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Patrick E. Premo

Chair, Trade Secret Litigation

Partner, Litigation  

Mountain View 650.335.7963

Overview

Patrick Premo began his career at Fenwick & West in 1996 and has extensive experience litigating technology and life science cases from pre-litigation through trial and appeal. He has represented both plaintiffs and defendants in all stages of litigation, including emergency relief proceedings where he has successfully brought and defended applications for temporary restraining orders and motions for preliminary injunctions, in both federal and state courts.

From 2004 through 2008, Pat developed and co-chaired the firm’s IP & Technology Litigation Group, which focuses on leveraging the firm’s expertise in technology and life sciences litigation, specifically in the areas of trade secrets, copyright, trademark and unfair competition. He is currently leading the Litigation Group’s initiative to increase use of technology to significantly reduce costs, particularly in eDiscovery.

Examples of Pat's more recent representations include:

Patent and Unfair Competition

  • Successfully defended patent suit by competitor after client introduced a competing medical device. Our defense team won summary judgment of non-infringement and invalidity, while pursuing counterclaims for unfair competition to shutdown competitor's allegedly false and misleading comparative advertising campaign. Ultimately, after defeating all dispositive motions and preserving the counterclaims in their entirety, competitor agreed to a stipulated order to stop using the accused advertising materials and refrain from making the comparative safety claims, while it pursued an appeal of the patent case. Laryngeal Mask Company v. Ambu A/S (S.D. Cal., filed Oct. 2007).
  • Successfully litigated patent suit on behalf of The Regents of the University of California for infringement of 12 patents covering the Guglielmi Detachable Coil ("GDC"), a revolutionary medical device for treatment of brain aneurysms. Initially, dismissed the declaratory relief action filed in Wisconsin for lack of jurisdiction. In later-filed California suit, defeated antitrust counterclaims on summary judgment. Dismissed all other state law claims at the pleadings stage. Case ultimately resolved in October 2007 on the first day of trial in a manner favorable to The Regents. This helped lead the way to settlement of two related suits on terms that were equally satisfactory to client and its licensee. See The Regents of the University of California v. Micro Therapeutics, Inc. (N.D. Cal., filed Dec. 2003).

Trade Secret Litigation

  • Obtained emergency relief on behalf of client after learning former employee had disclosed highly confidential product demo software and internal training video to his new employer – a direct competitor. Defeated efforts to stay court case and force arbitration of the trade secret dispute at SuccessFactors' sole expense. Case settled soon afterwards on terms satisfactory to SuccessFactors. SuccessFactors v. Taleo (San Mateo Superior Court, filed June 2008).
  • Successfully enjoined competitor from proceeding with its first-filed lawsuit against Georgia resident on grounds that non-compete agreement was anti-competitive and unenforceable. BladeLogic v. Opsware (Mass. & Georgia state courts, filed Nov. 2005).

False Advertising, Trademark and Trade Dress Litigation

  • Obtained emergency relief to prevent further distribution of an "anonymous" hit piece broadly distributed over the Internet. In short order, exposed direct competitor as author of the offending material and immediately obtained a temporary restraining order based on claims for false advertising, trademark infringement, Computer Fraud & Abuse Act violations, and unfair competition. Received an even broader preliminary injunction based on additional evidence uncovered. See 544 F. Supp. 2d 975 (N.D. Cal. 2008). Blocked direct competitor’s attempt to file a second suit in Massachusetts through successful motion practice. Case ultimately resolved on terms satisfactory to client, including a stipulated permanent injunction. As part of settlement, direct competitor agreed to a permanent injunction and issued a press release admitting it created and distributed the PowerPoint presentation to customers and prospective customers. SuccessFactors v. Softscape (N.D. Cal., filed March 2008).
  • Defeated direct competitor's motion for preliminary injunction for alleged trade dress infringement. Suit involved thirteen causes of action, including trade secret, trade dress, breach of confidence, and unfair competition, among others. Case resolved soon afterwards on terms satisfactory to client after competitor lost preliminary injunction. Advance America v. Allied Cash Advance Financial (N.D. Cal., filed March 2001).

Prior to graduation, Pat worked as a judicial extern for Justice Franklin Elia of the California Court of Appeal, Sixth Appellate District.

Pat is also chair of the firm's Pro Bono Program and has been a member of the board of directors for a number of pro bono organizations, including Community Legal Services of East Palo Alto. He is an active member of the Santa Clara County Bar Association and chaired the Bar Association's Pro Bono Committee in 2008.

Publications and Presentations

  • Federal Copyright Law Preempts State Law Breach of Confidence Claims for Unauthorized Use of Works, Fenwick & West Litigation Alert (2010)
  • California’s Uniform Trade Secrets Act Preempts State Common Law Claims, Fenwick & West Litigation Alert (2009)
  • California Court Blocks Subpoenas Aimed At Bloggers' Source of Trade Secret Information, Privacy & Data Security Law Journal (September 2006)
  • Transforming Uses of Celebrity Likenesses Protected Under First Amendment, Fenwick & West Litigation Alert (2006)
  • Electronic Discovery Focus Of Pending Federal Rules Changes Approved By U.S. Supreme Court, Mealey's Emerging Toxic Torts (June 2006)
  • Presenter, Email: The Smoking Gun Discovery, Strafford Legal Teleconferences (2006)

     

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