Russell Petersen

Russell C. Petersen

Senior Counsel

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Intellectual Property
Intellectual Property
San Francisco

Russ is a registered patent attorney with a degree in mechanical engineering, and he has broad experience in both the mechanical and electrical arts. His practice focuses on resolving intellectual property disputes, including patent infringement litigation and counseling, trademark and trade secret disputes, and technology-related commercial disputes. He also has experience with both U.S. and international patent prosecution.

Russ is skilled in all phases of litigation, from pre-litigation counseling through trial, and including appeals to the Federal Circuit, the Ninth Circuit, and the California Courts of Appeal. He has prepared successful motions on claim construction (Markman) and summary judgment on infringement and validity issues. He has litigated in federal courts, state courts, the International Trade Commission, and in arbitration, and he has successfully mediated several cases. Russ has litigated in diverse technical fields, including semiconductors, microprocessors, food processing equipment, software, consumer audio products, encryption, and mechanical devices. Some of his reported decisions include:

  • Vistan Corp. v. Fadei USA, Inc., 2013 U.S. App. LEXIS 24005 (Fed. Cir. Dec. 3, 2013)(Federal Circuit reversing district court’s erroneous claim construction and remanding);  
  • Bass Pro v. Cabela's, 485 F.3d 1364 (Fed. Cir. 2007) (Federal Circuit reversing the district court and holding that patentee's amendments to the preamble limited the scope of the patent and required a finding of non-infringement); 
  • Merida-Alvarado v. Holder, 379 Fed. Appx. 608 (9th Cir. 2010) (appellate court withdrawing its previous memorandum disposition); 
  • Embs v. Jordan Outdoor Enters., 617 F.Supp.2d 680 (S.D. Ohio 2008) (dispositive claim construction resulting in withdrawal of law suit); and 
  • Engate v. Esquire, 2003 U.S. Dist. LEXIS 15802 (N.D. Ill. 2003)(summary judgment of no direct infringement based on divided infringement).

Some other of his representations include:

  • Golden Gate Bridge, Highway & Transportation District v. Richard Bulan, No. 13-979 (N.D. Cal.) (trademark dispute regarding Golden Gate Bridge);
  • In re Certain Laser Abraded Denim Garments, Inv. No. 337-TA-930 (U.S. ITC) (representing Levi Strauss & Co. in patent dispute over laser abraded denim);
  • PharmaInvest, LLC v. Aminopterin, LLC, No. CGC-14-540584 (S.F. Sup.) (commercial dispute in joint venture); and
  • Monster Cable Products, Inc. v. Skullcandy, Inc., No. 100500999 (Utah 3d Dist.)(trade secret dispute over former employee)

Russ is also experienced in prosecuting patent applications before the U.S. Patent and Trademark Office and brings this knowledge to his counseling and litigation matters. He has been involved in the prosecuting more than 100 patent applications in such fields as medical devices, manufacturing equipment, office products, and lithographic printing. He has also authored several opinions of counsel regarding invalidity and non-infringement. Examples of his prosecution work include the following: 

  • US Patent No. 6,511,405 (prepared ex parte reexamination request to patent held by competitor that resulted in severe narrowing of claims);
  • US Reissue Patent No. RE40,631 (prosecuted high-value reissue application after patent had been subject of successful interference proceeding); and
  • US Patent No. 7,179,087 (prosecuted patent titled, "Medical or Dental-Medical Handpiece Having a Rearward and a Forward Handpiece Section"). 
Russ is particularly proud of the pro bono work he did on behalf of an asylum seeker. He took on the case after the applicant had lost his appeal at the Ninth Circuit and was two weeks from being deported. Russ moved the Court to stay its mandate and moved the Board of Immigration Appeals to reopen the proceedings based on new evidence and the ineffectiveness of prior counsel. Instead of merely staying the mandate, the Ninth Circuit withdrew its prior opinion; the Board then granted the motion to reopen, thereby allowing the applicant a new trial.

Publications

"Supreme Court Doubles Down on Patents and Addresses Standards for Both Definiteness and Inducement On the Same Day," co-author, Technology Law Alert (June 2014)

"The House Passes Substantive Patent Reform Aimed at So-Called Patent Trolls; Action in the Senate Awaits," co-author, Technology Law Alert (January 2014)

"Retracing 'Mental Steps' To Software Patent Eligibility," Law360 (October 2013)

"E-Discovery: Computer-assisted coding is a powerful tool to control complex case e-discovery costs," co-author, InsideCounsel (May 2012) 

"E-discovery: Popular patent venue in Texas adopts model order to rein in e-discovery costs," co-author, InsideCounsel (April 2012) 

"Supreme Court: New Ruling On Patentable Subject Matter," co-author, Hanson Bridgett IP Alert (March 2012) featured in Bar Association of San Francisco’s counsel Newsletter (May 2012)

"Getting Out of the Eastern District of Texas," co-author, IP LAW360 (April 2011)

"A Patently Good Idea: Recent Court Rulings Highlight the Importance of Legal Counsel in Order to Avoid Patent Infringement Claims," co author, MX: Medtech Executive (August 2010)

"Federal Circuit Gives Claim Term Plain Meaning, Despite 'Yielding an Absurdity'," ACC Lexology (June 2010)

See All Publications

Presentations

"Protecting IP," Keiretsu Entrepreneur Academy (January & February 2015)

"Protecting IP," Keiretsu Forum (May & August 2013)

See All Presentations

Professional Affiliations

San Francisco Bay Area Intellectual Property American Inn of Court

Federal Circuit Bar Association, Patent Pilot Subcomittee

Bar Association of San Francisco, Intellectual Property Section

Academic Distinction

Member, Public Contract Law Journal at George Washington University

Education

J.D., George Washington University Law School (2001)

B.S., Mechanical Engineering, University of Wisconsin (1995)

Admissions And Courts

California

Illinois

U.S. Patent and Trademark Office

U.S. Court of Appeals for the Federal Circuit

U.S. Court of Appeals for the Ninth Circuit

U.S. District Court for the Northern District of California

U.S. District Court for the Central District of California

U.S. District Court for the Northern District of Illinois

U.S. District Court for the Eastern District of Texas

San Francisco

415-995-5816 Direct Phone
415-995-3530 Fax

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