Patrick Ellisen focuses his practice on intellectual property protection, counseling and enforcement. Patrick has wide-ranging experience in patent, trademark, copyright and trade secret matters. He regularly advises clients on intellectual property strategies and systems, and negotiates and litigates intellectual property license agreements. Patrick is a frequent lecturer on intellectual property management and best practices. He has broad experience handling various types of intellectual property disputes, including patent infringement actions in the U.S. District Courts and before the U.S. International Trade Commission and has experience in insurance coverage of intellectual property disputes.
Prior to joining the firm, Patrick was the firmwide chair of the Intellectual Property Practice Group at the law firm Oppenheimer, Wolff & Donnelly.
Areas of Concentration
· Intellectual property strategy, counseling and protection
· Patent infringement
· Commercial litigation
· Copyright, trademark and trade secret
Professional & Community Involvement
· Member, American Bar Association
· Member, Churchill Club of Silicon Valley
· Member, I.T.C. Trial Lawyers Association
· Member, Licensing Executives Society
· Member, SAI Global Law & Ethics Advisory Board
· Member, Santa Clara County Bar Association
· Member, Silicon Valley Intellectual Property Law Association
Awards & Recognition
· Listed, Managing IP Magazine's World IP Handbook and Survey, "IP Stars," 2013
· Listed, Super Lawyers magazine, Northern California Super Lawyers, 2005
· Rated, AV Preeminent® 5.0 out of 5
· Advised leading global financial services on a wide-range of IP management programs, including foreign and domestic patent prosecution strategy, trade secret practices, patent licensing and procurement, and other IP best practices.
· Obtained complete dismissal of patent infringement claims against leading computer peripheral designer/manufacturer, and obtained a global license to competitor's patent portfolio.
· Advised customer management software company on all aspects of its IP program, including patent, trademark, trade secret and copyright practices and policies, management of IP litigation matters, IP licensing and protection of confidential information.
· Represented leading provider of protective eyewear to the U.S. military in patent infringement (and trade secret theft) action regarding tactical protective eyewear technology; obtained permanent injunction and admission of infringement.
· Acted as counsel for defendant in patent infringement action regarding protective eyewear technology; obtained summary judgment of patent invalidity as to all asserted claims.
· Represented leading GPS/navigation developer in patent litigation; resolved patent infringement claims while saving client costs of discovery.
· Represented leading extruded candy manufacturer in trademark infringement matter regarding "Sour Punch" mark; obtained injunction.
· Represented technology CMS software development company in trade secret and breach of software license dispute with global competitor; obtained affirmative resolution.
· Represented real estate brokerage in trademark infringement/domain name matter; obtained cancelation of competing mark and assignment of URL.
· Represented large, multi-national motherboard manufacturer in product defect dispute with leading wireless network chip supplier; obtained settlement in defective products/misrepresentation lawsuit.
· Represented GPS development company in multi-patent litigation regarding graphical user interface technology; obtained complete dismissal of claims.
· Represented leading chip-set manufacturer in multi-patent litigation regarding low-pin-count bus architecture technology; obtained affirmative claims construction ruling and resolved case.
· Represented plaintiff in patent infringement action regarding pre-press software ("flight-checking") technology; obtained effective resolution.
· Represented native musicians in copyright dispute regarding international platinum hit "Return to Innocence" (Enigma); obtained full accreditation for clients creative works.
· Represented leading mouse manufacturer in ITC §337 patent infringement action/investigation regarding computer mouse technology; obtained complete dismissal of claims against client.
Publications & Presentations
Articles, Lectures & Publications
· Co-Author, "Getting Ahead of Patent Litigation Risk," Law360, June 24, 2013
· Co-Author, "A Guide To Effective IP Management," Law360, September 25, 2012
· Co-Author, "Protecting Confidential Information and IP Amid Employee Mobility," Corporate Counsel, August 8, 2012 (subscription)
· Co-Author, "Considering Joinder and Advice of Counsel under AIA," Law360, February 7, 2012
· Author, "Cost Effective Defense of Patent Infringement Suits Brought by Non-Practicing Entities," Intellectual Property and Technology Law Journal, October 2009
· Author, "Does Your Oversight of IP Measure Up?" IP & Business, December 2008
· Author, "Minding Your Business," San Francisco Daily Journal, September 3, 2008
· Author, "Reducing and Managing Patent Litigation Costs," IP Law360, March 26, 2008
· Author, "Procedures with Care: Dynamic Nature of Patent Enforcement Makes It Wise to Look Before Litigating," San Francisco Daily Journal, April 5, 2007
· Speaker, "Indirect Infringement & Patent Exhaustion Strategies," T.I.L.O., March 2011
· Speaker, "IP Management & Corporate Fiduciary Duties in Post-SOX World," Micron with Ernst & Young, May 2008
· Speaker, "IP Management & Corporate Fiduciary Duties in Post-SOX World," Ernst & Young, March 2008
· Speaker, "U.S. International Trade Commission §337 Actions," King & Wood, Beijing, Shanghai and Shen Zen, November 2006
· Speaker, "U.S. IP Enforcement & Management," Deloitte Touche Tohmatsu, February 2006
· Speaker, "Effective IP Enforcement Strategies," IP Society, July 2005
· Speaker, "IP Management, Best Practices & Strategies," Corporate Counsel, May 2004
· Speaker, "IP Management in the Post-SOX World," Ernst & Young, February 2004
· Speaker, "U.S. IP Enforcement," ITRI (Taiwan), June 2001
· Speaker, "IP Management - Best Practices," Sterling Law Publishing, September 1998
(Also at East Palo Office)