Significant Arbitration Cases

• (Hong Kong International Arbitration Centre, Hong Kong) – Represent electronics company in dispute with sellers of Chinese battery company in an arbitration involving the breach of an asset purchase agreement.
• (HKIAC, Hong Kong) – Represented a telecommunications company in dispute with Chinese telecommunications company in an arbitration involving the breach of an asset purchase agreement.
• (Singapore International Arbitration Centre, Singapore) – Represent luxury hotel chain in dispute with developers regarding potential hotel development in Africa.
• (Japan Commercial Arbitration Association, Tokyo) – Represent Indian software development company in breach of contract arbitration for customizable insurance software.
• (International Chamber of Commerce, New York) – Represent global Japanese equipment manufacturer in dispute concerning steam turbine power plant in Brazil
• (International Chamber of Commerce, Paris) – Represented US manufacturer of global satellite equipment against former distributor.
• (International Chamber of Commerce, Zurich). Represented global Japanese conglomerate in arbitration relating to steel mill construction project in Brazil.
• (UNCITRAL arbitration, Kuala Lumpur) – Represented major Korean conglomerate in construction dispute involving natural gas project in Indonesia.
• Deloitte Noraudit v. Deloitte Touche Tohmatsu International (United States Court of Appeals, Second Circuit). Successfully obtained published opinion unanimously reversing District Court order denying petition to compel arbitration on novel grounds.
• (American Arbitration Association, New York). Series of 35 arbitrations on behalf of major international bank against its political risk insurer, AIG, for losses occurring in several African countries. Client recovered full amount of its claim.
• (London Court of International Arbitration, London). Represent big four accounting firm in dispute involving use of the client’s name in Cyprus by former member of the organization which was not selected to be the organization member in the new organization resulting from merger with another big 6 accounting firm. Favorable settlement for client.
• (International Chamber of Commerce, Paris, France). Represented one of largest Italian pharmaceutical companies in a breach of contract and patent infringement arbitration against an Irish company involving controlled release technology for medical devices, i.e., the nicotine patch. Case settled favorably after one-month trial.
• (International Chamber of Commerce, New York). Represent California software developer in a breach of product development contract arbitration claims against British set-top box manufacturer involving interactive educational software and set top box technology. Case settled favorably on the eve of trial.
• (American Arbitration Association, San Diego, CA). Represented individual inventor in a breach of contract and declaratory judgment action, involving the ownership of optical scanning technology, including more than two dozen patents obtained by him. Two separate cases, one against one defendant in federal court and one by another company against the inventor in state court were, successfully consolidated over the opposition of the defendants into a single arbitration.
• (Iran-US Claims Tribunal, Hague, Netherlands). Representation of American citizen in claims for compensation for confiscated chemical and textile plants.
• (American Arbitration Association, New York). Arbitration involving breach of partnership agreement.
• (American Arbitration Association, Riverside County). Organization and consolidation of several disputes into an arbitration before the AAA.

Other Arbitration Experience

• Has advised numerous clients on particular arbitration issues, including enforcement of arbitration awards, and the benefits of arbitration under different regimes. Has drafted more than 100 arbitration clauses, and has made presentations to dozens of clients and potential clients concerning arbitration law and procedure. In addition to the above cases, has participated in several other arbitrations before the ICC, Iran-US Claims Tribunal and AAA.

Significant International Cases (Arbitration and Litigation)

• Bioanalysis, Inc. v. Chiron Corporation (U.S. Dist. Ct. Southern District of California, New York State Supreme Court, American Arbitration Association). Represent United Kingdom company against US company in multijurisdictional patent licensing dispute.
• (U.S. Dist. Ct. Northern District of California, International Chamber of Commerce, Paris, France). Represent an Italian company, in a breach of contract and patent infringement arbitration against an Irish company, involving worldwide patents.
• Swissair v. Swissair111.com (U.S. Dist. Ct. Southern District of California). Represent SwissAir, a Swiss company, in a trademark infringement and domain name dispute against a cybersquatter operating under the name Swissair 111.com.
• (International Chamber of Commerce, New York). Represent California software developer in a breach of product development contract arbitration claims against British set-top box manufacturer involving interactive educational software and set top box technology. Case settled favorably on the eve of trial.
• Proxima Corporation v. Memco Corporation. Trademark cancellation proceeding by our client, Proxima Corporation, a United States company, against manufacturer of computer software in Israel attempting to register the same name. Part of coordinated litigation in Japan and Europe. Pending.
• Johnson Electric Industries v. Mabuchi Motors, Inc. (U.S. Dist. Ct., Southern District of New York). Represent Mabuchi Motors in a patent infringement suit against Johnson Electric Industries, involving Mabuchi Motors’ patents for miniature electric motors. Part of parallel international proceedings in Hong Kong and England. Pending.
• Deutsche Wurlitzer, GmbH v. EEC International Corp. (U.S. Dist. Ct. Southern District of New York). Breach of Contract and Patent infringement suit by our client, Deutsche Wurlitzer, a German company involving vending machine cooling and product delivery technology.
• La Fantaisie International v. Dayton-Hudson, et al. (U.S. Dist. Ct. Southern Dist. Of California). Represent La Fantaisie, a Taiwanese manufacturer of toys, in a trademark infringement and counterfeiting suit against a large US importer/distributor. Obtained preliminary injunction and favorable settlement, including payment of significant damages and permanent consent injunction.
• X-Concepts v. Sommerville Plastics Corporation (U.S. Dist. Ct. Southern Dist. Of California). Represent a manufacturer of toys in a trademark infringement and counterfeiting suit against US, Chinese, and Taiwanese importers/distributors. Obtained preliminary injunction and favorable settlement, including permanent consent injunction.
• Boom Club, Inc. v. Boo.com. Represent a clothing manufacturer in a trademark infringement suit against a rival English clothing seller. Pending.
• Pick v. Pick Szeged Salagyimar. Defend a Hungarian food products company in a trademark cancellation proceeding. Dismissed on summary judgment.
• Deloitte Noraudit v. Deloitte Touche Tohmatsu International (United States District Court Southern District of New York). Represent US client against Norwegian partnership in dispute involving international trademark, copyright, and other legal issues.
• Gabriel Heffes v. Deloitte Touche Tohmatsu International (United States District Court Southern District of New York). Represent US client against Mexican individual in dispute involving international trademark, copyright, and other legal issues.
• (American Arbitration Association, New York). Series of 35 arbitrations on behalf of major international bank against its political risk insurer for losses occurring in several African countries.
• (London Court of International Arbitration, London). Represent big four accounting firm in dispute involving use of the client’s name in Cyprus by former member of the organization which was not selected to be the organization member in the new organization resulting from merger with another big 6 accounting firm. Favorable settlement for client.
• Gabay v. Mostazafan Foundation (U.S. Dist Court Southern District of New York, Iran-US Claims Tribunal). Representation of American citizen in claims for compensation for confiscated chemical and textile plants.

International Discovery Issues

• In re Exxon (U.S. Dist. Court, District of Virginia). Obtained order under 28 U.S.C. § 1782 compelling US witnesses to provide testimony under oath in aid of a Court proceeding in Venezuela.
• Recordati Farmeceutica e Chimica, S.p.A. v. Elan Corporation (U.S. Dist. Ct. Northern District of California, International Chamber of Commerce, Paris, France). Obtained order under 28 U.S.C. 1782 compelling US witnesses to provide testimony under oath in aid of an international arbitration in Paris. Participated in document discovery in Ireland.
• Syntron Bioresearch v. Genix, Inc. (Cal. Superior Court). Obtained discovery from third parties in Taiwan under the Hague Convention.
• Johnson Electric Industries v. Mabuchi Motors, Inc. (U.S. Dist. Ct. Southern District of New York). Participated in obtaining discovery under the Hague Convention from persons in England, France, and Hong Kong.
• Northern District of California. Assist our client, a US chip manufacturer, in obtaining discovery under section 1782 in connection with parallel criminal and civil proceedings in Taiwan.
• Deloitte Noraudit v. Deloitte Touche Tohmatsu International (United States District Court Southern District of New York). Obtained document discovery and oral testimony under oath from third parties in Norway under the Hague Convention.
• Gabriel Heffes v. Deloitte Touche Tohmatsu International (United States District Court Southern District of New York). Conducted depositions in Mexico City.

Foreign Sovereign Immunities Act

• China North Industries Inc. (U.S. Dist. Ct., Southern District of New York, Southern and Central Districts of California). Participated in the removal of various state court cases to federal court under the FSIA, and gained strategic advantages available to client under the Act.
• Gabay v. Mostazafan Foundation (U.S. Dist. Court Southern District of New York, Iran-US Claims Tribunal). Representation of American citizen seeking to strip Iranian entity of immunity under the FSIA.

Foreign Sovereign Immunities Act

• Advised clients on various aspects of cross-border litigation, including enforcement of judgments, discovery, differences in procedures, Foreign Sovereign Immunities Act, and foreign asset control regulations. Participated in drafting and editing the book Litigating International Commercial Disputes (West Publishing 1996).

Significant Intellectual property Litigation Cases

Recent Biotechnology Cases

• Abbott Laboratories v. Syntron Bioresearch (U.S. Dist. Ct. for Southern District of California) Superior Court). Represented Syntron in bet-the-company patent infringement case brought by Abbott on patents concerning diagnostic test kits. Obtained complete defense verdict.
• Syntron Bioresearch v. Genix , Inc. (Cal. Superior Court). Represented Syntron in misappropriation of trade secrets case involving shareholders, officers and employees of Syntron taking antibodies, cell lines, production processes and other proprietary information relating to the manufacture and sale of diagnostic test kits for pregnancy and drugs of abuse. Obtained permanent injunction after bench trial preventing defendants from participating in the diagnostic test kit industry for six years, and judgment in excess of $12 million.
• ACLARA Bioscience v. Caliper Technologies; Caliper Technologies v. ACLARA Bioscience (Cal. Superior Court and U.S. Dist. Ct. for the Northern District of California). Represented ACLARA in the resolution of dispute concerning Trade Secrets misappropriation and Patent Infringement between the parties. Case settled on confidential terms.
• Hybritech Incorporated v. Dade International, Inc. (U.S. Dist. Ct. Southern District of California). Represented Hybritech in a twenty million-dollar breach of license agreement relating to the Tandem Immunoassay Patent, a patent crucial to the diagnostic test industry. Summary judgment on all claims by Hybritech relating to breach of the license agreement and dismissal of all counterclaims relating to alleged breaches of the license agreement by our client.
• Bioanalysis , Inc. v. Chiron Corporation (U.S. Dist. Ct. Southern District of California, New York State Supreme Court, American Arbitration Association). Represented Bioanalysis in breach of contract and patent infringement suit, involving chemiluminescent labeling for use in diagnostic test kits for use in human healthcare, environmental analysis, and industrial applications. Obtained favorable settlement for Bioanalysis.
• Recordati Farmeceutica e Chimica , S.p.A . v. Elan Corporation (International Chamber of Commerce, Paris, France). Represented Recordati in a breach of contract and patent infringement arbitration against Elan involving controlled release technology for medical devices, i.e., the nicotine patch. Case settled favorably after one-month trial.

Recent Internet Cases

• WebSideStory v. WebTrends Corporation (U.S. Dist. Ct. Southern District of California). Represented WebSideStory in a copyright infringement suit against WebTrends alleging copying of the graphical interface and underlying source code for its business-to-business Web traffic analysis service. Obtained TRO shutting down competitor’s Web site, and then a favorable settlement.
• Network Music v. Macromedia (U.S. Dist. Ct. Southern Dist. of California). Represented Macromedia in a trademark infringement suit brought by Network Music concerning use of the term Shockwave. Obtained favorable settlement.
• Swissair v. Swissair111.com (U.S. Dist. Ct. Southern District of California). Represented SwissAir in a trademark infringement and domain name dispute by SwissAir against a cybersquatter operating under the name Swissair 111.com. Obtained TRO and favorable settlement.
• Internet domain name disputes for clients in the pharmaceutical, software, and clothing industries.
• Various intellectual property, contract and ownership disputes, for our client, an Internet gaming concern.

Recent Computer/Software Cases

• Apex v. ACE International (JCAA arbitration) – Represent Apex in breach of contract arbitration for customizable insurance software. Case pending.
• Gemstar v. EchoStar (ITC/Antitrust) - Represented EchoStar in largest patent infringement case ever brought before the ITC, concerning interactive programming guides for set-top boxes for cable and satellite television. Obtained complete defense verdict.
• Element 14 v. Lightspan Partnership (International Chamber of Commerce, New York). Represented Lightspan in breach of product development contract arbitration claims against, and counterclaims by, Lightspan, involving interactive educational software and set top box technology. Case settled favorably on the eve of trial.
• Atmel Corporation v. Macronix America, Inc. (U.S. Dist. Ct. Northern District of California). Represented Macronix America in a patent infringement suit brought by Atmel Corporation, involving semiconductor manufacturing and storage technology. Macronix has alleged violations of the United States antitrust laws. Pending.
• Proxima Corporation v. Memco Corporation. Represent Proxima Corporation, a multimedia company, in a trademark cancellation proceeding against a manufacturer of computer software attempting to register the same name. Part of coordinated litigation in Japan and Europe. Pending.

Recent Electronics Cases

• Johnson Electric Industries v. Mabuchi Motors, Inc. (U.S. Dist. Ct. Southern District of New York). Represent Mabuchi Motors in a patent infringement suit against Johnson Electric Industries, involving Mabuchi Motors’ patents for miniature electric motors. Part of parallel international proceedings in Hong Kong and England. Pending.
• Alexander Roustaei v. Scanquest Corporation and Symbol Technologies, Inc. (American Arbitration Association). Represent Mr. Roustaei in a breach of contract and declaratory judgment action, involving the ownership of optical scanning technology, including more than two dozen patents obtained by Mr. Roustaei. Two separate cases, one against Symbol in federal court and one by Scanquest in state court, were successfully consolidated over the opposition of the defendants into a single arbitration. Pending.
• Deutsche Wurlitzer, GmbH v. EEC International Corp. (U.S. Dist. Ct. Southern District of New York). Represented Deutsche Wurlitzer in a breach of contract and patent infringement suit against EEC International, involving vending machine cooling and product delivery technology. Obtained favorable settlement.

Recent Consumer Products Cases

• Metabolife International v. Rexall Sundown (U.S. Dist. Ct. Southern District of California) Represent Metabolife in trademark infringement case with damages claimed in the hundreds of millions of dollars. Obtained summary judgment on most of Rexall’s defenses. Case pending.
• X-Concepts v Basic Fun International (U.S. Dist. Ct. Eastern District of Pennsylvania) – Represented X-Concepts in a trademark infringement case against Basic Fun involving miniature toy skateboards. Obtained a preliminary injunction requiring a full recall Basic Fun’s products from all of its retailers resulting in a large settlement in favor of our client. Bob Harkins assisted me in this matter.
• La Fantaisie International v. Dayton-Hudson, et al . (U.S. Dist. Ct. Southern Dist. of California). Represented La Fantaisie, a Taiwanese manufacturer of toys, in a trademark infringement and counterfeiting suit against a large US importer/distributor. Obtained preliminary injunction and favorable settlement, including payment of significant damages and permanent consent injunction.
• X-Concepts v. Sommerville Plastics Corporation (U.S. Dist. Ct. Southern Dist. of California). Represented a manufacturer of toys in a trademark infringement and counterfeiting suit against US, Chinese, and Taiwanese importers/distributors. Obtained preliminary injunction and favorable settlement, including permanent consent injunction.
• Boom Club, Inc. v. Boo.com. Represent a clothing manufacturer in a trademark infringement suit against a rival clothing seller. Pending.
• Paradise Galleries, Inc. Represented this manufacturer of collectible prcelain figurines in several copyright and trademark infringement disputes and general counseling.
• Ray Cook Golf Co. v. Timet , Inc. (U.S. Dist. Ct. Southern District of California). Represented Ray Cook Golf Co. in a breach of contract and tort action against a foundry for failure to manufacture and deliver titanium head golf irons developed by Ray Cook. Obtained favorable settlement.

Other Recent Intellectual Products Cases

• Represented the publisher of Seventeen Magazine in a trademark infringement suit. Obtained permanent consent injunction.
• Represent an accounting services company in a copyright and trademark infringement suit. Obtained favorable settlements.
• Represent a real estate services company in copyright infringement suits. Obtained favorable settlements.
• Represent a manufacturer of armored glass in trademark cancellation proceeding.
• Defend trademark/trade dress infringement suit against manufacturer of aquarium equipment.
• Advice concerning arbitration agreements to be utilized in worldwide nondisclosure agreements for a telecommunications services company.
• Defend trademark cancellation proceeding against a Hungarian food products company, dismissed on summary judgment.
• Represent a food products company in unfair competition claim.

Transactional Experience

• Licensing and development agreements concerning electric motor and various bio-technologies (controlled drug release systems, drug delivery systems, therapeutic drug joint development agreements), Manufacturing and Supply Agreements.

Published Articles

• Country Q&A, Japan , Global Counsel Dispute Resolution Handbook, 2003
• “Global Solution: Arbitrating International Patent Disputes,” by Craig I. Celniker and Brett D. Ekins, Los Angeles Daily Journal, March 28, 2000.
• “Long Arm: Suing for Foreign Infringement of U.S. Trademarks in U.S. Courts,” by Craig I. Celniker and Charles S. Evendorff, Los Angeles Daily Journal , Aug. 24, 1999.
• “Case Comment: United States,” by Craig I. Celniker and George C. Yu, Patent World , June/July 1999.
• California LawBusiness , June 21, 1999, “Global Warming” by Tom Orewyler. Quoted regarding arbitration clauses in international cases.
• “Be Careful Who You E-Mail: The Internet and the Future of Personal Jurisdiction,” by Craig I. Celniker and Robert M. Harkins, Jr., San Diego Daily Transcript , Oct. 2, 1997.
• “Securing Protection from Validity Challenges to Licensed Patents,” by David C. Doyle and Craig I. Celniker, DICTA, The Lawyers Magazine (San Diego County Bar Association), October 1996.

Significant Speeches

• US Intellectual Property Litigation, full semester course at Tokyo University of Science, September 2006-January 2007-01-04Mediation and Other Forms of Alternative Dispute Resolution, September 15, 2006
• Discovery in International Arbitration, February 2006
• Advantages and Disadvantages of Arbitration and Litigation for Resolving International Business Disputes, September 3, 2004
• Intellectual Property Litigation in the United States, October 23, 2003
• How Chinese Companies can Prepare for and Succeed when IP Litigation is used as a Competitive Tool, July 24-25, 2003
• Top Claims Asserted Against Biotechnology Companies and How to Avoid Them, June 17, 2003