LEE WORKS ACTIVELY WITH HIS CLIENTS TO MAXIMIZE THE VALUE OF THEIR IP PORTFOLIO, INCLUDING OBTAINING TEMPORARY AND PRELIMINARY INJUNCTIONS TO PROTECT HIS CLIENTS’ INTELLECTUAL PROPERTY.
Lee Johnston is a partner in the trial group, focusing on patent, copyright, trademark and trade secret litigation. Lee has extensive experience working with a variety of industries including scientific research, solar and biofuel technologies, medical devices and equipment, computer hardware and software, telecommunications and semiconductor fabrication. Lee also handles large, complex business litigation and arbitration matters for his clients in these and other industry areas.
Education & Admissions
Harvard University (J.D., 1991), cum laude; Senior Editor, Journal of Law and Public Policy
Dartmouth College (A.B., 1988), magna cum laude; Phi Beta Kappa
- U.S. Federal Courts for Colorado and Texas
- U.S. District Courts for the Districts of New Mexico, Idaho, Connecticut, Maine, and the Eastern District of Virginia; U.S. Court of Appeals for the Ninth, Tenth, and Federal Circuits
- My24HourNews.com v. AT&T Corp. (D. Colo.) (represent AT&T in case involving, inter alia, dispute over ownership of IP rights to mobile phone-based broadcast platform under terms of parties’ license agreement).
- Interlink Products International, Inc. v. Water Pik, Inc. (D. N.J.) (represent Water Pik in patent infringement case relating to water diverter valves).
- DigiLabel v. Normark Corporation d/b/a Rapala (E.D. Tex. 2015) (represented Rapala in patent infringement case involving digital label technology)
- CSG Systems, Inc. v. TOA Technologies, Inc. (E.D. Tex. and N.D. Ohio 2014) (successfully represented CSG Systems in patent infringement case relating to workforce management software/technology).
- Decathlon, S.A. v. Yeti Cycling, LLC (C.D. Cal. 2014) (represent Yeti in patent infringement case relating to bicycle suspension technology).
- Annuitek LLC v. RiverSource Life Ins. Co. (E.D. Tex. 2014) (successfully defended RiverSource Life in patent infringement case relating to annuity software system).
- Unified Messaging Service v. Ameriprise Financial, Inc. (E.D. Tex. and MDL N.D. Ill 2013) (successfully represented Ameriprise in patent infringement action relating to e-mail notification systems).
- TQP Development v. NetSpend Corp. (E.D. Tex. 2012) (successfully defended NetSpend and obtained walk-away settlement in patent infringement case relating to encryption technologies).
- InMotion Imagery Technologies v. Imation Corp. (E.D. Tex. 2012) (currently representing Imation in patent infringement case relating to video display technology).
- Effectively Illuminated Pathways LLC v. Aston Martin Lagonda of North America, Inc., et al. (E.D. Tex. 2011) (represented Aston Martin in patent infringement case relating to flexible, LED-based automotive lighting assemblies).
- Santa Cruz Bicycles v. Yeti Cycles LLC (N.D. Cal. 2011) (representation of Yeti in patent infringement case regarding bicycle suspension system technology).
- Icon Health & Fitness v. Accell Fitness North America, et al. (D. Utah 2010) (represented Accell Fitness in patent infringement case concerning fitness equipment technology).
- OGMA v. Griffin Int'l Companies (E.D. Tex. and D. Minn 2011) (represented Griffin in patent infringement case directed to programmable motion-sensitive sound effect devices; successfully obtained transfer of case to Minnesota).
- Kilts Resources, LLC v. Robert Bosch LLC; (E.D. Tex. 2010) (represented Bosch in false marking case).
- Patent Group LLC v. Aspen Pet Products, Inc.; (E.D. Tex. 2010) (successful resolution of false marking case).
- DJO, LLC v. VitalWear, Inc. (C.D. Cal.) (representation of VitalWear in patent infringement case involving orthopedic thermal therapy technology).
- Fotomedia Technologies, LLC v. Fujifilm U.S.A., Inc., et al. (E.D. Tex. 2009) (representation of defendant NuSkin in patent infringement case relating to web-based photo sharing technology).
- Baychar v. Burton Corp, et al., (D. Me.) (obtained summary judgment on behalf of several ski and snowboard boot and apparel manufacturers in two parallel patent infringement lawsuits involving moisture and thermal regulating fabric technology). Case was affirmed by the Federal Circuit.
- Successfully represented a developer and manufacturer of patented desiccant de-humidification systems in license dispute before the American Arbitration Association.
- Successfully defended a manufacturer of infant sleep positioners in patent infringement lawsuit. Case settled on favorable terms.
- Successfully defended a public university and professor in a patent infringement case involving immunoassay techniques and technology. Case settled on favorable terms.
- Represented a publicly-traded medical device manufacturer in a patent infringement case involving image-guided surgical techniques.
- Successfully represented a publicly-traded medical device manufacturer in a series of patent infringement cases involving photo-ablative lasers and related components which are used in heart surgery.
- Successfully obtained a favorable monetary settlement for a worldwide manufacturer of flow meters in a patent infringement action against one of its European competitors and the competitor's US subsidiary.
- Successfully obtained a favorable settlement for a worldwide software developer in a patent infringement case brought by the inventor and his company.
- Successfully defeated a request for preliminary injunction sought by a licensee of technology relating to network video and motion detection in security applications (case ultimately settled on terms favorable to client).
Trade Secret and Unfair Competition Litigation
- Water Pik , Inc. v. Jeffrey Garrigues (Colo. State Court) (2015) (obtained stipulated permanent injunction and consent judgment prohibiting former employee’s use or disclosure of Water Pik trade secrets)
- Creative Computing d/b/a The Internet Truckstop v. Getloaded.com, 386 F. 3d 930 (9th Cir. 2004) (successfully obtained a favorable monetary verdict and permanent injunction for an Internet-based truck freight matching company after a two-week jury trial on trade secret and Computer Fraud and Abuse Act claims; case was affirmed in all respects at 9th Circuit).
- Atmel Corp. v. Vitesse Semiconductor Corp., 30 P.3d 789 (Colo. App. 2001) (successfully defended a semiconductor manufacturer in a misappropriation of trade secrets action brought by one of its competitors).
- Successfully obtained monetary settlement and injunctive relief for a software developer in the telecommunications and cable industry against former employees for misappropriation of trade secrets and violations of the Computer Fraud and Abuse Act.
- Successfully defended an Internet and print-based publisher of energy-related information and technology in a product disparagement and unfair competition case.
- Successfully defeated a competitor's request for a preliminary injunction against a Fortune 100 insurance brokerage client based on alleged theft of trade secrets (case settled for walk-away).
- Water Pik, Inc. v. Med-Systems, Inc., 726 F.3d 1136 (10th Cir. 2013) (won summary judgment dismissal of trademark and trade dress infringement case based on no likelihood of confusion and successfully represented Water Pik at 10th Circuit, which affirmed dismissal on all grounds).
- Successfully represented a Fortune 500 company in trademark/counterfeiting case involving illegal importation and distribution of olive oil.
- Represented ringtone aggregator in trademark litigation against industry competitor.
- Obtained favorable settlement for an international medical device manufacturer in a trade secret and copyright infringement matter brought against a former employee and his new employer.
- Prosecuted claims on behalf of a manufacturing client against a former employee for theft of trade secrets and copyright infringement of technical machine drawings and specifications.
Computer Software and Hardware
- Obtained favorable monetary settlement for life insurance company in lawsuit against software developer.
- Successfully obtained a complete dismissal of a purported class action brought by consumers against a Fortune 100 computer hardware manufacturer arising out of allegedly defective disk drives.
- Obtained a favorable settlement for a publicly-traded telecommunications client in a software performance case against a worldwide software developer.
News & Resources
Select Client Presentations
- “Claim Drafting in Light of Recent Developments at the PTAB,” 13th Annual Colorado Bar Association Rocky Mountain Intellectual Property & Technology Institute, May 29, 2015.
- “Securing Injunctive Relief in Trademark Cases,” 12th Annual Colorado Bar Association Rocky Mountain Intellectual Property & Technology Institute, May 29, 2014.
- “The Intersection of Trade Dress and Design Patents,” 11th Annual Colorado Bar Association Rocky Mountain Intellectual Property & Technology Institute, May 30, 2013.
- “Patent Infringement Damages,” 10th Annual Colorado Bar Association Rocky Mountain Intellectual Property & Technology Institute, May 31, 2012.
- "Indemnification Clauses in Licenses," 9th Annual Colorado Bar Association Rocky Mountain Intellectual Property & Technology Institute, June 2, 2011.
- "How Reexamination Can Change Your IP Strategy: Differences Between Inter Partes and Ex Parte Reexamination," 8th Annual Colorado Bar Association Rocky Mountain Intellectual Property & Technology Institute, June 4, 2010.
- “Markman, Summary Judgment and Other Pivotal Issues in Patent Litigation," Colorado Bar Association, September 24, 2009 (Denver, CO).
- "Patent Law Update," National Business Institute, November 13, 2008 (Denver, CO).
- "Computer Software Experts," Colorado Bar Association IP & Technology Institute, June 2, 2006 (Denver, CO).
- "Powerful Evidence in Civil Litigation," National Business Institute, February 13, 2004 (Denver, CO).
- "Damages in IP Litigation," January 26-27, 2004 (Denver, CO).
- "Complex Civil Litigation," National Business Institute, December 4, 2003 (Denver, CO).
- "Patent Litigation," January, 2002 (Boise, ID).
Industries & Practices
- Clean Technology
- Health Care
- Intellectual Property Litigation
- Technology Commerce
- Trademark, Copyright, Advertising & Brand Management