Knobbe/Martens: Intellectual Property Law

Automotive, Transportation & Power Sports

Successes

AMP Research: Bed Extender
Knobbe Martens was instrumental in securing patent protection for AMP Research's BED X-TENDER, used to increase the effective length of pick-up trucks. To date, Knobbe Martens has worked with AMP to develop and implement a strategy that has resulted in AMP being granted over 17 U.S. patents for key aspects of the BED X-TENDER technology. Knobbe Martens successfully negotiated a license agreement with a major tier one supplier, resulting in AMP receiving millions of dollars in royalties, while being free to continue to sell the BED X-TENDER in the aftermarket.

Knobbe Martens has also successfully asserted the BED X-TENDER patents on behalf of AMP in patent infringement litigation in which it obtained summary judgment of infringement against E-Z Load. This later resulted in AMP securing a permanent injunction and a final judgment awarding AMP damages equal to 25% of gross sales, as well as attorneys’ fees.

In the Matter of Certain Personal Watercraft and Components
We represented Yamaha in an ITC investigation against Bombardier Inc. on Yamaha’s watercraft patents. The case progressed through a four-week hearing before the ALJ. Just before the ALJ’s initial determination was issued, the parties settled.

AMP Research: PowerStep Brand Retractable Running Board 
Knobbe Martens negotiated a license agreement with a major tier one automotive manufacturer, resulting in AMP receiving upfront payments in excess of $1,000,000 and millions of dollars in secured patent protection AMP's BED X-TENDER used to increase the effective length of pick-up trucks. Again, this license reserved for AMP the right to sell its retractable running boards in the aftermarket, resulting in substantial additional profits for AMP. 

To date, Knobbe Martens has worked with AMP to develop and implement a strategy that has resulted in AMP being granted over 22 U.S. and foreign patents for its retractable step technology.

Knobbe Martens has successfully asserted the retractable running board patents in Federal District Court litigation on behalf of AMP, resulting in AMP's competitor agreeing to entry of a permanent injunction against it.

AutoAlert, Inc.
Represented AutoAlert, Inc. in defeating five petitions for inter partes review (“IPR”) filed by competitor Dominion Dealer Solutions LLP challenging the validity of AutoAlert’s patents related to lead generation for automotive dealerships. Knobbe Martens convinced the Patent Trial and Appeal Board to uphold the validity of all five — a rare feat, amounting to one quarter of all IPR petitions denials in 2013. Dominion was subsequently unsuccessful in its appeals to the District Court and in a petition for writ of mandamus at the U.S. Court of Appeals for the Federal Circuit.

Automobile Club of Southern California v. The Auto Club
The firm successfully represented the Automobile Club of Southern California in obtaining summary judgment that the defendants were unfairly competing by operating as a motor club in the State of California without the required license from the Department of Insurance. The Court enjoined the defendants from further operations in California. The firm then successfully defended against the defendants’ motion for summary judgment that the mark AUTO CLUB was generic. The Court found that the firm had introduced sufficient evidence that consumers viewed the mark as a brand and that the defendants’ use of the name “The Auto Club” was causing consumer confusion. Published decisions at 2007 WL 704895 (C.D. Cal. Jan. 3, 2007); 2007 WL 704892 (C.D. Cal. Mar. 6, 2007); 2007 WL 909599 (C.D. Cal. Mar. 15, 2007)

Bassani Manufacturing v. Monty Allen Campbell
Successfully opposed application to register the mark X-PIPE for exhaust products on the ground that the mark was generic. Upheld on appeal to Federal Circuit.

Ferrari S.p.A.
Represented Ferrari against a counterfeit car manufacturer in patent, trademark and trade dress infringement cases resulting in a contempt judgment, permanent injunction and an award for attorneys’ fees and costs for Ferrari.

Kruse Technology Partnership v. Caterpillar
Represented plaintiff in patent litigation over diesel engine combustion technology, defeated Caterpillar’s summary judgment of non-infringement and invalidity, negotiated settlement before trial (December 2008).

Magnetar Technologies Corp.
Intamin, the largest amusement park ride manufacturer in the world, repeatedly enforced its patents on magnetic braking systems without challenge until it sued Magnetar, a local start-up aggressively defended by Knobbe Martens. In November 2010, the Federal Circuit ruled in Magnetar's favor, summarily affirming a judgment of unclean hands. The firm ascertained that a recorded patent assignment was forged by Intamin, which lead to unclean hands and an attorneys’ fee award.

Maret v. Works Connection, Inc., et al.
Resolved action in favor of Works Connection relating to infringement of a pin-style “hole shot” device for motorcycle racing. Defendant was ordered to cease sales of EZ Holeshot pin-style device.

STAR EnviroTech, Inc. v. Redline Detection Inc.
STAR EnviroTech, Inc. designs and develops tools for testing vehicle evaporative emission control systems. We successfully defended STAR’s patent against an inter partes review (“IPR”) filed by STAR’s competitor Redline Detection, Inc. The Patent Trial and Appeal Board initially determined that Redline had demonstrated a reasonable likelihood of proving at least one of STAR’s patent claims unpatentable.  But as a result of persuasive evidence and arguments, Knobbe Martens successfully defended STAR’s patent, making its client STAR one of only a small percentage of patent holders to survive an IPR with all claims intact. In a 33-page precedential decision, the Federal Circuit affirmed the PTAB’s decision.

Superformance International, Inc.
Obtained summary judgment dismissing Carroll Shelby’s claims of trade dress rights in the shape of Cobra vehicles, which resulted in the court dismissing a trade dress claim, dilution claim, and counterfeiting claim. In addition, the court denied Shelby and Ford’s motions regarding trademark infringement. 

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