TottisLaw | Rachel M. Vorbeck

Successfully handled a matter before the Illinois Appellate Court where the client-appellee was accused of breach of partnership obligations, breach of fiduciary duty and unjust enrichment for the use of product designs. The court affirmed summary judgment on each of these claims in a lengthy dispute between the client and one of its vendors.
Argued successfully in the Fourth Circuit Court of Appeals on breach of contract matters for a manufacturing client and defeated attempts by the appellant to pierce the corporate veil so as to allow recovery from non-contracting entities.
Successfully represented a financial industry client in argument before both the United States Court of Appeals for the Sixth Circuit and the Michigan Appellate Court against a consumer’s action alleging improper credit reporting practices.
Argued in the Seventh Circuit Court of Appeals and upheld trial court judgment in favor of a client asserting the violation of copyrights by a proprietor who authorized performance of works by mechanical means in a public establishment.

Lead counsel in a patent infringement action where client, a medical device manufacturer, was the accused infringer. Obtained summary judgment in the trial court and successfully defended the judgment in the Federal Circuit.
Lead counsel in patent infringement action alleging that client used a patented process to treat leather for consumer products. Established that certain formula did not infringe and obtained favorable settlement of remaining claims.
Lead counsel in patent infringement action brought in the Eastern District of Texas alleging that her client used various patented processes in producing its wire and cable products. Obtained a stay of the action in federal court pending the outcome of actions in the U.S Patent and Trademark office challenging the validity of the patents in issue.
Counsel of record on a case involving multiple patent infringement claims and counter claims between two medical device manufacturers. Took numerous party and expert depositions and assisted in trial preparation on the first of the cases. Assisted in preparing the Markman hearing materials on remaining claims. Matters eventually settled on terms that allowed the client to continue development and sales of its accused products.

Lead counsel for company accused of copyright infringement for digitizing information originally published in non-fictional works. The case proceeded simultaneously in two different district courts and involved an appeal before the appellate practice before settling on terms advantageous to the client.
Counsel of record on numerous infringement actions while representing a client charged with collecting fees for public performance of its members’ copyrighted works.
Successfully defended a copyright and trademark infringement claims by an individual artist who claimed the client had copied his designs in the decorative elements of its product. Established independent creation of the designs and defeated the attendant trademark claims on the basis of nominative fair use.

Lead trial counsel in one of the first cases tried under the federal anti-dilution provisions of the Lanham Act. Successfully established the client’s fame and rights under its trademark requiring the defendant to withdraw a pending trademark application and to change its name.
As lead counsel, successfully defended a preliminary injunction motion by establishing the functionality of the plaintiff’s trade dress and product design which her client had allegedly misappropriated.

Handled a series of cases between two press manufactures over contractual rights to know-how for products and rights to sell in the US. Examined witnesses, including experts, at preliminary hearing and secured the client’s immediate rights to certain drawings and manufacturing information.
Lead counsel in several cases alleging theft of confidential and trade secret information by one or more of the client’s former employees and a new employer who was also a competitor of the client. Secured judgment against one of the employees and the new employer in the first action to go to trial and eventually obtained a settlement of all pending actions, which among other things, prevented future acts of misappropriation by the competitor.
Lead counsel on a trade secret misappropriation case against former employees of a medical device company. Settled on the eve of trial with requirement that former employees change the formula/process by which the product was made before competing in the market.
Lead counsel on a trademark infringement matter where the client was a vendor to its customer, a large chain store, of products that included design features that were allegedly developed and shown to the customer by another, unsuccessful bidder. Was able to conclude the matter without pulling product from the customer’s shelves or destroying existing inventory and did not cause the client to lose its vendor status with the customer.

One of the trial counsel in a successful suit to withhold the hold-back payments of the purchase price for a Silicon Valley start-up company where certain accounting irregularities caused the company’s value to be overstated on its books and the promised technology was not as well developed as had been represented at the time of purchase.
Lead counsel, acting on behalf of one of the trustee and a bank creditor, on a five-month long preference action in bankruptcy court to recover multi-millions of dollars in payments made by the debtor during the 90-day preference period. Presented expert testimony during the case in chief that established the contested issue of the date of the debtor’s insolvency and which resulted in a favorable ruling on directed verdict motion. After this ruling, the trustee was able to successfully complete the case, and recover substantial assets for the estate which ultimately benefited the bank client.
Lead counsel in action alleging unfair debt collection practices. Defeated motions for class certification by disqualifying the plaintiff as class representative.

MONICA L. THOMPSON