Experience

Donald Bartels focuses his practice on intellectual property and litigation. He has counseled clients in all aspects of patent, trademark and copyright law, including preparing and prosecuting trademark registration applications and representing clients in opposition and cancellation proceedings before the U.S. Trademark Trial and Appeal Board. He has represented plaintiffs and defendants in diverse patent, trademark, copyright, and trade secret litigation matters in numerous federal court jurisdictions as well as before the United States International Trade Commission.

Donald Bartels has prepared and prosecuted numerous patent applications and counseled clients in the patenting of inventions in such technical fields as computer hardware and software, electronic systems and circuits, integrated circuits and semiconductor processing, optical devices, medical devices, wireless telecommunications systems and business methods. He has conducted prior art searches and advised on the patentability of inventions, conducted right-to-use investigations and provided opinions as to the validity of a patent and whether or not the claims of a patent are infringed.  Mr. Bartels has also trained and supervised others in patent and trademark matters.

Mr. Bartels’ experience in the area of intellectual property transactions includes preparation of confidentiality agreements, assignments, licenses, and the conducting of due diligence reviews of patent and trademark rights involved in merger, acquisition and financing transactions.

Employment

 2010 to present          BARTELS LAW GROUP, Founder and
                                    Principal

2005 to 2009              Nixon, Peabody, LLP, Partner and
                                   Senior Counsel

1995 to 2005              Coudert Brothers LLP, Partner

1989 to 1995              McCubbrey, Bartels & Ward, Founding
                                   Partner 

1979 to 1989              Fitch, Even, Tabin & Flannery, 
                                   Associate and Partner 

1975 to 1979              Phillips, Moore, Weissenberger, 
                                        Lempio & Strabala, Associate 

Recent Representative Litigation Matters

• Mountz, Inc. v. Northeast Industrial Bolting and Torque, LLC., (N.D. Cal.) (2016):  Successfully represented plaintiff Mountz, Inc. in a federal trademark infringement action. Default judgment obtained against defendant.
  

• Defended franchisor of Monster mini-golf course concept and one of its franchisees in federal trademark infringement and unfair competition case brought by Monster Cable, Inc. in the E.D. of CA (2008) claiming that its various MONSTER trademarks were being infringed.  Monster Cable had allegedly accumulated a portfolio of licenses and trademark rights to use the word "Monster" in connection with various business applications.  The case settled on favorable terms resulting in dismissal
  
• Represented Carl Zeiss Meditec, Inc., a medical device manufacturer, in a trade secret misappropriation and unfair competition case filed as a declaratory judgment action in the N.D. of CA (2007) by a competing company founded by former employees.  The case settled on favorable terms resulting in dismissal.
• Lam Research Corporation v. Verity Instruments, Inc., (N.D. Cal.) (2006): Represented Lam Research Corporation in a patent infringement action involving optical endpoint detection systems.
• Eastman Kodak Co. v. Filmlight U.K. and Filmlight Digital Film Technology, Inc., United States District Court, S.D.N.Y. (2006): Represented plaintiff Eastman Kodak in patent infringement litigation involving digital film scanners and a method and system for multi-sensor signal detection.  Case settled after mediation.
• Adrain v. Hypertech, Inc. (D. Utah)(2001-2003): Represented Hypertech in a patent infringement action in the District of Utah.  The plaintiff asserted two patents directed to apparatus and software for modifying the vehicle engine tuning contained in a vehicle's Engine Control Module.  Obtained stipulated judgment after a favorable Markman hearing.  Reversed on appeal by the Federal Circuit.  Case settled favorably after mediation.
• Flying J v. Central California Kenworth, et al. (E.D. Cal.) (2000): Represented Flying J in a copyright infringement action that resulted in a multimillion dollar jury verdict in favor of Flying J.
• Hewlett-Packard v. Nu-kote (N.D. Cal.)(1999-2001):  Represented Nu-Kote in a patent and trademark infringement action.  Numerous patents on ink formulations and ink cartridges for ink jet printers were asserted against Nu-Kote. Case settled after trial and numerous summary judgments in favor of Nu-kote.
• Canon v. Nu-kote (C.D. Cal.)(1999-2001):  Represented Nu-Kote in a patent and trademark infringement action. Numerous patents on ink and ink cartridges for ink jet printers were asserted by Canon against Nu-Kote. Case settled after summary judgment on invalidity of critical ink patent.
• Seiko-Epson v. Nu-kote (C.D. Cal.)(1999-2001):  Represented Nu-Kote in a patent and trademark infringement action.  Numerous patents on ink cartridges for ink jet printers were asserted against Nu-Kote. Case settled after partial summary judgment in favor of Nu-kote.

Speaking Engagements and Publications

Mr. Bartels is a frequent speaker, presenter and writer on diverse intellectual property issues including the following:

• Moderator and Speaker, "Intellectual Property for the Business Lawyer," California CEB, May, 2009, San Francisco, CA.
• Moderated and spoke on copyright fair use on a panel that covered the topic:  "Intellectual Property Issues for Content Distributors" in the November, 2007 IPED Seminar:  "Managing Intellectual Property in the Digital Media Space:  Don't Let the Genie Out of the Bottle!"
• “Open source software now comes with patent free ride; digital rights management also affected”, Nixon Peabody Intellectual Property Alert, November 2007.
• Spoke on the topic: “Google Book Search: The Library Project—Copyright Infringement or Fair Use?" on a panel that also included USF Law School Professors J. Thomas McCarthy and David Franklin, USF Alumni Education Program, October, 2006.
• CEB Lecturer, “Patent Law for the General Practitioner”, 2006, 2002, and earlier years. Wrote related seminar materials.
• ANZA Technology Network Conference, Panel of Legal Experts, “Navigating The Legal Minefield”, October 2004, Palo Alto, California.
• ITRI (Industrial Technology Research Institute) Presentation, “Lessons from a Patent Litigator’s Perspective”, June 2004, Taiwan, ROC.
• Presentation, “Name Selection and Brand Promotion:  Trademarks and Trade Names” and on the topic of “An Ounce of Prevention: Confidentiality Agreements”, October 2003, San Jose, California. Coauthored articles as part of seminar materials.
• Presentations to Business and Legal Groups, “U.S. Intellectual Property Rights – What You Need To Know To Avoid Infringing The Intellectual Property Rights of Others; What You Need To Know To Protect Your Intellectual Property Rights From Infringers”, September 2003, Hong Kong and Shanghai, People’s Republic of China.
• Coauthor with Alasdair McLean, “Research Patents: Painkiller Patent Creates Uncertainty for Universities”, IP Asia Magazine, May 2003, Vol. 2, Issue 4.
• Author of an article on intellectual property law entitled “Maximize Product Value by Coordinating Patent and Trade Dress Protection”, Coudert Brothers International IP News, April 2002.

Education

Admissions

Mr. Bartels is admitted to practice in California, the Court of Appeals for the Ninth Circuit, the Court of Appeals for the Federal Circuit, the U.S. district courts in the Northern, Central, and Eastern districts of California, and the U.S. Patent and Trademark Office.

Affiliations

Mr. Bartels is a member of the State Bar of California and its Intellectual Property Section (Member, Executive Committee 1987-1989, Chair 1989), and the American Bar Association.  He is also a member of the American Intellectual Property Association (AIPLA), the International Trademark Association (INTA), the Institute of Electrical and Electronics Engineers (IEEE), and the Eta Kappa Nu Engineering Honor Society.