Ms. Mandell's practice centers on
litigating, arbitrating and counseling on intellectual property and antitrust matters.
After receiving her JD magna cum laude from Boston University Law School in 1981, Ms. Mandell began her career
as a staff attorney at the Bureau of Competition of the Federal Trade
Commission in Washington, D.C., where she litigated and tried
antitrust cases of national significance. Since then, she has
litigated antitrust cases involving such diverse markets as computer
hardware and software, hospital, nursing and physician services, prescription/generic
drugs, sporting equipment, buses, various automotive parts, and construction
equipment.
On
the intellectual property side, Ms. Mandell's cases have included patent,
trademark, computer and Internet law, theft of trade secrets, trade dress and
copyright infringement claims, and counterfeiting, unfair competition and false
advertising claims, as well as claims relating to breach of license agreements.
Ms.
Mandell also has substantial experience with legal issues that arise from the
intersection of antitrust and intellectual property, such as those arising from
the settlement and enforcement of patent claims, as well as antitrust and
patent misuse counterclaims and defenses to IP litigation. In
addition, she has counseled on antitrust issues in the context of IP licensing
in franchise and other agreements. Finally, she has been heavily involved
in IP-antitrust issues that arise in the distribution context, including
alleged tying and bundled pricing, as well as in the context of standard
setting by industry groups and trade associations.
She has handled cases in all state
and federal courts in Michigan, the federal courts of California (Northern,
Central and Southern Districts), New York (Southern District), Delaware, Utah,
Wisconsin, Colorado, Ohio (Northern District), Virginia (Eastern District)
and New Hampshire, in proceedings before the Federal Trade Commission and the
Trademark Trial and Appeal Board, in the Court of Appeals for the Federal and
Sixth Circuits, and in arbitrations before the American Arbitration
Association.She is also a member of the
bar of the United States Supreme Court.
In
2007 the American Arbitration Association appointed Ms. Mandell to its Roster
of Neutral Commercial Arbitrators. She has presided as arbitrator, both
individually and as part of a panel, in intellectual property and general
commercial disputes.
Experience
Representative Intellectual
Property Cases:
Obtained preliminary and permanent injunctions for plaintiffs
in many trademark infringement and cybersquatting cases, including:
World Mortgage Company, World Savings Bank, FSB, et al. v.
World Mortgage Corporation, Docket
No. 04-CV-73966 (E.D. Mich.)
Watkins Manufacturing v. Dimension One Spas, Docket No. 3:03-CV-955 (S.D. Cal.)
Bowtie, Inc. v. Pet-by-Net, Inc., Docket No. 02-CV-8396 (C.D. Cal.)
NSF International v. HomeWater, Inc., Docket No. 5:98-CV-60334 (E.D. Mich.)
Republic Bancorp, Inc. v. Republic Banc, Docket No. 98-cv-73939 (E.D. Mich.)
LaShish, Inc. v. Shish Village Restaurants, et al., Docket No. 96-CV-73446 (E.D. Mich.)
Successfully defended/settled many trademark infringement
actions, including:
OfficeMax, Inc. v. Med Max, Inc., Docket No. 96-CV-73446 (E.D. Mich.)
Kolene Corp. v. Durferrit GMBH and DeGussa GMBH, Docket No. 95-CV-72090 (E.D. Mich.)
Dedo Gargoyles v. National Wonders, Inc., Docket No. 2:98-CV-71205 (E.D. Mich.)
Obtained Summary Judgment of Non-Infringement, either literally
or under the doctrine of equivalents, in Stumbo v. Eastman Outdoors,
Inc., Docket No. 05-CV-664 (D. Colo.), affirmed, 508 F.
3d 1358 (Fed. Cir. 2007)
Obtained Summary Judgment on behalf of defendant and Final
Judgment of Non-infringement in MEMC Electronic Materials, Inc. v.
Sumitomo Mitsubishi Silicon Corp., Docket No. 01-CV-4925 (N.D. Cal.)
Obtained on behalf of defendants an order of dismissal of
copyright claims in Meshwerks, Inc. v. Toyota Motor Sales U.S.A., Inc.,
Grace & Wild, Inc., and in Saatchi & Saatchi, Inc., Docket No.
2:05-CV-00393 (D. Utah), and in Docket No. 2:06-CV-97 (D. Utah 2006),
obtained final judgment of non-infringement.
Obtained summary disposition and costs for defendant against
plaintiff claiming theft of intellectual property in Doob LLC v. MSX Inc.,
Docket No. 05-364-CZ (Macomb County, Michigan Circuit Court), appeal
dismissed by Michigan Court of Appeals (Michigan COA No. 262596).
Obtained TRO and preliminary and permanent injunctive relief in
case alleging theft of trade secrets by former employee, MSX Int'l v.
Williams, Docket No. 05-69749 (Oakland Cir. Ct.)
Representative
Antitrust Cases:
Obtained jury verdict from the United States District Court for
the Eastern District of Michigan for defendant in an antitrust case
alleging claims under the Robinson-Patman Act in In-N-Out Food Stores
v. Metropolitan Bottling Co. (E.D. Mich.)
Obtained summary judgment for defendant in antitrust case
alleging claims under Section 1 of the Sherman Act in General Aviation,
Inc. v. Garrett Corporation, 743 F. Supp. 515 (W.D. Mich.)
This monopolization/boycott case settled favorably with
opponent paying client’s attorneys fees in full following preliminary
injunction hearing in Healthdrive MI Corp. v. Nursing Home Group, et
al., Docket No. 2:97-CV-72985 (E.D. Mich.)
Representative
Cases with Intellectual Property & Antitrust Interface:
M-I LLC v. Halliburton Energy Services, Inc., Docket No. 6:07-cv-311 (E.D. Tex.) (antitrust challenge to
enforcement of IP)
Zuccarini v. Hoechst A.G.,
Docket No. 98-74043 (E.D. Mich.), part of multidistrict litigation In
re Cardizem CD Antitrust Litigation, 99 MD-1278 (E.D. Mich.)
(antitrust challenge to settlement of IP litigation)
Publications
"Can You Afford the Fight? Yes, enforcing your patents
doesn't have to cost millions," Legal Times
(July 2007)
Ms. Mandell's practice centers on
litigating, arbitrating and counseling on intellectual property and antitrust matters.