Joseph H. Golant, Of Counsel

Litigation

In the area of litigation, Joe has extensive jury experience, first as a criminal prosecutor at the United States Attorney's Office in Los Angeles and then litigating patent, trademark, copyright, trade secret and unfair competition issues in federal courts around the country and before the International Trade Commission, as well as ex parte and inter partes experience in the U.S. Patent and Trademark Office.  Joe is admitted to the Supreme Court of the United States; the U.S. Courts of Appeals for the Federal Circuit, the Ninth Circuit, the Seventh Circuit, and the Fifth Circuit; and the U.S. District Courts for the Central, Southern, and Northern Districts of California, the District of Arizona, the Northern District of Texas, the District of Nevada, the Northern District of Florida, the District of Colorado, the Western District of Kentucky, the Northern District of Illinois, and the Southern District of Indiana.  Joe was one of the first lawyers to achieve a jury verdict under trade dress theory and the first to achieve a preliminary injunction in a patent case in the Ninth Circuit without a prior adjudication of patent validity.  Joe has also successfully defended trademark actions brought by Ralph Lauren/Polo and Louis Vuitton and engineered a very advantageous buyout of his client for more than $24 million after the client was originally charged with patent infringement.  In addition, Joe has structured a royalty-free patent license for a client who was an ex-employee of the plaintiff and who was initially charged with patent infringement and theft of trade secrets.  Joe has received an AV rating from Martindale-Hubbell.

Transactions and Licensing

Joe has counseled clients in all aspects of patent, trademark, copyright, unfair competition, and trade secret matters, including patent ownership transfers, due diligence investigations involved in mergers and acquisitions, employment agreements, patent licensing and technology transfers, technology joint ventures, trademark licensing and merchandising agreements, copyright licensing and transfers, confidentiality agreements, and covenants not to compete.  He has also counseled clients regarding the protection of intellectual property when contracting with the U.S. government and universities.  Joe has been involved in prepublication reviews of advertising for conformance with fair advertising guidelines, counseled clients in their evaluation of competitors' advertising, and assessed the status of IP rights particularly under Section 43(a) of the Lanham Act.  Joe created and implemented an enforcement program resulting in more than 240 patent and copyright licenses driven by numerous court filings, acquisitions of injunctions and consent judgments, and structured settlements.  He has also represented the Beverly Hills School system, the Beverly Hills Police, the Mills Brothers, and Bob Hope in the licensing of his name and likeness.

Patent and Trademark Prosecution

Joe has been involved in procuring patents and trademark registrations from the U.S. Patent and Trademark Office, foreign patent offices, and under the PCT.  He has been involved with and analyzed a wide variety of technologies in numerous industries, including medical implant and fixation devices; medical diagnostic equipment; medical fluidized support systems for burn patients; telecommunication equipment; microscale IC chip coolers; fuel injected two-cycle marine engines; die casting machines; microscale integrated optical lightguides; submersible oceanic core systems; toy products; chemical spraying devices; emergency shower equipment; injection molded products; aircraft structural designs; orthodontic appliances; food processing equipment; computer software for business applications; computer software for building heating, ventilating, and air conditioning systems; computer software for building security; computer copier components; anti-aircraft and anti-ship missile control systems; army battle tank thermal imaging systems; oil well drill cuttings disposal equipment and processes; traditional and water bed mattress constructions; office furniture and storage systems; motion detecting lighting appliances; theatrical lighting trusses; stage lighting apparatus; gas operated fireplaces; consumer tools; and industrial heat exchangers.  Joe also has been involved in seeking patent protection for insurance programs and financial instruments.

Previous Affiliations

Joe has worked for Litton Industries in Beverly Hills, California and then for fifteen years headed his own intellectual property boutique firm in Los Angeles where he engaged in a substantial IP litigation, prosecution and business practice.  Before joining Querrey & Harrow, Joe was a member of the firms of Jones Day (Chicago) and Morgan Lewis (Los Angeles).

Publications, Speeches and Teaching

Joe has authored numerous articles relating to intellectual property law issues and has given a number of presentations concerning federal litigation, patent, trademark, and copyright topics.  Joe has been very active in bar activities, including memberships in the American Bar Association, the American Intellectual Property Law Association, the International Trademark Association, the Association of Business Trial Lawyers, the Intellectual Property Law Association of Chicago, the Los Angeles County Bar Association, and The Chicago Bar Association.  Joe has served on the board of governors of the Los Angeles Intellectual Property Law Association, the board of governors of the Beverly Hills Bar Association, as editor-in-chief of the Beverly Hills Bar Journal, as a delegate to the California Conference of Delegates, and as a Master, Inns of Court of America.  Joe has lectured at the University of Southern California Law School, the University of California at Los Angeles and the California State University, and he has authored a portion of the California State Trademark Law.

Representative Matters

Trial Matters

Marcy Gymnasium Equipment Co. v. California Gym Equipment Company
Successfully defended in Federal Court a former employee charged with patent infringement and theft of trade secrets.

Fabrica Incorporated v. El Dorado Corporation
Federal jury trial in California; became the first case to secure protection under trade dress theory for carpet sample folders.

Sunshield, Inc. v. AutoShade, et al.
Created and implemented a patent and trademark enforcement program for automobile sunshields that extended across the country comprising 18 Federal Court cases and secured over 240 licenses.

May v. American Southwest Waterbed Dist., Inc.
Achieved successful jury verdict in a Texas Federal Court relating to a patent for a small one-piece extruded plastic component.

Bauman v. Multi-Med Moulds
Successfully defended in an arbitration proceeding a licensee charged with not using its “best efforts” to develop and market a new patented medical device, a laryngoscope.

Parrish v. Wilton Enterprises, Inc.
Enforcement action in an Illinois Federal Court of a patent for novel metal cooking pan having superior heat transfer capabilities and assembly components; case was brought in conjunction with antitrust claims.

Ralph Lauren v. Steve Wessler dba Polo Club of Beverly Hills
Defended against charge of trademark infringement of the POLO mark; the successful defense allowed the client to create a highly lucrative line of active sportswear marketed throughout the United States.

Schaper Manufacturing Co. v. Long’s Drug Stores, et al.
Initiated a series of cases in the International Trade Commission and numerous Federal District Courts to enforce patent, trademark, copyright and trade dress rights in STOMPER brand toy vehicles; sales volume for the toys were over $100 million per year and very rewarding licenses were generated for the client.

Fuller Bulk Handling Corp. v. Gould, Inc.
Successfully defeated a patent infringement charge in a California Federal Court concerning industrial environmental heat exchangers.

Vinyl Products Mfg. v. Monterey Mfg. Inc., et al.
Implemented enforcement and licensing program in the waterbed industry; achieved first patent license in that industry, as well as numerous preliminary injunctions, including the first granted to a patent holder in the Ninth Circuit who did not have a prior adjudication of patent validity. 

UHI Corporation v. Support Systems, Inc.
Successfully defended infringement action brought under patent for burn patient hospital beds using fluidized bead technology; the spirited defense resulted in a very advantageous settlement of over $24 million for the client.

Vinyl Products Mfg. v. American National Watermattress Corp. et al.
Brought a number of patent enforcement cases and engaged in a successful licensing program relating to the process of manufacturing water damping floatable polyester fiber pads with dispersed polystyrene beads for waterbeds; also uncovered fraudulent creation of false prior art.

Westric Cutting Tools, Inc. v. Kysor Industries Corp.
Successfully enforced copyright for an auto parts catalog concerning rebuilt generators and alternators against infringement by competitor.

Vuitton Et Fils S.A. v. J. Young Enterprises, Inc.
Successfully defended clients charged with counterfeiting a well-known handbag trademark, including acquisition of summery judgment of non-infringement in a California Federal District Court.

Publications

• Concurring Prejudice, 31/4 New Matter 17
• Justice Kennedy’s Sudden And Deliberate Attack On The Patent System, IP LAW 360 (October)
• What To Expect And What To Do After The Supreme Court’s eBay Opinion, IP LAW 360 (June)
• Patent This!, ABA Journal, 2001
• Discrimination Against Authors And Artists-The Ninth Circuit And Section 43(a), 33 Beverly Hills Bar Journal 35
• Reverse passing Off-Is Section 43(a) Part Of The Copyright Act?, 5 Intellectual Property Today 8
• Monopolization Of A Color?, 2 Law Works 8
• Patenting (Insurance) Coverages, 93 Best’s Review 23
• Patents For Financial Products, 208 New York Law Journal 112
• Are Trade Secrets For Real?, 56 Journal Of The Patent Office Society 663

Presentations 

• Patents, Trademarks, Copyrights and Trade Secrets, Jones Day Seminar, 2006, Chicago
• Taking Depositions, Chicago Bar Association Seminar, 2004, Chicago
• Voir Dire (Jury Selection), Inns of Court Seminar, 1994, Los Angeles
• Patent Damages-Then And Now, Price Waterhouse Seminar, 1993, Los Angeles
• A Monopoly For New Financial Products, Jonathan Club Speech, 1993, Los Angeles
• Intellectual Property For The Financial Industry, Mutual Fund Council Speech, 1993, Beverly Hills
• Patents, Protection Of Ideas, UCLA Seminar, 1993, Los Angeles
• What Financial Advisors & CEOs Should Know About Safeguarding Intangible Property, California Society of CPAs Seminar, 1991, Los Angeles
• Patents, Trademarks & Copyrights, What Are They, How To Protect Them and How to Use Them, Morgan Lewis Seminar, 1990, Los Angeles
• Patents, Trademarks and Copyrights For The Entrepreneur, California State University Seminar, 1980, Los Angeles