As a general litigation strategy, Brian Smith, firm president of Colorado Patents, believes it is important to be aggressive at the onset of a case to foster an early settlement, i.e. if there is any chance of an early settlement.
An early settlement is not only likely to save the client money, it will also (and perhaps more importantly) eliminate the typical distractions caused by litigation as well as the uncertainty of litigation, thereby allowing the company to do what it should be doing and that is focus on its business.
Brian is often able to produce a quick settlement because he is not only a patent litigator but also a patent drafter and prosecutor (i.e. a registered patent attorney), and as such is able to grasp the technology and strength of the patent in question more quickly than non-patent attorneys.
Should, however, the litigation continue, Brian is adept at keeping expenses lower than they might be otherwise by making effective use of computers and employing contract paralegals, attorneys and experts on an as needed basis. To keep expenses further down, cases may be taken on a contingent or partial contingent fee basis.
CASES:
1. Counsel for trademark Registrant, El Chubby’s Inc., in a proceeding before the U.S. Trademark Trial and Appeal Board for the cancellation of U.S. Trademark “EL CHUBBY’S” (Registration No. 3028790) on the basis of alleged fraud for failure to disclose third party mark, Original Chubby’s, to the United States Patent and Trademark Office during the procurement of the El Chubby’s trademark; Chubby’s Tacos NC, LLC v. El Chubby’s, Inc., Cancellation No.: 92079727, filed on May 17, 2022. (Trademark Cancellation Denied with Prejudice on February 1, 2023)
2. Counsel for the plaintiff-patentee in design patent infringement action. Kwik Tek Inc. v. WOW Sports, LLC, U.S. District Court for the District of Colorado-Civil Action No. 15-cv-00058-RM-KMT, (Design Patent Infringement) (Voluntary dismissal).
3. Counsel for plaintiff patent owner in patent infringement action involving a toy. Two Moms and a Toy, LLC v. International Playthings, LLC, U.S. District Court for the District of Colorado-Civil Action No. 10-cv-02271-PAB-BNB (Patent Infringement-False Marking) (Order dated March 29, 2012 denying defendant’s motion for summary judgment of patent invalidity available at findacase.com) (Case settled).
4. Counsel for plaintiff patent owner in patent infringement action involving removable tooth caps/fangs. Foothills Creations LTD v. Billy Bob Teeth, Inc., Civil Action No. 11-cv-00059-REB (U.S. District Court of Colorado) (Patent Infringement) (Case settled after favorable claim construction Order received after Markman hearing. Order dated February 13, 2012 available at findacase.com).
5. Brian Smith served as an expert witness for defendants in fee dispute case arising from patent infringement action. Hensley Kim & Holzer, LLC v. Wyers Products Group, Inc. and Philip W. Wyers, Case No. 2010CV3226, Denver District Court. (Case settled one week after service of Mr. Smith’s expert rebuttal report.)
6. Counsel for plaintiff in trademark infringement action involving Holy G mark. Holy G Wear, LLC v. Holy-G, Inc., U.S. District Court for the District of Colorado-Civil Action No. 09-cv-02773-REB-MEH (Trademark Infringement).
7. Counsel for defendants in design patent infringement, trademark and trade dress infringement action involving a carry-on travel kit. Shop*TV, Inc. v. Bed Bath & Beyond Inc. and Eagle Home Products, Inc., U.S. District Court for the District of Colorado-Civil Action No. 09-cv-0057-REB-CBS (Design Patent Infringement, Trademark Infringement and Trade Dress Infringement) (Confidential Settlement).
8. Counsel for defendants in trademark infringement action involving 5280 mark. 5280 Publishing, Inc. v. 1480 Café LLC, Denver District Court, Case No. 08-cv-9493 (Trademark Infringement).
9. Patent law consultant to Plaintiff’s counsel. Surevoid Products, Inc. v. Lone Star Corrugated Container Corporation d/b/a Savway Carton Forms. U.S. District Court for the Northern District of Texas-Dallas Division-Civil Action No. 3:08-cv-00521 (Patent Infringement).
10. Counsel for defendants in design patent infringement, copyright infringement and trade dress action involving a foot-shaped design for bottle openers. Bison Designs, LLC v. Acme Merchandise and Apparel, Inc. et al., U.S. District Court for the District of Colorado-Civil Action No. 08-cv-00252-WDM-KMT (Design Patent Infringement, Copyright Infringement and Trade Dress Infringement).
11. Local counsel for patent owner in patent infringement action involving SONET telecommunication networks interconnected with TST digital switches. Arthur A. Collins, Inc. v. Qwest Communications International Inc., U.S. District Court for the District of Colorado-Civil Action No. 08-cv-02013-EWN-KLM (Patent Infringement).
12. Counsel for plaintiff in trademark infringement action involving Crown Chic mark. Amy Nugent, d/b/a Crown Chic Boutique v. Crown Chic, Inc. et al., U.S. District Court for the District of Colorado-Civil Action No. 08-cv-00069-WYD-KLM (Trademark Infringement).
13. Counsel for plaintiff in patent attorney malpractice action. Chopra v. Townsend, Townsend and Crew, LLP, U.S. District Court for the District of Colorado-Civil Action No. 07-cv-02447-MSK-MEH (Confidential settlement).
14. Counsel for cross-defendant in copyright infringement action involving software. Microsoft Corp. v. Microcomp Solution, Inc. and Whiting, United States District Court for the District of Colorado, Civil Action No. 06-cv-01365 (Copyright Infringement).
15. Counsel for patent owner in complex multi-party patent infringement action involving a patent for containing nuclear contamination at Rocky Flats and elsewhere. Encapsulation Technology, LLC v. Instacote, Inc. et al., U.S. District Court for the District of Colorado-Civil Action No. 03-WY-1927 (Patent Infringement) (Patent Invalidated on Reexamination).
16. Patent law consultant to Defendants. A Major Difference, Inc. v. Erchonia Medical, Inc. et al. (U.S. District Court for the District of Colorado-Civil Action No. 04-cv-1769-MSK-CBS (Patent Infringement).
17. Counsel for Applicant in trademark opposition involving Excel mark. Edmont P. D’scoli, Trustee of the Edmont P. D’ascoli Revocable Living Trust Dated May 24, 1994 v. Omni Sports International, Inc., Opposition No.: 91154277, Trademark Trial and Appeal Board (Trademark Opposition, Serial No.: 75/922,990, filed 2002) (Attorney for Applicant) (Trademark Opposition).
18. Counsel for copyright holder in copyright infringement/unfair competition action seeking $1.5 million in damages plus fees and costs. Industrial Text Company, d/b/a Industrial Text and Video, v. Sandoz Inc., United States District Court for the District of Colorado, Civil Action No. 04-F-0785 (Confidential settlement) (Copyright Infringement/Unfair Competition).
19. Counsel for patent owner in patent infringement/unfair competition action. Foothills Distributing Co. v. RAM Southwest, U.S. District Court for the District of Colorado-Civil Action No. 98-B-2360. At trial held in February-March 2001, jury returned verdict finding willful patent infringement and willful violations of Lanham Act and Colorado Consumer Protection Act. Trial court judgment entered on March 17, 2003 by Chief Judge Babcock resulting in award including fees and interest of over $3.0 million. Damages were trebled and costs, prejedgment interest and attorney fees were awarded. Summary judgment decisions reported at 106 F. Supp. 2d 1121. The decision was upheld on appeal though modified resulting in a final judgment including fees and interest of approximately $1.6 million. The appellate court decision is reported at 2003 WL 2008072 (Fed.Cir.) (Patent Infringement/Unfair Competition).
20. Counsel for the plaintiff-patentee in patent infringement action. Foothills Distributing Co. v. Scarecrow, Inc. et al., U.S. District Court for the District of Colorado-Civil ActionNo. 01-B-1907. Defendant enjoined from selling infringing product by court order (Patent Infringement).
21. Donald W. Nutting, d/b/a Foothills Distributing Co., v. Bobbie Weiner Enterprises, L.L.C., and Bobbie Weiner, Civil Action No. 03-B-0360 (U.S. District Court of Colorado 2003). Defendant enjoined from selling infringing product by court (Patent Infringement).
22. Attorney for Applicant in trademark opposition involving coffin shaped design mark, RAM Southwest, Inc. v. Nutting, Donald W., Opposition No.: 91150649, Trademark Trial and Appeal Board (Trademark Opposition, Miscellaneous Design, Serial No.: 75/689,561 filed 2001). Opposition dismissed with prejudice and mark granted registration on the principal register, Registration No. 2969009 (Trademark Opposition).
23. Litigated and negotiated confidential settlements totaling millions of dollars in patent infringement actions brought against Japanese and Korean consumer electronics manufacturers including Sony, Matsushita (Panasonic and JVC), Hitachi, Toshiba, Ikegami and Samsung. U.S. District Court for the District of Colorado-Civil Action Nos. 90-N-294; 90-N-350 & 92-N-2396 (Patent Infringement).
24. Digistitch Inc., v. Creative Craftware, Inc., and Todd P. Warsinski, Civil Action No. 02-D-0812 (U.S. District Court of Colorado 2002) (Declaratory Judgment Action re Trademark Infringement)
25. Saramar, L.L.C. v. Denver’s Ocean Journey, Inc., d/b/a Colorado’s Ocean Journey, Opposition No.: 120,342, Trademark Trial and Appeal Board (Trademark Opposition, Serial No.: 75/689,561 filed 2000) (Attorney for Applicant) (Trademark Opposition)
26. Counsel for plaintiff-patentee in patent infringement/antitrust action. Baxa Corp. v. McGaw Inc. et al., U.S. District Court for the District of Colorado-Civil Action No. 92-B-80 (Consolidated with 96-B-1207). Reported at 996 F. Supp. 1044; 45 U.S.P. Q.2d 1504 and 981 F. Supp. 1348; 44 U.S.P.Q.2d 1801 (Patent Infringement/Antitrust).
27. Denver Lofts & Offices, LLC v. Cliffdwellers, Civil Action No. 99-M-997 (U.S. District Court of Colorado 1999) (Copyright Infringement).
28. US West Dex, and US West, Inc v. D&L Publications, Inc., Civil Action No. 98-D-2339 (U.S. District Court of Colorado 1998) (Copyright Infringement).
29. Hartlee Systems, Inc. v. Cambridge Assoc., Inc. et al., Civil Action No. 98-Z-481 (U.S. District Court of Colorado 1998) (Patent Infringement).
30. Counsel for defendant in patent infringement/antitrust action. Clintec Nutrition Company v. Baxa Corporation, Civ. Act. No. 94-C-7050 (U.S. Dist. Ct. N. Ill.-E.D. 1997) Reported at 44 U.S.P.Q.2d 1719 (Patent Infringement/Antitrust).
31. Young v. Irons Brewing Company, Civil Action No. 95-M-137 (U.S. District Court of Colorado 1995) (Copyright Infringement).
32. Bard-Wyers Co. v. Norco Ltd., Civil Action No. 95-M-2905 (U.S. District Court of Colorado 1995) (Patent Infringement).
33. RPS, Inc. v. Bock Specialties, Inc., Civil Action No. 95-WY-1707 (U.S. District Court of Colorado 1995). Served as patent law expert witness (Patent Infringement).
34. Beal Corporation Liquidating Trust v. Valleylab, Inc., Civil Action No. 94-B-2480 (U.S. District Court of Colorado 1994). Served as Associate Counsel for Plaintiff (Patent Infringement/Antitrust).
35. TM Acquisition Corp. and Super 8 Motels, Inc. v. Billie and Clark DeWitt, d/b/a Super A Motel, Civil Action No. 93-M-1739 (U.S. District Court of Colorado 1993) (Trademark Infringement).
36. Columbia Pictures Industries, Inc. et al. v. Wanda F. Hammitt, individually and d/b/a Video Hits, Civil Action No. 92-N-1573 (U.S. District Court of Colorado 1992) (Copyright Infringement).
37. Charlotte Odau, Diana French and B&R Plastics, Inc. v. W. T, Rogers Company and Toddys of Fort Collins, Ltd., Civil Action No. 92-C-798 (U.S. District Court of Colorado 1992) (Design Patent Infringement).
38. American International Group, Inc. v. Advanced Insurance Group, Inc., Civil Action No. 90-F-1917 (U.S. District Court of Colorado 1990) (Trademark Infringement).