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Joseph D. Calhoun III

Associated Counsel

San Francisco Office

One Embarcadero Center Ste. 1020
San Francisco CA, 94111

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Biography

JOSEPH D. CALHOUN III, a registered patent attorney, has over twenty-five years of legal and related business experience in commercial litigation and client counseling, especially in the intellectual property fields; as Associated Counsel to the firm or its clients, a co-counsel or Associated Counsel engagement may be implemented on a case by case basis. Besides assisting clients in obtaining patents for inventions and registration protection for trademarks and copyrighted materials, Mr. Calhoun’s experience also includes assisting clients in acquiring ownership rights or use rights from others for trademarks and copyrighted works, and for valuable technology in a variety of technological fields. He has prosecuted patent applications for a diverse array of technologies, including:

PATENTING

Biological and Chemical - such as wound healing compositions including blood platelets, spore vaccines involving glycoconjugate-enhanced cellular phagocytosis, plant based expression of avian Interleukin-12 (cellular/agri-biotech), a cell line, delivery of molecules to cells (cellular/biotech), animal feed compositions, and adhesives and epoxies).

Mechanical - such as harvesting conveyors, cabling installation machinery, and pipe coupling machines.

Electronic and Computer Governance - such as firmware that manages the amount of power provided to a CPU for optimizing the performance of tasks, software governing aerial spraying systems and timber cutting systems, management of crawl-space de-humidification systems and catch training gloves with pressure and flexion sensors, and instrumentation such as multi-color optical cavity ringdown based detection of airborne molecules (laser/optical), detection of a molecule with ultraviolet radiation (laser/optical), light mediated air purification (UV and fiber optics/anti-microbial), and differential mass analyzer and sequential differential mobility analyzer (spectrometry/analytics) .

BUSINESS START-UP AND EXPANSION

Mr. Calhoun has also been intimately involved in business start-up and expansion, assisting several early-stage companies license patents, obtains financing, commence operations, and enter into alliances and other arrangements for the distribution of products.

Examples of some of Mr. Calhoun’s non-litigation legal experience include representation of the following:

• Universities in pursuing patenting of bio-based, optical, electro-magnetic, electronic, mechanical, software-based and nano technologies, and licensing technology to spin-off companies.

• A start-up agri-biotechnology company in licensing technology patented by the United States Department of Agriculture, and negotiating sub-licensing with companies within the United States and in foreign countries.

• An animal feed manufacturing company in structuring domestic and foreign distribution agreements and strategic alliances.

• An inventor of wound treatment biotechnology (and his succeeding start-up company) in pursuing patenting of technology and registration of trademarks within the United States and in foreign countries; subsequent representation of the inventor in sub-licensing of technology from the start-up company for use in particular fields of use.

• A start-up veterinary products company in licensing negotiations with companies within and outside the United States.

• A start-up biotechnology company in obtaining and commercializing patents on environmental remediation technology.

• Inventors patenting medical devices, and licensing medical devices to major medical device manufacturers.

BUSINESS LITIGATION

Actively engaged in business litigation for over twenty-five years, Mr. Calhoun has successfully represented clients in lawsuits involving allegations of infringement and related federal and state causes of action for unfair competition, false advertising, deceptive trade practices, tortious interference with business relations, trade secret misappropriation and breach of non -competition covenants.

Below are some intellectual property lawsuits with Mr. Calhoun listed as counsel of record:

1. Defense counsel for a start-up manufacturer of inventory conveyor systems, involving primary allegations of patent infringement and unfair competition in connection with the alleged misconduct of former employees in forming a competing business. Faced with allegations of infringement of the plaintiff’s utility patent, Mr. Calhoun successfully prevented entry of a preliminary injunction, essentially establishing that the defendants’ own patent-pending conveyor system was distinguishable from the plaintiff’s patented system; denial of injunctive relief precipitated a confidential settlement wherein the firm’s client continued operating the start-up company.

2. Plaintiff’s counsel in a declaratory judgment action on behalf of a manufacturer of decorative lawn and garden products. After escalating demands by the defendant to stop selling products allegedly infringing various design patents, Calhoun Law Firm was authorized by the client’s insurance carrier to file a pre-emptive suit in Arkansas (rather than awaiting imminent suit on the West Coast). A confidential settlement was reached following favorable discovery, with our client continuing business as usual.

3. Plaintiff’s counsel representing an inventor against his brother and nephew, involving primary allegations of breach of contract and deceit concerning inventorship and ownership of technology. The defendants essentially duped our client into developing an automated grocery cart sanitation system, with promises of co-ownership in a company to be formed for selling or licensing the system; the defendants secretly filed a patent application that failed to name the client as an inventor, and they formed the company without providing the client with any ownership interest. The case settled after the firm obtained partial summary judgment awarding its client co-ownership of the technology and related patent application, declaratory judgment that the defendants’ licensing of the technology was unauthorized, and summary adjudication of liability for breach of contract and conversion.

4. Defense counsel representing a retail chain, with primary allegations of trademark infringement, unfair competition and tortious interference concerning retail sales of hair care products sold by the plaintiff manufacturer only for re-sale by salons. Mr. Calhoun obtained summary judgment dismissing all claims, providing the firm’s client with legal justification to continue selling such products. That summary judgment has also provided a potent shield for deflecting a number of similar demands by other manufacturers.

5. Plaintiff’s counsel representing a chimney sweeping company, pursuing primary claims of state trademark infringement and unfair competition. Calhoun Law Firm represented a business owner against his nephew, who had initially been employed to run the business, then licensed to open a second location for the client’s business. The nephew surreptitiously misappropriated the plaintiff’s telephone number and customer list, then incorporated a competing business under a name confusingly similar to the plaintiff’s. Despite a verdict of infringement and permanent injunction prohibiting the nephew’s continued use of the plaintiff’s mark, the defendant continued to infringe and compete unfairly. The firm then obtained a judgment of willful contempt of the permanent injunction, and the client was awarded costs and attorneys’ fees.

6. Defense counsel representing a fledgling tribe of Native Americans against another tribe, primarily involving alleged trademark infringement by our clients. Mr. Calhoun substituted in as defense counsel, then filed counterclaims against the plaintiff tribe (and third party claims personally against its officers) primarily for their fraudulent trademark registrations, deceptive trade practices, and unfair competition. Calhoun Law Firm’s clients obtained summary judgment that the opponents were liable for fraudulent trademark registration and deceptive trade practices; the relief awarded included cancellation of the opponent’s trademark registrations, destruction of materials bearing infringing marks, and injunction against the use or attempted registration of any confusingly similar marks.

7. Defense counsel representing a manufacture of skin care products in a copyright infringement action filed by a photographer in connection with a swimsuit calendar promoting our client’s products. The court granted partial summary judgment that our client was not liable to the plaintiff for direct copyright infringement or for common law punitive damages. The case settled promptly after the court summarily dismissed the plaintiff’s multi-million dollar claim for statutory damages.

8. Plaintiff’s counsel representing the developer of copyright-protected protocols and materials for counseling and treatment of substance abuse and addiction; the primary claims were for copyright infringement, trademark infringement and unfair competition. The defendant was caught photocopying the client’s materials rather than purchasing authorized copies as previously done. The court permanently enjoined further unauthorized copying (and use of the client’s registered service mark), and ordered the defendants to deliver up all infringing materials for destruction.

9. Defense counsel representing a start-up company and its owners against their former employer, seeking an injunction prohibiting the clients from operating a competing business and soliciting the customers of the former employer; the primary allegations were for trade secret misappropriation and breach of a non-compete covenant in the field of bucket-truck testing services. Despite a seemingly ironclad non-compete agreement specifying application of another state’s law, the court was persuaded to apply Arkansas law and invalidate the non-compete agreement. The court also found that the plaintiff’s misconduct had precipitated the clients’ departure from employment at the plaintiff; accordingly, the court refused to enjoin the defendants from conducting business with most of the known customers, so the firm’s clients were able to continue operating the start-up business.

10. Defense counsel representing co-inventors of a device that improved automotive engine performance, against a plaintiff that bought the device and packaged it for resale in a private-label installation kit. The plaintiff’s complaint primarily alleged theft of trade secrets, unfair and deceptive trade practices, and intentional interference with business and contractual relations. The court granted summary judgment dismissing all of the plaintiff’s claims, and entered summary judgment granting the client’s counterclaim for debt owed; the court also awarded the firm’s client its costs and attorneys’ fees.

11. Plaintiff’s counsel representing an animal feed manufacturer against another, involving primary allegations of false advertising and unfair competition concerning claims made in the advertising of animal feed. A confidential settlement was reached, following appropriate changes to the advertising materials.

Besides being a recently-retired “soccer dad”, Joe is an avid bicyclist, participating in several 100 mile and 100 kilometer races each year.

Education

University of San Francisco School of Law (Juris Doctor, 1983)

Tulane University, New Orleans, Louisiana (Bachelor of Science, Biology and Psychology, 1978) 

Bar Admissions

State Bar of California, 1984 U.S. District Court for the Northern and Central Districts of California (California Bar Association)

State Bar of Arkansas, 1985 U.S. District Court for the Eastern and Western Districts of Arkansas Eighth Circuit Court of Appeals (Arkansas Bar Association; Past Chair, Intellectual Property Law Section)

U.S. Patent & Trademark Office, 1996