William R. Overend

Bill is a trial lawyer whose practice focuses on high-stakes litigation involving complex technology. His practice focuses on intellectual property litigation, including patent, trademark, and copyright infringement, trade secret misappropriation, and unfair competition, as well as other complex commercial litigation.

Experience

Representative matters

Lead trial counsel for a major life sciences client in a month-long jury trial in Charlotte, North Carolina, resulting in multi-million-dollar verdict for the client. The jury found that the defendant entities that serviced the clients' medical imaging equipment had illegally accessed and used the clients’ proprietary servicing software on its imaging equipment, in violation of the Digital Millenium Copyright Act (“DMCA”) and Computer Fraud and Abuse Act (“CFAA”).

Lead technical counsel for LED manufacturer Lumileds in jury trial in Santa Clara Superior Court, resulting in $66 million verdict for client. After a one-month trial, a Silicon Valley jury found that a China-based company and its CEO misappropriated our client’s LED technology in 2012 and used it to develop competing products in China. In a subsequent bench trial, the Court ruled that the trade secrets remained valid in 2019 and issued a permanent, worldwide injunction prohibiting the defendants from any further use or disclosure of Lumileds’ trade secrets.

Lead trial counsel for advertising technology company Extreme Reach, in a case involving Extreme Reach’s trade secrets in customized accounting software used in connection with television and film productions. Extreme Reach sued a competitor and several former employees based on claims that the defendants had conspired to misappropriate Extreme Reach’s trade secrets and confidential information, improperly solicit its employees, and misappropriate its customers. The case settled favorably on confidential terms shortly before trial, including a permanent injunction barring the defendants from using or disclosing Extreme Reach’s trade secrets and confidential information.

Lead trial counsel for Safeway defending patent infringement claims in the Eastern District of Texas involving Safeway’s customer rewards program. Bill successfully briefed and argued the summary judgment motion that led to the court’s ruling invalidating the plaintiff’s patent on numerous grounds, including that it is abstract, anticipated, and obvious.

Trial counsel for Realtek Semiconductor Corp. in three-week jury trial in Northern District of California. In a precedent-setting case, the defendant was found to have breached its obligation to offer a patent license on reasonable and non-discriminatory (RAND) terms for patents essential to certain IEEE wireless networking standards. In the first California jury verdict of its kind, the jury awarded $3.825 million in damages to Realtek and set a low royalty rate for the defendant’s patents. Earlier obtained summary judgment of liability regarding the defendant’s breach of contract.

Trial counsel for defendant NETGEAR in patent infringement suit relating to network cards. After a three-week jury trial, obtained verdict of patent invalidity on a patent that had been re-examined by the PTO three times. Jury also found non-infringement and no willfulness. (Named to the San Francisco and Los Angeles Daily Journal’s list of California Top Defense Verdicts of 2012)

Represented clients in patent infringement cases involving hard disk drive manufacturing equipment, 3-D graphics accelerator chips, telecommunications and DSL testing equipment, methods for graphically enhancing television broadcasts, and medical devices.

Brought and opposed numerous motions for injunctive relief in wide range of intellectual property actions, including successfully obtaining TROs and seizure orders in cases involving counterfeit goods.

Successfully obtained seizure order for counterfeit goods on behalf of Sony against seller of Sony PlayStation® game modification device; later obtained preliminary injunction in one of first reported decisions under Digital Millennium Copyright Act.

Represented The Coca-Cola Company in a counterfeit action against one of its former beverage distributors. Obtained a TRO and seizure order. After confirming the TRO with a preliminary injunction, the case resolved favorably.

Obtained a preliminary injunction on behalf of client, Juris, in its counterclaim for trademark infringement based on plaintiff/counterclaimant defendant’s use of a confusingly similar Internet domain name. This case was the first to hold that a domain name could infringe a registered trademark under a traditional likelihood of confusion analysis. The Ninth Circuit has cited, and referred to, the Juris case with approval as the first in the “Internet trilogy” of trademark decisions.

Pro bono

Bill has been active in pro bono activities, including obtaining political asylum for two Nigerian refugees and their families and helping an Iraq War veteran obtain a trial victory to recover stolen assets. He also has been honored for his work for a nonprofit organization serving the senior citizen population of the Oakland area.

Recognitions

Selected through peer review for inclusion in The Best Lawyers in America© for Litigation – Intellectual Property, 2022-2025
Named by the Daily Journal as one of California’s Top Trade Secrets Lawyers, 2019, 2021, 2022, and 2024
Named by the Daily Journal as one of California’s Top Intellectual Property Lawyers, 2016