Overview

Bill Blonigan is an associate in the Intellectual Property (IP) Practice Group in the firm’s San Diego (Del Mar) office.

Areas of Practice

Bill vigorously protects and defends his clients’ intellectual property rights in federal district courts, California Superior Court and the Court of Appeals for the Federal Circuit. He began defending his clients in U.S. courts in 2007. Bill particularly focuses on patent law, having practiced it since 2004 when he studied nights and weekends to pass the patent bar exam while working as an engineer for a startup medical device company developing electrical, software and biochemical solutions for diabetes patients. His practical experience with regard to developing products and his deep knowledge of intellectual property law helps him to creatively, efficiently and favorably resolve his clients' disputes through trial, appeal, mediation and licensing.

Bill litigates patent, copyright, trademark, trade dress, trade secret and contract disputes in California state court as well as federal district courts in California, Delaware, Illinois, Michigan, New York, North Carolina, Pennsylvania and Texas. He also helps clients build and maintain patent, trademark and copyright portfolios through the U.S. Patent and Trademark Office (USPTO) and the U.S. Copyright Office. During law school, he served as an extern law clerk to several USPTO administrative patent judges in Washington D.C., assisting with interferences and appeals in the electrical, chemical and mechanical arts.

Community and Professional Involvement

Bill is involved in his community as both a legal advisor and a business owner, which gives his law practice a practical and business perspective. He provides pro bono legal services on immigration and intellectual property matters. Since 2017, he has chaired the American Intellectual Property Law Association’s (AIPLA's) Model Patent Jury Instructions subcommittee, which provides model jury instructions for use by judges and litigants across the country. He has also served as an AIPLA Continuing Legal Education (CLE) Coordinator.

Experience

Experience

Select Representative Matters

  • TCL Communication Technology Holdings, Ltd., TCT Mobile Ltd., and TCT Mobile Inc. v. Telefonaktiebolaget LM Ericsson and Ericsson Inc. (California, Central District) — Represent TCL in breach-of-contract and declaratory judgment action relating to declared Standard Essential Patents (SEPs) and the related obligation to license those patents on Fair, Reasonable and Non-Discriminatory (FRAND) terms under the intellectual property rights (IPR) policies of the European Telecommunications Standards Institute (ETSI) and the 3rd Generation Partnership Project (3GPP) relating to 2G GSM/GPRS/EDGE, 3G UMTS and 4G LTE technologies.
  • Lotes Co., Ltd. v. Hon Hai Precision Industry Co., Ltd. (California, Northern Dist.) — Represent computer hardware manufacturer in multi-patent and contract dispute.
  • Galas v. Alere Inc. (California, Superior Court, San Diego, Central Div.) — Represent shareholder representative in merger contract dispute concerning patented and FDA-approved molecular diagnostics and point-of-care technologies and related know-how.
  • Tipsy Elves LLC v. Ugly Christmas Sweater, Inc. (California, Southern Dist.) — Represented plaintiff trademark owner in dispute involving misappropriation and misuse of trademark in Google AdWords display advertisement. Obtained favorable settlement.
  • WundaFormer LLC v. Flex Studios, Inc. (New York, Southern Dist.; Court of Appeals for the Federal Circuit) — Obtained favorable claim construction on appeal for client exercise-equipment designer and manufacturer, which led the defendant competitors to promptly settle.  
  • Ericsson Inc. and Telefonaktiebolaget LM Ericsson v. TCL Communication Technology Holdings, Ltd., TCT Mobile Ltd., and TCT Mobile Inc. (Texas, Eastern District) — Represent TCL and TCT Mobile in a seven-patent action relating to patents alleged to cover aspects of cellular telephone hardware, including the touch screen, and the Android operating system, as well as cellular-network infrastructure, including base stations.
  • Internet Patents Corp. v. Active Network, Inc., the General Automobile Insurance Services, Inc., Permanent General Assurance Corp. of Ohio, QuinStreet, Inc., and Tree.com (Court of Appeals for the Federal Circuit & California, Northern Dist.) — Represented Tree.com in successfully invalidating asserted patent on internet-browser functionality on an early motion to dismiss and sustaining favorable judgment on appeal.
  • LendingTree, LLC v. Zillow, Inc., NexTag, Inc., QuinStreet, Inc., QuinStreet Media, Inc., and Adchemy, Inc. (Court of Appeals for the Federal Circuit & North Carolina, Western Dist.) — Represent plaintiff in two-patent infringement litigation involving a method and computer network for coordinating a loan over the internet. Successfully defeated antitrust claims brought against LendingTree.
  • Wi-LAN Inc. v. Alcatel-Lucent USA Inc. et al. (Texas, Eastern Dist.) — Represent defendant HTC in patent litigation regarding processing data transmitted and received over a wireless link connecting a central terminal and a subscriber terminal of a wireless telecommunications system. Secured favorable jury verdicts of non-infringement and patent invalidity.
  • Cook, Inc. v. Endologix, Inc. (Indiana, Southern Dist.) — Represented defendant in medical device patent litigation.
  • Toyota Motor Sales U.S.A. v. Tabari (California, Central Dist.) — Represented defendant pro bono to obtain favorable settlement after appeal.
  • Partners in Leadership, Inc. v. Questmark LLC (Pennsylvania, Western Dist.) — Represented plaintiff in trademark and copyright dispute to stop defendant’s use of proprietary sales training materials. Secured favorable settlement for client.
  • Edwards Lifesciences AG v. CoreValve, Inc. (Delaware) — Represented defendant through trial in patent litigation involving self-expanding, percutaneously delivered aortic heart valve replacement. 
  • Rev Wheel, LLC v. American Racing Equipment, LLC (California, Central Dist.) — Represented plaintiff in trademark invalidity and unfair competition claims relating to after market vehicle wheels. Secured favorable settlement for client.
  • Treasure Garden, Inc. v. Wanda Ying Li (California, Central Dist.) — Represented declaratory judgment plaintiff asserting patent invalidity. Secured favorable settlement for client. 

Honors

Honors

San Diego Rising Star, Super Lawyers, 2020

Inn of Court Pro Bono Publico Award, Casa Cornelia Law Center, 2016

Insights

Articles

  • "Trade secret suits remind businesses to consistently safeguard confidential information," Los Angeles & San Francisco Daily Journal, March 30, 2020
  • "Establishing The Weight of Evidence After Sciele," Law360, August 13, 2012
  • National Reports: In re Swanson, 540 F.3d 1368 (Fed. Cir. 2008) (Reexamination No. 90/006,785), European Intellectual Property Review, Vol. 31, Issue 1, at N–15 (2009)
  • Road Under Construction: Administrative Claim Interpretations and a Path of Greater Deference from the Federal Circuit to the Patent Office, 35 American Intellectual Property Law Association Quarterly Journal 415 (2007)
  • Pharmaceutical Manufacturer Sponsoring Terminated Clinical Trial Not Obligated to Continue Providing Drug to Volunteers—Abney v. Amgen, Inc., 32 American Journal of Law & Medicine 412 (2006) 

Intellectual Property Law Blog Posts

Speaking Engagements

  • "Preparing for and Taking Expert Depositions," CLE, July 9, 2019
  • "Patenting Computer Memory," CLE Case Study, September 5, 2017
  • "Revisions to American Intellectual Property Law Association’s 2017 Model Patent Jury Instructions and Supporting Case Law," AIPLA Patent Litigation Committee, June 15, 2017
  • "CLE Case StudyThe Medicines Co. v. Hospira, Inc., Case Nos. 2014-1469, -1504 (Fed. Cir. July 11, 2016) (en banc) (concerning the on-sale bar to patentability under 35 U.S.C. § 102(b) (pre-AIA statute))," August 2, 2016
  • AstraZeneca AB v. Apotex Corp.: Patent Damages, Apportionment, the Smallest-Salable Patent-Practicing Unit, and the Entire Market Value Rule,” May 5, 2015
  • "CLE Case Study: Antares Pharma, Inc. v. Medac Pharma, Inc., 771 F.3d 1354 (2014) (Fed. Cir. 2014) (concerning validity of reissue patent claims and the “original patent” requirement of 35 U.S.C. § 251)," December 2, 2014
  • "CLE Case Study: Apple Inc. v. Samsung Elecs. Co., 735 F.3d 1352 (Fed. Cir. 2013) (concerning requirements for winning a permanent injunction)," December 3, 2013
  • "CLE Case Study: Wallenfang v. Havel, No. 08-C-288, 2010 WL 1490831 (E.D. Wis. Apr. 13, 2010); Nat’l Prods., Inc. v. Gamber-Johnson LLC, 699 F. Supp. 2d 1232 (W.D. Wash. 2010)," August 26 and September 3, 2010
  • "CLE Case Study: Lydall Thermal/Acoustical, Inc. v. Federal-Mogul Corp., No. 2009-1135 (Fed. Cir. Sept. 8, 2009)," September 18 and 25, 2009
  • "CLE Case Study: Ex parte Fu, Appeal No. 2008-0601 (B.P.A.I. 2008)," May 8 and 15, 2009
  • “Patent Term Extension based on FDA Approval of Medical Devices,” October 13, 2008
  • "CLE Case Study: In re Rivastigmine Patent Litig., 83 U.S.P.Q. 2d 1923 (S.D.N.Y. 2007)," January 11 and 18, 2008

Memberships

Memberships

Co-Chair of the Model Patent Jury Instructions Subcommittee, American Intellectual Property Law Association (AIPLA),

Member, American Bar Association (ABA)

Education

J.D., Boston University, Paul J. Liacos Scholar, American Journal of Law & Medicine, 2007

The George Washington University Law School, Visiting Scholar, 2007

Tsinghua University School of Law, Beijing, China, Foreign Student, 2006

B.B.E.E., Biomedical Engineering with emphasis in Electrical Engineering, University of Minnesota—Institute of Technology, 2003

Clerkships

  • In 2007, Bill externed at the USPTO's Patent Trial & Appeal Board (PTAB)

Admissions

  • State Bar California
  • Supreme Court of California
  • U.S. Patent & Trademark Office
  • U.S. District Court for the Central District of California
  • U.S. District Court for the Northern District of California
  • U.S. District Court for the Southern District of California
  • U.S. Court of Appeals for the Federal Circuit
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