Knobbe Martens Olson & Bear LLP > San Diego, United States > Firm Profile

Knobbe Martens Olson & Bear LLP
3579 Valley Centre Drive, Suite 300
San Diego, CA 92130
CALIFORNIA
United States

Intellectual property > Patents: prosecution (including re-examination and post-grant proceedings) Tier 2

Full-service IP firm Knobbe Martens Olson & Bear LLP advises an impressive roster of clients -comprised of Fortune 500 names and start-ups- with their patent portfolio strategies. The practice continues to grow its its presence in the data privacy and artificial intelligence areas, although the medical device, biotechnology, electrical engineering and telecom sectors continue to stand out as the group´s mainstays. The team also assists with due diligence for corporate transactions, and is well know for its expertise handling in post-grant reviews before the PTAB. The practice has a particularly strong presence in California, with offices in Orange County, Los Angeles, San Diego, San Francisco. Key practitioners Salima Merani, who specializes in building patent portfolios for life sciences companies; Jason Gersting; Terri Tullis; and Sabing Lee, are all based in Orange County. Seattle, New York, and Washington, D.C, are other key offices.

Practice head(s):

Key clients

Personal Genome Diagnostics Inc.

ICU Medical, Inc.

Nkarta, Inc.

Agilent Technologies, Inc.

Illumina, Inc.

Ulthera, Inc.

Vensana Capital Management, LLC

Cala Health, Inc.

CyDex Pharmaceuticals, Inc.

Aligos Therapeutics, Inc.

Work highlights

  • Represented Wright Medical on Stryker’s $4bn acquisition of Wright Medical.
  • Assisted Imperative Care with raising $260m to advance innovations that elevate stroke care.
  • Represented Nkarta in the negotiations of a deal with Crispr Therapeutics.

Intellectual property > Patents: licensing Tier 3

The ‘outstandingSalima Merani, who operates form Orange County, is one of the key contacts at Knobbe Martens Olson & Bear LLP‘s extensive licensing practice. She brings to bear her more than 20 years of experience handling the development and commercialization of patent portfolios for life sciences companies, particularly medtech and biotech companies. The department’s expertise also spans licensing agreements in the context of financings and transactions, mainly in the venture and growth capital space, which also amount for a portion of the workload. Irvine-based partners Jason Gersting, who acts as practice co-head, and Terry Tullis are other names to note.

Practice head(s):

Other key lawyers:

Testimonials

‘Knobbe Martens knows how to structure a license agreement, eliminates later show killers and therefore secures at an early stage the highest possible value proposition for later stage deals. This is especially true in VC-driven deals.’

‘Salima Merani simply knows how to do it. She is outstanding.’

Key clients

Personal Genome Diagnostics Inc.

ICU Medical, Inc.

Nkarta, Inc.

Agilent Technologies, Inc.

Illumina, Inc.

Ulthera, Inc.

Vensana Capital Management, LLC

Cala Health, Inc.

CyDex Pharmaceuticals, Inc.

Aligos Therapeutics, Inc.

Work highlights

  • Represented Wright Medical in Stryker’s acquisition of Wright Medical for $4bn.  
  • Assisted Imperative Care to help raise $260m to advance innovations that elevate stroke care.
  • Assisted Nkarta’s negotiations in a successful deal with Crispr Therapeutics.

Intellectual property > Trademarks: non-contentious (including prosecution, portfolio management and licensing) Tier 3

With a nationwide presence, the team at boutique firm Knobbe Martens Olson & Bear LLP acts as a one-stop-shop, advising on the licensing, management, and protection of the global trademark portfolios of key market players in a diverse range of industries. The practice also focuses on emerging areas such as AI, cryptocurrency, blockchain and the legal cannabis industries. In the Irvine office, the team is headed by Jeff Van Hoosear, who represents clients in the automotive, fashion, insurance and entertainment industries and Susan Natland, the vice-chair of the Trademark Public Advisory Committee. Firm managing partner Steven Nataupsky is a hugely experienced figure within the space. Diane Reed has now retired.

Other key lawyers:

Testimonials

‘In-depth knowledge of IP. Boutique firm/specialty firm so they focus on IP full-time. Pricing is far better than a large full-service law firm.’

‘Susan Natland and her team are thoughtful, strategic advisors who consider all aspects of your portfolio’s needs.’

‘Susan Natland is creative, resourceful, and strategic.’

‘Flexible reporting structures in re providing status reports on trademark portfolios. The team has taken the time to know our business and to understand our needs as a company and as a legal department.’

‘They are the most enjoyable outside counsel that we work with. We not only like them as lawyers, we like them as people. Approachable, fun, flexible.’

Key clients

Qatar Airways

lululemon

Jacuzzi Brands

99 Cents Only Stores

Toshiba America Electronics Corporation

HireRight

Meyer Natural Foods

Venus Laboratories (ECOS)

Monster Energy Company

Illumina, Inc.

Masimo

Jelly Belly

Fox Corporation

BJ Restaurant

Soke Beauty

Edwards Life Sciences

Work highlights

  • Representing Fox Corporation in protecting its various brands including FOX SPORTS as well as entertainment properties including the hit TV show The Masked Singer.
  • Advising on the management of Monster Energy’s worldwide trademark portfolio handling all aspects, including management, protection, and enforcement.
  • Assisted Passy-Muir, Inc specifically with the implementation of a long-term strategy to successfully register a trademark after its initial application was refused.

Intellectual property > Patents: litigation (full coverage) Tier 4

Well-established IP boutique firm Knobbe Martens Olson & Bear LLP operates from its offices in in Los Angeles, New York, Orange County, San Diego, San Francisco, Seattle and Washington DC, providing comprehensive IP services to clients across the country before the federal and state courts, the ITC, in Patent Office proceedings, as well as before international forums. The firm has a strong life sciences litigation practice, with a high rate of success handling Hatch-Waxman litigation, and a balanced mix of cases for IP holders and defendants. Irvine’s Sheila Swaroop and Michael Friedland have recently taken the reins of the team, which includes William Zimmerman, who has a stellar record in Hatch-Waxman litigation; and ANDA experts Carol Pitzel Cruz and Joseph Reisman. Jeremiah Helm, promoted to partner in January 2021, is another name to note. Clients include Monster Energy, Smith & Nephew, Nobel Biocare, Fisher & Paykel, and Edwards Lifesciences Corporation.

Testimonials

The team is highly experienced on a national basis in addressing infringement of US patents. This includes a strong list of local litigation contacts in each state. Their expertise gained over time has resulted in broad recognition of Knobbe Martens as a leader in the patent litigation space.’

Ali Razai has been a strong team lead. He is experienced in patent enforcement programs, and is very familiar with all of the tools available to conduct such enforcement. He has been a strong guide in our efforts to formulate our own patent enforcement policies and programs.’

Accommodative lawyers who are available for the clients make this firm unique. They support by giving most appropriate advice. They are open for suggestions but will not do a thing only because the client says so, when they know it is not appropriate.’

Key clients

Monster Energy Company

Fisher & Paykel Healthcare Ltd.

Masimo Corp.

Lupin Ltd.

Edwards Lifesciences Corporation

Smith & Nephew, Inc.

Razor USA LLC

Oakley, Inc.

Nobel Biocare USA, LLC

Intellectual Ventures Management, LLC

Applied Medical Resources Corp.

HTC America

Mophie, LLC

Toshiba Corporation

Skyworks Solutions, Inc.

Personal Genome Diagnostics, Inc.

Nomadix, Inc.

Lund Motion Products, Inc.

Work highlights

  • Achieved a successful result for Toshiba in a patent infringement matter.  
  • Representing Co-Plaintiff Edwards Lifesciences in a high-profile case challenging the Director of the US Patent Office’s authority to set the NHK-Fintiv rules for discretionary denial of a Petition for inter partes review when co-pending litigation has an early trial date.
  • Defended Inogen against a competitor’s claims of patent infringement, breach of contract, and various related torts.

Intellectual property > Trademarks: litigation Tier 4

Providing ‘a fantastic client service and commercially creative solutions‘, the team at Knobbe Martens Olson & Bear LLP litigates on behalf of global brands involved as both plaintiff and defendants in high-stakes trademark infringement, counterfeiting, trade dress infringement and false advertising claims before state, federal and administrative courts. The practice is headed by experienced trademark and brand protection litigators Michael Friedland and Lynda Zadra-Symes, who represents tourism, food and beverages, and transportation clients from pre-suits to trials and appeal. Ali Razai specializes in the biotech, pharmaceuticals and medical device sectors. IP dispute specialist  Brandon Smith was promoted to partner in January 2022. David Jankowski retired in June 2021. All lawyers mentioned work in Orange County, CA.

Other key lawyers:

Testimonials

‘They provide a fantastic client service and commercially creative solutions’

‘The Knobbe Martens team is well-equipped to address trademark infringement issues and also patent infringement issues. Being able to work on both issues concurrently provides for efficient and cost-effective means of pursuing intellectual property rights.’

Key clients

Qatar Airways

lululemon

Jacuzzi Brands

99 Cents Only Stores

Toshiba America Electronics Corporation

HireRight

Meyer Natural Foods

Venus Laboratories (ECOS)

Monster Energy Company

Illumina, Inc.

Masimo

Jelly Belly

Fox Corporation

BJ Restaurant

Soke Beauty

Edwards Life Sciences

Work highlights

  • Representing defendants Pet Qwerks and Petmate in a design patent and trade dress case.
  • Represented Monster when Vital Pharmaceuticals alleged that Monster’s successful REIGN line of performance energy drinks infringed VPX’s claimed trade dress rights in the appearance of its Bang energy drinks.
  • Representing Oatly in a pending federal court lawsuit in the District of Utah against Betterbody Foods & Nutrition LLC involving the mark OATSOME.

Managing Partner: Steven J. Nataupsky

Languages: Arabic, Croatian, Farsi, Finnish, French, German, Hindi, Hungarian, Italian, Japanese, Korean, Mandarin, Portuguese, Punjabi, Russian, Spanish, and Urdu

Firm Overview:

Knobbe Martens is a highly respected intellectual property law firm, offering legal services in all aspects of intellectual property and technology law. The firm’s litigation group handles cases throughout the U.S. and coordinates strategy for disputes worldwide. Founded in California in 1962, the firm has close to 300 lawyers and scientists based in offices in Orange County, Los Angeles, New York, San Diego, San Francisco, Seattle and Washington D.C. Recognized as a top-ranked firm by numerous IP and legal outlets, Knobbe Martens serves a diverse international client base, from multinational corporations to emerging businesses of all stages.

Major areas of practice for the firm include:

  • Litigation: Our litigation successes are unparalleled—not only in the courtroom but also in the boardroom, where we succeed in achieving our clients’ strategic business goals. With more than half of the firm’s resources devoted to our litigation practice, we have the depth and experience to succeed in the most complex intellectual property cases. When the stakes are at their highest, we are at our best.
  • Patents: We provide complete patent services that help create and protect the inventions that shape our world. Our attorneys are unrivaled in the depth of their experience and technical expertise, providing strategic guidance and services that include patent counseling and prosecution, new product clearance and licensing, and counsel regarding patent enforcement and the avoidance of possible infringement issues.
  • Copyrights: Protecting and enforcing copyrights are cornerstones of our IP services. We have vast experience in this field, regularly assisting clients to secure global copyright privileges and ownership of copyright assets. We also counsel clients on enforcing copyrights and defending copyright claims in federal court litigation and appeals throughout the country and coordinate with foreign attorneys to enforce rights and defend claims internationally.
  • Trademarks: In an increasingly competitive world, establishing and maintaining a strong brand identity are more important than ever. We are recognized leaders in the field of trademark law, providing unmatched guidance to both start-ups and Fortune 100 firms. Our trademark attorneys have extensive experience in all facets of the law, providing strategic trademark, branding and protection counseling for major brands—both domestically and in more than 100 jurisdictions worldwide.
  • Trade Secrets: Our team of litigators has won countless high-stakes trade secret cases, representing both owners of trade secrets and those accused of misappropriating the trade secrets of others. Our victories and positive results include jury verdicts, summary judgment decisions and negotiation of favorable settlements. We are also unmatched in the depth of our technical expertise. Instead of learning, we are acting, quickly devising strategies based on our thorough knowledge of complex technical matters.
  • USPTO Trials & Post-Grant Proceedings: The past several years have seen a dramatic increase in cases involving post-grant proceedings before the United States Patent and Trademark Office (USPTO). We are one of the few firms able to successfully handle both the range and complexity of such cases. Our team has extensive experience managing and resolving Inter Partes Reviews (IPRs), Covered Business Method patent reviews (CBMs), Post-Grant Reviews (PGRs), patent interferences, and derivation proceedings. Our USPTO-registered attorneys regularly develop strategies that help our clients either avoid these proceedings or utilize them to their advantage.
  • Licensing: Licensing can be an effective way to increase market share and generate new revenue streams, but it can also pose significant challenges. Our team has the experience and expertise to get the job done— providing a wide-range of technological, legal, strategic and business acumen. We routinely assist clients in a wide variety of transactions, including patent, copyright and trademark license agreements, joint venture agreements, strategic licensing programs and more.
  • International: Innovation is blind to borders and boundaries. That is why Knobbe Martens maintains a truly global presence, representing clients and their interests in nearly every country in the world, and helping them achieve their international market and strategic goals. We serve our domestic clients through a cohesive network of foreign lawyers and agents—teaming with them to quickly resolve matters in a particular country or region. Likewise, we serve our international clients throughout the U.S. to meet the full range of their U.S. intellectual property requirements.

Diversity and Inclusion

From our founding, Knobbe Martens has been committed to creating and fostering an inclusive and diverse workplace. It’s a commitment that has yielded real and meaningful results, and today the firm is recognized as among the most diverse mid-size law firms in the nation.

Within Knobbe Martens, we promote diversity through active outreach and recruitment, as well as through internal programs that ensure the needs and goals of all our diverse employees are recognized and valued. Efforts are led by the firm’s Diversity Committee, which includes a broad spectrum of attorneys reflective of our diverse workforce. The Committee is charged with furthering our mission of sustaining an environment where diversity is supported and central to the success of the firm.

More information about Knobbe Martens can be found at www.knobbe.com.

DepartmentNameEmailTelephone
Managing Partner Steven J. Nataupskysteven.nataupsky@knobbe.com(949) 760-0404
PhotoNamePositionProfile
Joseph Reisman photoDr Joseph ReismanPartner