Kathryn C. Thornton

• Regularly represents international clients (including from alcohol beverage industry) before the Trademark Trial and Appeal Board to protect geographical indications as registered and common law certification marks. Assess the strength of client’s certification mark and methods for improving the strength of that mark in the United States.
• Teradyne, Inc. v. Astronics Corp. (9th Cir.): Representing Teradyne, Inc., a leading supplier of automation equipment for test and industrial applications, in appeal of district court’s grant of summary judgement to Appellee Astronics on fair use of Teradyne’s copyrighted software.
• Bureau National Interprofessionnel du Cognac v. Cologne & Cognac Entertainment (Fed. Cir.): Successfully obtained vacatur and remand to TTAB for claims of likelihood of confusion and dilution for common law certification mark COGNAC in decision setting precedential law on scope of protection for certification marks.
• Upsher Smith Labs., LLC. v. Zydus Pharmaceuticals (USA) Inc. (D. Del.): Secured favorable settlement on behalf of Upsher Smith in action alleging breach of patent license and settlement agreement.
• Hermes Int’l v. Rothschild (2d. Cir.): Advised leading Restaurant Brand on amicus concerning interplay of the First Amendment’s protection of free speech and Lanham Act’s protection for trademark rights.
• Collision Communications, Inc. v. Nokia Corp. (D.N.H.): Represented Collision Communications in a breach of contract and promissory estoppel case against Nokia. After a two-week trial, the jury found for Collision on all counts and awarded $23 million in damages.
• Collision Communications, Inc. v. Nokia Corp. et al.; Collision Communications, Inc. v. Telefonaktiebolaget LM Ericsson et al. (E.D. Tex.): Represented Collision Communications in two actions in the Eastern District of Texas involving infringement of multiple 3G and 4G/LTE patents by Nokia’s and Ericsson’s cellular infrastructure products and services, where we obtained highly favorable settlements for Collision on the eve of trial.
• A Multinational Electronics Company v. Imperium IP Holdings (Cayman), Ltd. (D. Del., ITC): Secured favorable settlement in multijurisdictional litigation concerning claims of patent infringement, trade secret misappropriation, and breach of contract.
• Advised American investment management firm on claims for defamation and publicity rights concerning portrayal of the company and its employees in popular streaming series.
• Teradyne, Inc. v. Astronics Corp. (C.D. Cal.): Represented Teradyne, Inc., a leading supplier of automation equipment for test and industrial applications, in a case raising patent, copyright, and state law claims against Astronics Corp. and a subsidiary.
• Advised one of the world’s leading multi-asset alternative investment firms in district court litigation alleging trademark infringement concerning a celebrity chef and a family of marks for food and restaurant services.
• SIPCO, LLC v. Emerson Electric Co. (Fed. Cir.): Obtained affirmance of PTAB’s decision in inter partes review to cancel all challenged patent’s claims.
• Prairie Land Millwright v. Sioux Steel (Fed. Cir.): Obtained affirmance of PTAB’s decision in inter partes review that a patent for grain bin sweep was not obvious.
• On behalf of multiple defendants facing allegations of patent infringement, sought petitions for writ of mandamus by the U.S. Court of Appeals for the Federal Circuit to transfer litigation from the Eastern District of Texas.
• Represented the world’s leading consumer electronics company in interrelated appeals at the U.S. Court of Appeals for the Federal Circuit resulting from inter partes review proceedings involving several patents directed towards methods and systems for transferring data between computers/host devices and data transmitting/receiving devices.
• Asserted claims under the Lanham Act on behalf of a global pharmaceutical company in the Northern District of California against competitors’ false and misleading marketing of unapproved drug products as FDA-approved generics for client’s NDA-approved prescription drug. Defended against claims of antitrust and state law violations. Represented the same client in a related lawsuit in a Section 337 investigation at the International Trade Commission.
• Represented a global life sciences company in false advertising litigation in the District of New Jersey concerning a competitor’s advertisements about insurance coverage for our client’s products.
• Advised major pharmaceutical companies on presentation of information, including drug prices and prescription claims, in direct-to-consumer advertising.

Pro Bono

• M.M.C. et al v. United States (D.R.I.): Lead counsel, representing two families bringing FTCA claims against the United States for their mistreatment and separation at the border under the Zero Tolerance Policy.
• Representing family seeking asylum in the United States.
• Coordinating partnership with leading medical device company to represent veterans in appeals concerning award of benefits at the Court of Appeals for Veteran Claims.
• Obtained remand for veterans from the Court of Appeals for Veteran Claims concerning their claims for benefits.
• Secured discharge upgrade for veteran discharged for substance abuse issues caused by PTSD obtained in the course of duty.
• De Fontbrune v. Wofsy (9th Cir.): Argued on behalf of amici, including The Project Gutenberg Literary Archive Foundation, Electronic Frontier Foundation, Center for Democracy & Technology, Authors Alliance, and Public Knowledge concerning enforcement of foreign copyright judgments in the United States.