Kelly W. Cunningham

Kelly has over 25 years of experience in patent, trademark, and copyright infringement litigation, spanning numerous district courts and appellate courts throughout the country. He is well respected by courts and opposing counsel alike for coming up with creative solutions for resolving disputes in his clients' favor.

Kelly is also experienced in all aspects of IP strategies, procurement, analysis, protection, and enforcement of his clients' intellectual property rights under patent, copyright, trademark, and trade secrets law. He has served clients in countless industries, such as high tech, medical, medical devices, cosmetics, design, sports, publishing, photography, alternative energy, air purification, aviation, automotive diagnostics, manufacturing, consumer electronics, music and entertainment.

Kelly worked with members of the U.S. House of Representatives Subcommittee on Intellectual Property Law as an intellectual property lawyer and patented inventor, himself, helping to draft portions of the 2012 Leahy-Smith America Invents Act.

Defended one of my clients in a lawsuit in which it was alleged to have infringed five trademarks and four trade dresses. Secured insurance coverage for my client as well as its customer, a major Fortune 500 retailer. After expert discovery and a very involved series of evidentiary and dispositive motions, I reached a settlement the plaintiff that was very favorable to my client, resulting in a settlement amount that was less the 1% of what the plaintiffs had originally demanded.

Defended patent in a reexamination proceeding before the United States Patent and Trademark Office (USPTO). This was the second time this German company sought to invalidate my client’s patents. The USPTO to agreed a second time to reexamine the patent, and initially cancelled all patent claims. After an interview with the panel of three examiners, I filed a response to the office action, and the examiners reversed their initial decision and instead reaffirmed the validity of all of my client’s previously granted patent claims and granted an additional thirteen patent claims.

Litigated trademark infringement over a trademark and logo for a sports league. Negotiated settlement of the suit on very grounds favorable to my client.

Defended patent in a reexamination proceeding before the United States Patent and Trademark Office (USPTO). A German company wanting to supply drill bits to the U.S. filed a request for the USPTO to reexamine the patent, and the USPTO initially agreed, issuing an office action that would cancel all but two of the patent’s claims. After an interview with the panel of three examiners, I filed a response to the office action, and the examiners reversed their initial decision and instead reaffirmed the validity of all of my client’s previously granted patent claims and granted an additional eight patent claims.

In a lawsuit in which my client had alleged trademark and trade dress infringement, the defendant counterclaimed alleging my client infringed more than 90 patent claims spanning multiple patents. I was brought in because the patent dispute presented significant for the client in the action. I commissioned two separate patent invalidity searches, one building upon the results of the other, and then successfully demonstrated how we would invalidate nearly all 90 patent claims, leaving only a few patent claim that my client clearly did not infringe, and thereby negotiated a settlement of all claims in the action on terms very favorable for my client.

In a dispute in which a major record label claimed my client infringed 64 registered copyrights by reposting 50 influencer videos, some for over three years, I negotiated the high-seven figure demand down to six figures, and I then got the client’s insurer to pay nearly the entire amount.

In a dispute, in which my client alleged a competitor was infringing its AERO trademarks, I successfully negotiated a settlement of the dispute on terms very favorable for my client.

In a lawsuit alleging trademark infringement, false designation of origin, and common law trademark infringement, I successfully negotiated transfer to other district, and the parties reached a settlement of all claims in the action on terms very favorable for our client.

In a suit in the Central District of California alleging trademark infringement, false designation of origin, and common law trademark infringement, I successfully negotiated a settlement of all claims in the action on terms very favorable for my client.

In another action, in a hard-fought action, on the eve of filing our summary judgment motion, I reached a settlement of all claims and counterclaims in the consolidated actions on terms very favorable to my client.

In a trademark registration dispute, I successfully threatened the commencement of a trademark opposition proceeding before the United States Trademark Trial and Appeal Board on the grounds of my client’s digital media business and federally registered and incontestable ROCKET BOY trademark.  I successfully reached a settlement of all claims in the action on terms very favorable for my client.

In an action I filed in the Western District of Washington alleging patent infringement, I also successfully defended client against counterclaims of patent infringement and unfair competition. I successfully litigated the case leading to a settlement of all claims and counterclaims in the action on terms very favorable to my client.

In an action, I filed suit in the Central District of California against a competitor, based in Ohio, for infringing my client’s trademark.  The competitor/defendant filed a motion to dismiss or transfer for lack of personal jurisdiction.  The Court found we had made a prima facie showing of personal jurisdiction over the defendant by alleging that it (1) willfully infringed in this judicial district and showing (2) that its website includes several news articles and promotional advertisements targeted at this district and (3) that it was aware that my client’s principal place of business is in this district.

The competitor also filed a separate suit in the Southern District of Ohio against my client, alleging infringement of its trademark.  I filed a motion to dismiss or transfer on the grounds that we had filed first in the Central District of California and for the Ohio District Court’s lack of personal jurisdiction over our client.  The Ohio District Court granted our motion, holding that, contrary to the competitor’s arguments in its opposition, my strategy of filing a surprise complaint in the California District Court while at the same time attempting to negotiate a resolution with the competitor’s counsel, without more, is not evidence of bad faith conduct when deciding whether or not to apply the first-to-file rule.

I filed suit in the Western District of Washington alleging patent infringement and defended client against counterclaims of patent infringement and unfair competition.  The parties successfully reached a settlement of all claims and counterclaims in the action, and the entire action was dismissed with prejudice.

A trademark applicant filed an application with the United States Patent and Trademark Office for registration of its LASH and Design trademark.  I initiated a trademark opposition proceeding at the Trademark Trial and Appeal Board opposing the registration, arguing that registration of the applicant’s trademark would harm my client’s business since my client already uses a similar, senior trademark.  After trial in which we submitted evidence of the strength of our client’s trademark, similarity of the trademarks, similarity of the goods, and similarity of the channels of trade, The Trademark Trial and Appeal Board agreed and entered judgment in our client’s favor.

In an action in in the District of New Jersey, a competitor alleged infringement of three patents, two software copyrights, and one trademark, as well as alleging unfair competition, product disparagement, and reformation of contract against my clients.  I researched the invalidity of the asserted patents and prepared two inter parties patent reviews for filing, threatened to file them within days, and the parties reached a settlement of all claims in the action before my threatened filing date. The entire action was dismissed with prejudice.

A $1B company, which had used a given trademark for cosmetics for nearly 20 years, challenged my client’s use of the trademark for clothing. I developed the argument that my client’s use is not infringing and, moreover, the opposing parties’ delay in challenging my client’s use (nearly five years after my client had federally registered the trademark for clothing) was unreasonable delay, barring the lawsuit. The Ninth Circuit Court of Appeals affirmed the District Court’s judgment.

Filed suit for patent infringement against a competitor, its distributor, and a number of studios for infringing our client’s patent concerning the switchable bi-color LED tubes widely used in the movie industry.  One of the studios filed a motion to dismiss alleging that the patent was invalid.  The Court denied the studio’s motion, agreeing with our client that the complaint and the patent are not subject to a dismissal on patent invalidity grounds.

The defendants then filed a motion for summary judgment arguing that my client’s patent was invalid based on defendant’s proffered evidence, namely, an invoice, an undated photograph, and a declaration of the photographer alleging that the undated photograph was taken at the time of the invoice, long before the patent’s priority date.  The Court denied the motion, agreeing with my showing that the photograph, invoice, and declaration were not sufficient to invalidate the patent as a matter of law.

My client retained me to appeal a default judgment that it had received while being represented by other counsel.  On appeal, we obtained a decision that greatly narrowed the judgment, reducing the district court’s injunction of “any substantially similar” product to an injunction of only any product that “actually infringes;” removing the district court’s requirement that Tile Tech hand over its molds; and replacing the district court’s prohibition on “using images of United’s products and drawings” to simply prohibiting any misrepresentation or false identification of United products as its own.

Litigated a patent infringement action for our client, the patent owner, to a consent judgment and settlement agreement favorable to our client.

Represented a defendant in a copyright infringement suit involving a popular soccer chant in a Volkswagen commercial that aired during the 2014 FIFA World Cup, reaching settlement that was very favorable for client.

The Court of Appeal for the Federal Circuit affirmed a jury’s verdict against Apple’s FaceTime for infringing several of the plaintiff’s patents for VPN secure communications protocols over the internet. Representing co-plaintiff, a leading defense and national security company who held a reversion right on the patents, we prepared a number of opinions of counsel that Apple’s FaceTime indeed infringes these patents. Also drafted the patent infringement-related deposition questions and jury instructions. Four trials ensued, accruing total damages awards in excess of $1 billion.

Represented a client defending against a utility patent infringement action.  Reached a settlement agreement favorable to our client.

Represented one of the world’s largest iPhone case manufacturers against patent infringement allegations by one of the largest iPhone case manufacturers in the United States.  I demonstrated how our client’s mobile phone cases do not infringe the patent, leading to a very favorable settlement for my client.

Represented a leading music instruments company in defending against a trademark infringement suit. We reached a favorable settlement for our client.

Demonstrated all of the ways that our client’s patent remains valid over the defendants’ myriad of prior art, leading to a favorable settlement for my client.

Litigated a utility patent infringement action for our client, reaching a settlement agreement favorable to our client.

Drafted and prosecuted patent applications for client’s anti-viral compositions and methods.  The Patent Examiner initially rejected our patent claims based on prior art. We then appealed the final rejections to the Patent Trial and Appeals Board, where we prevailed on a pre-appeal brief request for review, resulting in a quick reversal and a patent, followed by three other U.S. patents and five patents in Europe and other countries covering the client’s innovative composition and methods.

Wrote the winning brief, for Walgreens, persuading the Federal Circuit Court of Appeals to reverse its own precedents spanning over 25 years and establish a new test that all district courts now must apply to determine whether a design patent is valid or invalid.

Wrote the winning brief that the Federal Circuit Court of Appeals adopted establishing the test that all district courts throughout the country must now apply when interpreting the scope of design patents.

We developed and argued a theory of antitrust violation for tying the sale of patented printer cartridges to the sale of unpatented ink, which the Federal Circuit Court of Appeals adopted in part and then reached the United Supreme Court.

Our client was sued in the Central District of California for patent infringement.  I got the suit dismissed on the grounds that the Court had no personal jurisdiction over our client even though its predecessor was involved in unsuccessful merger negotiations with a California corporation that was headquartered in the Central District of California.

We got the District Court in Texas to stay that case in favor of the parallel case we had filed in the Central District of California.

Got the Federal Circuit to affirm summary judgment that all 45 retail defendants had infringed client’s patent and that the product supplier had infringed willfully.

The Ninth Circuit adopted our argument that the liquidation damages clause in dispute was an invalid penalty because the amount bore no reasonable relationship to the range of actual damages the parties could have anticipated arising from the alleged breach of contract.

Obtained preliminary injunction prohibiting the defendant from selling numerous necklace charms and pendants on the grounds our client was likely to prevail on its copyright infringement claim.  Uncovered evidence deep in the record that disproved defendants’ claim that they had the earlier creation date.

Uncovered a detail deep in the prosecution history of the asserted patent that supported our proposed narrow construction of patent claims, which would have cleared client from infringement decisions.  The Federal Circuit Court of Appeals specifically commented that the detail from the file history indeed created a “close call.”

In order to extend our client’s CORONA EXTRA trademark registrations to clothing, we petitioned to cancel a federal trademark registration for CORONA for clothing owned by R.B. Marco.  We demonstrated to the Trademark Trial and Appeal Board’s satisfaction that R.B. Marco had fraudulently altered its sales records to hide the fact that it had abandoned the mark.  As a result, the Trademark Trial and Appeal Board canceled R.B. Marco’s federal registration.

Honors & Recognitions

Southern California Super Lawyers, 2020-2024

Southern California Rising Stars, 2005

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