Boris Zelkind

BZ
  • Partner at Duane Morris LLP (799 Attorneys)
  • 865 South Figueroa Street, Suite 3100, Los Angeles, CA 90017
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Biography

Boris Zelkind practices in the area of intellectual property litigation, including patent infringement, trade secrets, trademark, copyrights and unfair competition cases.

His extensive patent infringement work encompasses a variety of technology areas, including automotive technology, software, medical devices, consumer products, mechanical devices video compression, telecommunications, commercial diving equipment, autonomous vehicles, solar energy, home automation systems, 3D printing, and cycling technology.

Mr. Zelkind also has significant experience assisting clients with protecting their trade secrets and propriety information in connection with departures of employees or groups of employees, as well as other matters related to the Defend Trade Secrets Acts of 2016 (DTSA). He regularly counsels clients on legal strategies that align with their business objectives, be it guidance during high-stakes, bet-the-company litigation or proactive tactics that ensure the clients’ current and long-term goals are considered and maintained.

Mr. Zelkind represents clients in federal courts and jury trials throughout the United States, with a particular focus on California, Delaware and Texas. He has an extensive appellate practice and has presented numerous oral arguments to the United States Court of Appeals for the Federal Circuit. Mr. Zelkind also has experience with patent infringement proceedings and nullity actions in Europe.

He lectures frequently on intellectual property litigation subjects and is a former lawyer representative to the United States District Court of the Southern District of California.

Mr. Zelkind is recognized by his peers for inclusion in the San Diego Super Lawyers list in the field of IP Litigation every year since 2009. He has been selected to the several consecutive editions of The Best Lawyers in America for his work in Copyright Law and Patent Litigation.

Mr. Zelkind is a 1994 graduate of DePaul University College of Law and a graduate of the University of Minnesota (B.S., Aerospace Engineering & Mechanics). He is fluent in Russian.

Experience

•Duane Morris LLP
- Partner, 2018-present

•Knobbe, Martens, Olson & Bear LLP
- Partner, 2008-2018
- Of Counsel, 2005-2007

•Zelkind & Shackleford LLP
- Co-founder and Managing Partner, 2002-2005

•Turn-Key-Tech LLC
- Lead Litigation and Trial Counsel, 2000-2002

•Kinney & Lange PA
- Associate, 1994-2000

•Cardiac Pacemakers Inc.
- Research Assistant, 1989-1990

Honors and Awards

•Listed in U.S. News/Best Lawyers The Best Lawyers in America, 2014-2019

•Listed in San Diego Super Lawyers for Intellectual Property Litigation, 2009-2018

•Listed in San Diego Daily Transcript’s Top Attorney List for Intellectual Property Litigation

Publications

Selected Publications

•Quoted, Inside Track: While the CEO Is Away Going Rogue Lawyers Suing Their Lawyers, Corporate Counsel, March 21, 2018

•Co-Author, Where Plaintiffs Are Filing Suit Post-TC Heartland, Law360, July 7, 2017

•Co-Author, The Defend Trade Secrets Act - A Year In Review, Law360, May 10, 2017

•Author, Trade Secret Bill Boosts Protection, EE Times, April 28, 2016

•Contributing Author, United States Chapter, Trade Secret Protection: A Global Guide, published by Global Law and Business, January 2016

•Co-Author, Recent Trends and Developments in Trade Secret Litigation, Minnesota Institute Legal Education, Intellectual Property Litigation Course 1999

•Co-Author, Intellectual Property for Business Lawyers, West Group, 1996

•Co-Author, Distinctive Characteristics of Excel VR Rate Adaptive Pacemaker with an Innovative Activity Sensor, Pacing And Clinical Electrophysiology, Vol. 13, No. 9, 1990

Speaking Engagements

Selected Speaking Engagements

•Presenter, Star Athletica - The Supremes Weigh in on Copyrightability of Surface Decorations on Useful Articles,v State Bar of California Webinar, May 31, 2017

•Panelist, Let's Get Real: How Original Design Makes Business Better, Workshop sponsored by California Lawyers for the Arts and Be Originals America, March 29, 2017

•Presenter, Intro to IP: Basics of Patents, Trademarks and Trade Secrets, Knobbe Martens Seminar, July 28, 2016

•Presenter, The Current State of Trade Secret Law and How the New Federal Statute Will Shape the Landscape, SanDiego Intellectual Property Law Association, May 19, 2016

•Moderator, Recent Trends in Obviousness, ACC-SD Intellectual Property Roundtable, October 15, 2013

•Presenter, Developing Your Initial Patent Litigation Case Strategy, Knobbe Martens' IP Impact 2011 Seminar, San Diego, August 15, 2011

•Presenter, Recent Developments in US Patent Law and Practice, TECH IP 2011 Seminar, Auckland, Sidney and Melbourne, March 14-17, 2011

•Presenter, CPA Expert Witnesses - What Attorneys Expect, CalCPA seminar, July 22, 2010

• 2010 Amendments to the Federal Rules of Civil Procedure, January 26, 2010

•Presenter and Moderator, ebay v. MercExchange and Other Developments in the Supreme Court, ACCA IP Practice Group Roundtable, June 2006

•Presenter, How To Present a Successful Appeal to the Federal Circuit, 2006 Joint OCPLA/SDIPLA Meeting, Carlsbad, California, March 24-26, 2006

•Presenter and Moderator, Claim Construction in Light of Phillips and Other Developments at the Federal Circuit, ACCA IP Practice Group Roundtable, March 2006

Areas of Practice (7)

  • Intellectual Property Litigation
  • Patents
  • Trademarks
  • Trade Secrets
  • Copyrights
  • Unfair Competition
  • Appellate Law

Education & Credentials

Contact Information:
619 744 2267  Phone
619 923 2673  Fax
www.duanemorris.com/attorneys/boriszelkind.html
Year of First Admission:
1994
Admission:
Supreme Court of the United States; U.S. Court of Appeals for the Federal Circuit; U.S. Court of Appeals for the Ninth Circuit; U.S. District Court for the Central District of California; U.S. District Court for the Northern District of California; U.S. District Court for the Eastern District of California; U.S. District Court for the Southern District of California; U.S. Patent and Trademark Office; California; U.S. Court of Appeals for the Eighth Circuit; U.S. District Court for the District of Minnesota
Memberships:

Professional Activities

•American Bar Association
- Patent Litigation Committee
- Trade Secrets Litigation Committee

•San Diego Intellectual Property Law Association
- Past President

•Association of Business Trial Lawyers San Diego
- Board of Governors
- Chair, Sponsor Relations Committee

•U.S. District Court of the Southern District of California
- Former Lawyer Representative

•Association for Unmanned Vehicle Systems International, Silicon Valley Chapter

•Association of Corporate Counsel, San Diego Chapter

- IP Roundtable Group Sponsor

Languages:
Russian
Birth Information:
Minsk, Belarus, August 19, 1970
Reported Cases:
Representative Matters: Digirettes, Inc. v Ballantyne Brands, LLC, Civil Action No. 1: 17-cv-01773 (D. Del.) Enforced client's patent in an infringement case involving electronic cigarette technology.; Zaletel dba i4Software v. Prisma Labs, Inc., CV 16-1307 (D. Del.) In a trademark infringement case, obtained a dismissal of the case from the Eastern District of Virginia for lack of personal jurisdiction, as well as defended against a preliminary injunction motion in Delaware, with the Court finding that the plaintiff was not likely to prevail on the merits.; SunPower Corp. v SunEdison, et al., Case No. 15-cv-286593 (Cal. Superior Ct, Santa Clara County.) In a trade secrets misappropriation case, implemented a global enforcement strategy, bringing trade secret misappropriation cases in multiple jurisdictions in Europe and the United States. The U.S. case is presently stayed, pending resolution of SunEdison's bankruptcy proceeding.; Telecommunication Systems v Cassidian Communications, Inc., et al, Civil Action No. 14-CV-1103-JRG (E.D. TX.) Defended an Airbus subsidiary, Airbus DS Communications, against it primary competitor in a multipatent infringement case in the Eastern District of Texas. Obtained a settlement after Markman briefing.; iControl Networks, Inc. v. SecureNet Tech. LLC, Case No. 14-cv-01198 (D. Del.) Obtained an early dismissal of a patent infringement action involving home automation and security technology.; Anderson v. Kimberly-Clark Corp., Civil Action No. 12-cv-1979 (W.D. WA) Defended Kimberly-Clark in a design patent infringement case involving the company's signature Depends brand adult undergarments. Obtained a dismissal of the case on the pleadings and the decision was upheld on appeal.; I-Flow LLC, et al. v Progressive Medical, Inc., CV 12-01064 (C.D. Cal.) Represented Kimberly-Clark Corp. and its subsidiary I-Flow LLC in a patent infringement case involving infusion pain pump technology. During the presentation of evidence at the jury trial, the case settled for our clients.; SunPower Corp. v. SolarCity Corp., et al., Case No. 5: 12cv694 (N.D. Cal.) Enforced business trade secrets of SunPower Corporation against a competitor.; Amron Int'l Diving Supply Co. v. Hydrolinx Diving Communications, Inc., et al., Case No. 11cv1890 (S.D. Cal.) Obtained terminating sanctions against defendants for theft of trade secrets and additional business torts.; Vebs, Inc. and Lizalde v. Advanced Planning Services, Inc., et al., Case No. 10-cv-0834 (S.D. Cal.) Defended First Allied Securities in a copyright infringement case involving federal benefit programs.; I-Flow Corp. v. Apex Medical Technologies, Inc., et al., Case No. 07-cv-1200 (S.D. Cal.) In a patent infringement and trade secret misappropriation case involving two competitors, represented plaintiff I-Flow Corp. and tried the case to a jury verdict. The jury ruled in our client's favor on all counts and awarded I-Flow over $12 million in damages.; Sorensen v. ITC (and Mercedes-Benz USA, LLC, Intervenor), 427 F.3d 1375 (Fed. Cir. 2005). Obtained a reversal at the Court of Appeals for the Federal Circuit.; Koito Manufacturing Inc. v. Turn-Key-Tech, LLC, 381 F.3d 1142 (Fed. Cir. 2004). Represented Turn-Key-Tech in a patent infringement case involving automotive technologies. After a jury trial, obtained reversal and remand at the Court of Appeals at the Federal Circuit; 99 Only Stores v. Best Bargain (C.D. Cal. 2006). In a trademark infringement case, obtained a permanent injunction in our client's favor.; 99 Only Stores v. Allen's 99, et al., (S.D. Cal. 2004). In a trademark infringement case, obtained a permanent injunction in our client's favor.; Automobile Club of Southern California v. The Auto Club, Inc., CV-05-3940 (C.D. Cal.) Represented Automobile Club of Southern California and obtained summary judgment that defendant committed acts of unfair competition. On the eve of trial, obtained a consent judgment with respect the remainder of the causes of action in the client's favor.; Sephra LLC v. Buffet Enhancements International, Inc., 06 CV 2452 (S.D. Cal.) Obtained a settlement for patentee, Sephra LLC.; American Cal Car, Inc. v. BMW of North America, LLC, 04-V 0614 (S.D. Cal.) Represented American Cal Car, Inc. against BMW, and on the eve of trial, obtained a settlement for patentee.; Sephra LLC v. Jarden Corp., 06 CV 0836 (S.D. Cal.) Enforced patents on behalf of client, Sephra LLC.; Sephra LLC v. The Helman Group, Ltd., 06 CV 0385 (S.D. Cal.) Enforced patents on behalf of client, Sephra LLC.; Express, LLC v. Fetish Group, Inc., CV 05-2931 (C.D. Cal.) Obtained summary judgment of copyright infringement for DJ defendant Fetish Group, Inc. and summary judgment defeating the other side's counterclaims.; Patterson Fan Co. v. Romla Co., Civil Action No. 3: 05 CV-1843 (D. S.Car.) Obtained dismissal of action for lack of personal jurisdiction.; Turn-Key-Tech, LLC v. Toyota Motor Co., et al., 01 CV 2157 (S.D. Cal.) Obtained a settlement for patentee.; Turn-Key-Tech, LLC v. Kia Motors Corp., et al., 01 CV 1885 (S.D. Cal.) Obtained a settlement for patentee.; Turn-Key-Tech, LLC v. Hyundai Motor Co. Ltd, et al., 01 CV 1884 (S.D. Cal.) Obtained a settlement for patentee.; Turn-Key-Tech, LLC v. Honda Motor Co. Ltd, et al., 01 CV 2155 (S.D. Cal.) Obtained a settlement for patentee.; Turn-Key-Tech, LLC v. Mitsubishi Motors, et al., 01 CV 2156 (S.D. Cal.) Obtained a favorable settlement for patentee.; On Command Video v. LodgeNet Entertainment Systems (C.D. Cal. 1996). After a claim construction and avoiding summary judgment of infringement, obtained a settlement for defendant saving over $100 million in asserted patent infringement damages.
ISLN:
909767868

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