Jordan Sigale practices in intellectual property, computer, and patent law with a focus on patent and trade secret litigation and alternative dispute resolution. His work also extends to client counseling on issues of corporate and strategic planning involving copyrights, patents, trademarks, and trade secrets. He is extensively involved in patent prosecution for a variety of clients with specific focus on the interface between computers and end-users in an array of situations and transactions.
A hallmark of Jordan’s work is his approach to finding creative, practical ways to achieve clients’ immediate and long-range business goals by applying intellectual property licensing, procurement, and litigation strategies. He first strives to understand his clients’ business histories and goals through in-depth conversations and then collaborates with and guides clients through strategic decision-making processes.
As a result of the breadth of Jordan’s experience, he frequently counsels clients on intellectual property acquisition and development, portfolio management, licensing, joint ventures, and trade regulation issues.
Contract Negotiation, Litigation, and Alternative Dispute Resolution
Jordan’s broad understanding of business and intellectual property coupled with his deep experience in contract negotiation and litigation has placed him in the middle of significant contract matters in the boardroom, the courtroom, and before arbitration panels. He has been involved in strategy and drafting of thousands of agreements for hundreds of clients across dozens of industries (e.g., acquisition, assignment, development, indemnification, joint venture, license, merger, sales, service, settlement, termination, and transfer). He has also been actively involved in the negotiation of the same broad variety of agreements. As a result of his broad exposure to contract issues, clients have also sought Jordan’s counsel in resolving differences that arise in the implementation of agreements, which he has often resolved without the need for third-party intervention.
Where third-party dispute resolution of contract problems has been required, Jordan has been there too. For example, he recently served as co-counsel to a Los Angeles-based mega law firm in a JAMS arbitration in Los Angeles alleging millions of dollars in damages for breach of a design, development, marketing, and distribution agreement involving an international product development and marketing company. Jordan was also recently involved in disputes involving the alleged underpayment of royalties in biotech, children’s products, consumer products, and music. In a number of instances, Jordan has been lead counsel on these disputes. For example, in an AAA Arbitration involving allegations of breach of contract and fiduciary duty by a Southern California technology start-up, Jordan represented the respondent, a wholly owned subsidiary of a Fortune 250 laboratory equipment company. In another example, Jordan represented Taiwanese-based DBTEL in a litigation in U.S. District Court filed by Motorola, following its termination of a manufacturing agreement with DBTEL.
Intellectual Property Litigation
Jordan has served as lead litigation and trial counsel in district courts throughout the U.S. involving a variety of intellectual property issues including computer intrusion, copyright infringement, false advertising, design and utility patent infringement, trade secret misappropriation and trademark infringement. He has also served as lead litigation and trial counsel on a variety of antitrust claims, usually focused on the antitrust-intellectual property interface. Jordan has been extensively involved in coordinating foreign intellectual property litigation strategy in Australia, China, Europe, and Hong Kong.
His litigation work has involved diverse technologies including cable television systems; chemical compositions (ceramics, ink, and pharmaceuticals, for example); consumer electronics (DVD players, small kitchen electrics, personal care devices, and toys, among others); lab equipment (spectrophotometers, for example); LED devices; lighting fixtures and power supplies; medical devices (for example, laser devices, orthopedic devices, and radiological devices); packaging; software; and telephony (including cellular, cordless, and wired).
Most recently, Jordan successfully defended a Texas Corporation before an Oklahoma jury against trade secret claims involving the extraction of iodine from produced waters. Before that Jordan has had a string of successful patent, trademark, and trade secret case resolutions without the need for trial. Some cases have been favorably decided at or soon-after preliminary injunction.
Jordan has successfully combined his deep litigation experience with his extensive knowledge of U.S. and foreign patent prosecution practice. As an active member of the patent bar, he has prepared and prosecuted patent applications in the U.S. in the chemical, electrical, electrochemical, and mechanical arts including business methods; cable television equipment; computer circuits (including multiprocessor designs); computer peripherals such as laser printers and user input devices; cosmetic preparations; electronic toys, electrical testing apparatuses, fiber optics, high-end audio circuitry; kitchen appliances, medical devices, networking devices and methods, personal care devices; semiconductor design and fabrication, paperboard and plastic containers, RF equipment, signal processing software, speech recognition software, and telephony-related inventions. Jordan has also worked closely with an extensive network of foreign patent lawyers to prosecute patent and utility model applications world-wide for his clients. This experience allows him to consider multiple jurisdictions and venues, including inter partes proceedings at the U.S. Patent Office, in mapping potential client strategies.
Jordan has substantial experience in developing strategies in view of the Hatch-Waxman Act and litigating the ensuing infringement, validity, and enforceability of pharmaceutical patents on behalf of generic and branded pharmaceutical companies. For example, he took a leading role in a multi-week bench trial involving seven Orange Book-listed patents covering issues of non-infringement, invalidity, and inequitable conduct. A few months prior to trial, he briefed and argued an emergency appeal involving a case of first impression before the U.S. Court of Appeals for the Federal Circuit involving the statutory 30-month stay provided under the Act. He has also had the rare experience of litigating a pharmaceutical patent infringement case for presentation to a jury in a case that settled following a number of successful pretrial rulings, jury selection, and opening statements.
Jordan has served as lead litigation counsel on four U.S. District Court cases involving trade secret antitrust and patent antitrust claims. In these cases he successfully argued the summary judgment motions before the District Court and U.S. Court of Appeals for the Federal Circuit that led to the U.S. Supreme Court’s seminal decision in Independent Ink, Inc. v. Illinois Tool Works Inc. clearly abolishing any presumption of market power in a Sherman Act Section 1 “patent-tying” claim, thus upholding the favorable summary judgment ruling for his clients in the District Court.
His experience with the patent antitrust interface reaches back to his extensive involvement on the trial and appellate teams in the mid-1990s in C.R. Bard v. M3 Systems (a medical device patent infringement action also involving patent-based Section 1 and 2 antitrust claims as well as non-patent based monopolization claims). In between his two high-profile patent antitrust cases, Jordan has continued to work in the antitrust area providing advice and opinions involving antitrust issues related to a broad range of activities, but most particularly issues involving technology distribution and exploitation.