George G. Matava

RELEVANT EXPERIENCE

George has held numerous Partner and Shareholder positions at major national and international law firms and IP boutiques throughout his 40+ years of practicing law, including Lewis Brisbois Bisgaard & Smith, Greenberg Traurig, Merchant & Gould, Sheridan Ross, and Holme Roberts & Owen. He also spent time as an Assistant General Counsel at US WEST and was an Honor Law Graduate and Trial Attorney at the Justice Department in Washington, working primarily on espionage prosecutions and investigations.

REPRESENTATIVE MATTERS

George has been lead counsel in 6 patent trials, countless PI and TRO proceedings in the trademark area, approximately 25 opposition and cancellation proceedings before the Trademark Office, 2 IPR proceedings in the PTAB; 8 Federal Court appeals and 1 Colorado State Court appeal. He also second-chaired 2 antitrust trials.

He has provided representation for many well-known clients such as: Gates Corporation, US WEST, RE/MAX International, Coors Brewing, Heil Industries, Gemstar/TV Guide, Gateway Computers, ACX Technologies (Coors’ technology offshoot), Kroger Company, Huffy Corporation, and many smaller entities. More detailed information on his litigation and trial experience follows.

I. Patent Experience

• XY, LLC. v. Trans Ova Genetics (D. Colo.) Defended Trans Ova in a two-week jury trial involving patent, licensing, and antitrust issues. The technology involved the sorting of bovine semen based on the sex of the cell using flow cytometry. The jury concluded that plaintiff had unclean hands, which precluded plaintiff from obtaining an injunction and kept Trans Ova in business.
• XY, LLC v. Propel Labs (D. Colo.) – Defended Propel Labs and others in a patent infringement suit where antitrust counterclaims were asserted. The technology at issue was flow cytometry. Case settled prior to trial.
• Veazie v. Gates Corporation, (S.D. Fla.) – Defended Gates and Trico Products in a patent infringement suit involving windshield wiper blade technology. The case settled favorably after fact and expert discovery.
• SSP v. Trico Products Corp., (N.D. N.Y.) – Defended Trico Products Corp. against claims of unfair competition, monopolization, deceptive advertising, and patent infringement involving windshield wiper blade technology. The case settled favorably.
• Omega Patents, LLC v. Directed Electronics, Inc. (M.D. Fla) Defended Directed Electronics in a two-week trial involving a patent licensing dispute brought by Omega Patents, LLC. The technology involved remote start systems for automobiles. While the jury decided in favor of Omega, the damages award was 4% of the damages sought during trial.
• Phillips v. Gateway, Inc., (Utah) – Defended Gateway in a patent infringement suit involving purported defects in floppy disk controllers. The case settled after opening statements.
• Melco Industries v. Ultramatic, (D. Conn.) – First-chaired a two-week patent infringement trial in the field of computer driven embroidery machines. Represented the patent holder. After trial and before a decision from the Court, the case settled favorably and confidentially.
• Rates Technology v. Time Warner Telecom, (E.D. N.Y.) – Defended Time Warner Telecom in a patent infringement suit involving VOIP services. Rates Technology dismissed its suit against Time Warner Telecom after 8 months of litigation.
• EchoStar Communications v. Gemstar/TV Guide, (D. Colo.; W.D. N.C.) – Defended Gemstar/TV Guide along with several firms in connection with antitrust claims involving alleged patent misuse and counterclaims of patent infringement. The technology involved interactive programming guides for cable and satellite technologies.
• Reese v. US WEST, Inc., (D. Colo.; Fed. Cir.) – Defended US WEST along with Jones Day in a patent infringement suit involving a call waiting and caller identification system. US WEST and indemnifiers prevailed on summary judgment at the district court level and prevailed on appeal. No. 02-1633, 2003 U.S. App. LEXIS 3996 (Fed. Cir.).
• ACX Technologies, Inc. and Battelle Memorial Institute v. E.I. Dupont de Nemours, (S.D. Ohio) – Represented ACX and Battelle in a suit against DuPont for theft of patented technology involving polylactide, a biodegradable plastic. The ownership and inventorship of 50 patents were at issue. After extensive discovery, ACX and Battelle entered into a favorable and confidential settlement.
• Unigen Pharmaceuticals v. Perrigo, Inc., Walgreens, and Target, (D. Wash.) – Represented Unigen in a case involving allegations of patent and trademark infringement and breach of contract. The case settled confidentially.
• Seroctin Research & Technologies v. Unigen Pharmaceuticals, Inc. et. al., (D. Utah) – Represented defendants in a patent suit involving nutraceuticals. After 16 months of litigation, the matter settled confidentially the day before trial.
• Fischer Imaging v. Trex Medical, (D. Colo.) – Litigated patent infringement suit for Fischer Imaging, the owner of two patents involving a stereotactic breast biopsy system used for the early detection of breast cancer. The case settled favorably for $32.2 million. The settlement was the fourth largest in the United States for 2002.
• Birtcher Electro Medical Systems, Inc. v. Beacon Labs, Inc., (D. Colo.) – Defended Beacon against trademark and patent infringement claims. After a one-week preliminary injunction hearing, the district court found the term “Argon Beam Coagulator” to be generic and denied Birtcher’s preliminary injunction motion. Decision reported at 738 F. Supp. 417 (D. Colo.). On the patent claims, Birtcher sought $6 million in damages but was awarded none. After a two-week trial, the jury concluded that Beacon did not induce nor contribute to infringement. The case settled favorably after the jury verdict.
• Hell v. The Curotto Can, (N.D. CA; Fed. Cir.) – Represented The Curotto Can in a patent infringement suit involving a hydraulically powered mechanical device used in the refuse handling business. Successfully defended claims of infringement by prevailing in a Markman Hearing on claim construction and on summary judgment. The Federal Circuit affirmed the claim construction per curiam.

II. Trademark/False Advertising Experience

• Gates Corp. v. Dorman Products, (D. Colo.) – Represented Gates in a false advertising suit involving automatic belt tensioners. After 10 months of litigation, Dorman agreed to an injunction whereby it would cease using the accused advertisements.
• RE/MAX v. LendingTree, (D. Colo. 2005) – Represented RE/MAX in a trademark infringement suit. RE/MAX charged that LendingTree’s website referred its customers to non-RE/MAX agents even though a customer specifically requested a RE/MAX agent. Confidential settlement reached.
• RE/MAX International, Inc. – Represented RE/MAX in trademark policing efforts throughout the
• RE/MAX International v. eBay, (D. Colo.) – Represented RE/MAX in a successful litigation against eBay for a national commercial showing RE/ MAX’s trademarks and trade dress. eBay agreed to cease use of the commercial.
• US WEST v. Hatten Communications, (TTAB) – Litigated opposition proceeding for Qwest/US WEST in the PTO to prevent the registration of the mark US East. TTAB granted the opposition and prevented the registration of US East.
• US WEST, Inc. v. US Web, Inc., (D. Colo.) – Successful litigation brought by Qwest/US WEST against US Web for trademark infringement and dilution. After two years of litigation, US West obtained a settlement where US Web selected a different mark.
• US WEST – Filed and settled four trademark policing actions on behalf of its former subsidiary, Media One, which later merged with AT&T. In the settlements, US WEST negotiated with other entities for them to cease use of the mark “Media One.”
• Molson Breweries v. Coors Brewing Co., (E.D. Va.) – Successfully defended Coors in a trademark infringement and trade dress action in the Eastern District of Virginia. On preliminary injunction, the court found no infringement of plaintiff’s rights for Coors’ use of “Artic Ice” and its trade dress. Subsequently, Molson dismissed its claims.
• Eveready Battery Co. v. Adolph Coors Co., (N.D. Ill.) – Successfully defended Coors for parodying Eveready Energizer Bunny commercials featuring Leslie Nielsen. After a day-long preliminary injunction hearing, Eveready lost its claims of copyright, trademark, and trade dress infringement, enabling Coors to air its commercial during the NBA playoffs. Case reported at 765 F. Supp. 440 (N.D. Ill). Eveready dismissed its claims after appellate briefs were filed in the 7^th
• Celestial Seasonings – Policing of Celestial Seasonings’ intellectual property rights throughout the country.
• United Banks of Colorado – Policing of United Banks’ intellectual property rights. Prevailed in U.S. Trademark Office opposition proceeding and settled several federal court actions around the country.
• Snugli, Inc. – Policing of trademark rights through Trademark Office actions and federal court proceedings across the country, including a federal suit in the Southern District of New York against Lever Brothers, Inc.
• Rolex, Inc. v. Samsonite Corp., (S.D. N.Y.; D. Colo.) – Represented Samsonite in litigation involving the trademark “Oyster.” The case settled three days before trial with Samsonite having the continued ability to use the trademark “Oyster” on luggage and receiving a portion of its attorneys’ fees.

III. Commercial Litigation and Miscellaneous Experience

• Gates Corp. v. CRP Indus., Inc. (D. Colo.) Represented plaintiff Gates Corporation in a major trade secrets case where the defendant competitor was accused of stealing and using Gate’s proprietary parts database. After lengthy discovery and piercing the attorney client privilege due to the crime/fraud exception, Gates received a confidential and favorable settlement.
• Univera, Inc. v. Qivana, Inc., (D. Wash. and D. Utah) – Litigated two cases involving theft of trade secrets and breach of contract in the multi-level marketing area. Cases settled confidentially during discovery.
• ACX Technologies v. Merrick & Company, (State Ct. Colo.) – Litigated construction suit involving pilot plant for the manufacture of polylactide (the technology involved in the DuPont suit noted above). After two years of litigation, obtained confidential settlement for ACX.
• Melco Industries (W.D. Pa., N.D. Tex) – Prosecuted several copyright suits against companies which pirated Melco’s software.
• Shoppin’ Bags of Pueblo, Inc. v. Dillon Cos., (D. Colo.) – Second-chaired the defense of Dillon Cos., a supermarket chain, charged with predatory pricing. After a two-week trial, the jury found in favor of defendant. Drafted appeals brief and prevailed on appeal. Decision reported at 783 F.2d 159 (10th Cir.).
• McClennan v. The Telluride Company, (D. Colo.) – Successfully defended an antitrust suit against the Telluride ski resort. Filed counterclaims alleging sham exception to Noer-Pennington doctrine and obtained successful settlement.
• United States v. Barnett (D. Md.) Supervised an investigation and negotiated a plea bargain with a CIA case operative in Indonesia selling secrets to the KGB which exposed the identity of case agents and U.S. knowledge of Soviet submarines.
• United States v. Kampiles, (N.D. Ill.) – Successful espionage prosecution of CIA case agent who sold a manual of a spy satellite system to the KGB in Greece. As a first-year lawyer, participated extensively in trial preparation, wrote appellate brief, and argued appeal to the 7th Circuit along with the U.S. Attorney. Decision reported at 609 F. 2d 1233 (7th Cir.).