competitor’s Canadian patent portfolio
  • Preparing and filing patent oppositions to oppose competitor’s patent applications

Small Software Company

  • Drafted international license and distribution agreements, user agreements and notices 

Consumer Goods Manufacturer

  • Conducted review of competitor’s patent to proposed product design
  • Identified potential infringing and non-infringing variants

Charitable Organization

  • Drafted agreement for use of third party IP for development of internal program
  • Review of operating grant agreement for protection of IP rights

Contentious

City of Terrace and Kitasso Band v. Urban Distilleries Inc.

(Federal Court, Federal Court of Appeal)

  • Successfully opposed summary trial application seeking to force client to rebrand their product with costs
  • Continuing counterclaim on behalf of Urban Distilleries Inc.

Galaxy Plastics Ltd. et al. v. Le-Ron Plastics Inc.

(BC Supreme Court & Federal Court)

  • Acted for Plaintiff in interference with contractual relations claim and a separate patent impeachment action involving 3 patents
  • Drafted Pleadings, managed document discovery, prepared questions for oral discovery and supervised junior counsel in preparation of same, drafted arbitration brief
  • Achieved favorable settlement following non-binding arbitration and prepared settlement and license agreements

DCT Chambers et al. v. Bodecker

(BC Superior Court & Federal Court)

  • Acted as lead counsel on behalf of joint defendants in two patent infringement suits and a counter suit in a separate forum seeking patent invalidation
  • Supervised prior art search with clients, identified expert and fact witnesses and obtained witness statements
  • Following Court mandated mediation conducted further negotiations resulting in successful resolution of all outstanding claims 

Phillips v. Maple Technology et al.

(BC Supreme Court & Federal Court)

  • Second chair for 8 simultaneously conducted cases involving claims of Patent infringement and director and officer liability concerning CD and DVD technologies and (counter) claims for breach of contract, interference with contractual relations, conspiracy and patent invalidity (including judicial challenges of the patent grant)
  • Acted on behalf of Maple Technology, 4 other corporations, their officers and directors
  • Drafted Pleadings, managed document discovery, prepared for and conducted portions of examinations for discovery, prepared motion to stay, prepared responses to motions for further document production and for further oral discovery
  • Instructed foreign counsel in corresponding litigation in the State of California, USA

Color Kinetics v. TIR

(Federal Court)

  • Acted for Defendant in Patent infringement dispute involving LED control technology; drafted pleadings, prepared motions to strike and for particulars and response to corresponding motions by Plaintiff, managed document discovery, prepared questions for oral discovery, prepared motion for further discovery, prepared response to corresponding motion by Plaintiff and instructed paralegals
  • Coordinated with foreign counsel in corresponding litigation in the Commonwealth of Massachusetts (US District Court)
  • Positioned client for eventual purchase by Phillips and advised on IP related aspects of purchase agreement; subsequently acted for Phillips with regard to other IP matters