Yasamin Parsafar

Overview

Yasamin Parsafar is a partner in the Intellectual Property Practice Group in the firm's San Francisco office and is Co-Leader of the firm’s Blockchain & Fintech Team.

Areas of Practice

Yasamin’s practice focuses on protecting her clients’ intellectual property rights through counseling, prosecution, enforcement and litigation. Yasamin uses her litigation experience to strengthen and protect her clients’ intellectual property, manage risks, and position businesses to succeed in the event of a dispute. She frequently advises and protects brands on their journey into web3.0 and counsels various web 3.0 platforms, from games to marketplaces, on compliance and risk management.

IP Advice and counseling: Yasamin frequently advises companies venturing into the use of blockchain technology on various issues related to non-fungible tokens, metaverses, games, online marketplaces and other platforms. These projects involve copyright, trademark, trade dress, and domain issues, which Yasamin regularly advises on, including in connection with minting agreements, license agreements, joint IP development agreements, and marketplace agreements.

Trademark/Copyright Prosecution and brand development: Yasamin develops and manages international trademark portfolios and prosecutes trademark matters before the USPTO and the TTAB. She frequently advises clients on developing and strengthening their trademark rights and works with counsel around the world to help protect her clients’ portfolios.

IP Enforcement, defense, and litigation: Yasamin has experience protecting brands in the metaverse and other web3.0 platforms and enforcing her clients’ rights against web 3.0 infringers and counterfeiters. Her practice includes successfully taking down infringing NFTs from exchanges and other platforms, shutting down infringing coin offerings, and recovering infringing domains. Yasamin manages intellectual property disputes on a global scale, including, when necessary, litigating complex commercial claims involving copyright, trademark, trade dress, false advertising, and patent disputes in federal courts nationwide.

Recently, Yasamin’s team successfully obtained summary judgment in favor of a client on issues of copyright validity and infringement, and successfully obtained a preliminary injunction prohibiting the client’s competitor from selling its infringing, competing product. ACT, Inc. v. Worldwide Interactive Network, Inc., et al., United States District Court for the Eastern District of Tennessee, Case No. 3:18-cv-00186-TRM-JEM.

Experience

Prior Matters:

TriPlay, Inc. v. WhatsApp Inc.: A member of the legal team for WhatsApp in a 4-patent case relating to cross-platform messaging systems filed in the District of Delaware. After favorable claim construction ruling conducted early in the case prior to discovery, obtained dismissal of entire case and invalidation of 2 out of 4 asserted patents under 35 U.S.C. § 101, after other two patents were withdrawn by plaintiff in response to institution of IPR.

Guzik Technical Enterprises, Inc. v. Western Digital Corp.: Served on the Western Digital legal team in the Northern District of California in a patent case relating to testing equipment for hard disk drive heads. Successfully narrowed the case from a start of 62 patent claims and 14 trade secrets to 12 patent claims and 0 trade secrets, including obtaining summary judgment of invalidity on some claims and summary judgment of non-infringement on other claims.

Delphix Corp. v. Actifio, Inc. (N.D. Cal.) (D. Mass): One of a team of attorneys who represented Actifio in a nine-patent case involving two jurisdictions. Case settled favorably after Delphix’s patents were invalidated in IPR proceedings.

Create Ads v. Endurance Int’l Gp. & Constant Contact (D. Del.): On the team that served as lead counsel for companies sued by NPE. Case favorably settled after team filed summary judgment motion for lack of patentable subject matter under 35 U.S.C. § 101.

Samsung v. NVIDIA (E.D. Va.): Member of team that served as lead trial counsel for the defendant in a multi-jurisdiction suit. Jury found that none of the asserted claims were infringed and that the sole asserted system claim was also invalid. Litigation subsequently favorably settled with no remedy against NVIDIA.

RPost v. Constant Contact (E.D. Tex.): Member of team that served as lead counsel for national email marketing company in case brought by NPE. Plaintiffs voluntarily dismissed the case.