Mr. Comer is a partner in Morrison & Foerster’s San Diego office. His practice focuses on patent litigation. He also has extensive experience in litigating licensing, copyright, trademark, and trade secret cases. He has appeared in trial courts in Orange County, San Diego, Los Angeles, San Francisco, and Boston, in arbitrations with JAMS and AAA, and in appeals in the Federal Circuit, the Ninth Circuit, the California Court of Appeal, and the Trademark Trial and Appeal Board.

Recent Litigation Experience

• General Atomic v. Axis-Shield ASA. Mr. Comer represents General Atomics and Carolina Liquid Chemistries in a declaratory relief case filed against Axis-Shield of Norway. Axis-Shield had threatened to sue General Atomics, claiming that GA’s new enzymatic homocysteine assay technology infringes four of Axis-Shield’s patents. To clear the negative market effect of this accusation of infringement, GA brought this declaratory relief action in the U.S. District Court for the Northern District of California. The district court granted our motion for summary judgment of noninfringement. Axis-Shield then changed its infringement contentions to assert a new theory, so GA brought a second motion for summary judgment of noninfringement as to the new theory, which was also granted. Axis-Shield has appealed to the Federal Circuit.
• Competitive Technologies, Inc. v. General Atomics
  Mr. Comer represents General Atomics in the District of Colorado in a patent infringement suit brought by Competitive Technologies over General Atomics' enzymatic homocysteine assay. The patent that Competitive Technologies is asserting was previously at issue in the U.S. Supreme Court in Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc. We succeeded in getting the U.S. Patent and Trademark Office to agree to reexamine the patent and the district court to stay the case.
• Applera Corporation - Applied Biosystems Group v. Illumina and Solexa
• Mr. Comer is part of a multi-office team representing Applied Biosystems ("AB") in a case involving ownership and alleged infringement of three patents on DNA sequencing. The patents, entitled “DNA Sequencing By Parallel Oligonucleotide Extensions,” were applied for by AB's then chief patent counsel. Although he had signed an agreement requiring him to assign his inventions to AB, he filed the patent application in his own
• name, and shortly thereafter, left the company and assigned the application to his new employer. AB filed this case in the Northern District of California in June 2007, seeking an order declaring that it is the rightful owner of the patents, and that its recently-launched sequencing system does not infringe the patents. Illumina and Solexa have asserted counterclaims for alleged infringement of the patents. The case is ongoing.
• Inverness Medical Switzerland and Unipath Diagnostics v. Acon Laboratories
  Mr. Comer coordinated the defense of Acon Laboratories and its customers in sixteen patent infringement cases brought by Inverness in the U.S., the U.K., and Germany. Inverness alleged that Acon’s immunoassay test kits infringe nine U.S. patents and their European counterparts. Inverness had recently won a preliminary injunction prohibiting Pfizer from selling its e.p.t product (the market recently leader). Inverness then filed a similar motion against Acon, asserting the same patent it had used against Pfizer, but it was unsuccessful. Over the course of two years, multiple phases of trial, and an appeal, Inverness made numerous additional attempts to obtain an injunction, but it never succeeded in shutting down Acon’s operations. The cases were resolved when Inverness acquired Acon on mutually-beneficial terms.
• Abbott Laboratories v. Syntron Bioresearch.
  Mr. Comer defended Syntron Bioresearch against Abbott’s claims that Syntron’s immunoassays infringed two of Abbott’s patents. Before Morrison & Foerster was retained, the Court had granted summary judgment of infringement in favor of Abbott. Mr. Comer assisted in successfully persuading the Court to reconsider its ruling and to allow Syntron to proceed to trial. He then second-chaired (with David Doyle) a three-week jury trial, which resulted in a verdict of noninfringement on all claims.
• Syntron Bioresearch v. Genix Biotek. Represented Syntron Bioresearch in a trade secret and trademark case against former employees accused of stealing monoclonal antibodies, hybridoma cell lines, and production processes used in manufacturing immunoassays. Co-chaired the two-and-a-half-month trial that resulted in a judgment of $12.5 million and a permanent injunction.
• Beckman Coulter v. The Trudeau Institute. Represented Beckman in successfully persuading Trudeau to cease selling MHC tetramers covered by Beckman’s patents.
• Forward Ventures v. Knobbe Martens. Represented the Regents of the University of California and two professors in dispute over rights to invention relating to use of plasmon resonant particles as labels.
• Goglanian Bakeries v. H.J. Heinz. Led a team in defending Heinz against allegations that it misappropriated trade secrets relating to the machinery for making its Weight Watchers Pizza. The case was settled on very favorable terms.
• Watson v. H.J. Heinz. Defended Heinz against an individual who claimed to have invented and patented the “trap cap” used on Heinz ketchup bottles. The case was dismissed.
• Represented a Taiwanese toy manufacturer in a copyright infringement case against a retailer and several distributors accused of selling counterfeit toys. Obtained assistance of U.S. Customs, which seized a container of infringing goods. Argued and won a preliminary injunction prohibiting further distribution of the accused goods. Then negotiated a favorable settlement that included a permanent consent injunction and payment of significant damages. Also traveled to Guangzhou, Hong Kong, and Taiwan to assist in identifying other possible infringers.
• Represented a manufacturer of miniature skateboards in a case against a competitor accused of using logos, trademarks, and copyrighted graphics without permission. Obtained a preliminary injunction and product recall. Then obtained a favorable settlement, including a permanent consent injunction.
• Represented a toy manufacturer in a trademark action against a cybersquatter accused of registering Internet domain names containing variations of our client's trademarks. Obtained a consent judgment of permanent injunction and a transfer to our client of the domain names and all related assets.
• Represented a Swiss pharmaceutical company in an action against a U.S. pharmaceutical company accused of manufacturing counterfeit vitamins and selling them in Viet Nam. Assisted in obtaining an ex parte seizure order and conducting a raid on the U.S. facility with dozens of investigators, computer experts, and U.S. Marshals, which resulted in the seizure of records and evidence.

Speeches

• Thomas Jefferson School of Law. Presented an overview of patent law in India. Given at the School of Law’s “Evolution and Reform of U.S. Patent Law” seminar.
• George Washington University India Project. Presented mock trial in a patent infringement case at the Indian Institute of Technology in Delhi, in January 2005 (the Honorable Randall Rader presiding).
• Industrial Fabrics Association International. Presented seminar on patent, trademark, and copyright protection for the fabric industry. Given at the Association’s annual exposition.
• Taiwan Toy Industry. Presented seminar on patent, copyright, trademark, and trade secret protection for the toy and gift industry. Given at the Taiwan Toy and Gift Association’s annual trade show.

Mr. Comer received his law degree from Vanderbilt University (J.D., 1991), where he was Managing Editor of the Vanderbilt Law Review. He authored “Municipal Liability Under Section 1983: The Rationale Underlying the Final Authority Doctrine,” 44 Vanderbilt Law Review 341 (1991). In 1989, Mr. Comer served as an Extern to the Honorable J. Spencer Letts, United States District Judge for the Central District of California. Mr. Comer was admitted to practice in California in 1991. He is an instructor at the National Institute for Trial Advocacy.