Thomas T. Chan
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Thomas is a versatile, highly acclaimed and internationally known lawyer and mediator. For more than 30 years, he has represented clients in:
- Multimillion dollar patent, trademark, copyright, trade secret, corporate and contract disputes;
- Successfully assisting clients in registering hundreds of trademarks, patents and copyrights;
- Closed multimillion dollar licensing, public company merger and acquisition and strategic transactions; and
- Acting as outside general counsel for small to medium size firms from incubation to exit.
He has represented entrepreneurs and multi-nationals in industries such as computer, software, aerospace, energy, consumer electronic, communication, e-commerce, automotive, sporting good, toy, healthcare, nutritional supplement, food and beverage, home and garden, beauty & fragrance, jewelry, fashion, financial service, real estate, entertainment, publishing and education. Fluent in Chinese, he is an early pioneer in China trade. He was trained as a mediator at the California Academy of Mediation Professionals and was selected to serve on the Panel of Neutrals of the International Trademark Association (INTA) and the Panel of Mediators and Arbitrators of the Los Angeles County Superior Courts.
A highly sought after lecturer and commentator, Thomas has been widely quoted in the Washington Post, Reuters, Los Angeles Times, The New York Times, Wall Street Journal and other national newspapers and magazines and has made frequent guest appearances on television and radio broadcasts. Thomas has received numerous awards over the years, including being named one of the Top 50 Intellectual Property Litigators in California by the Daily Journal. Thomas was appointed by the U.S. Secretary of Commerce and the U.S. Trade Representative to serve on the Industry Sector Advisory Committee, where he advised the United States on trade policies during the Reagan and senior Bush administrations.
Thomas has engaged in precedent-setting work in intellectual property law and China trade, including successfully turning the table around by forcing plaintiffs in five intellectual property cases to dismiss the case and pay his defendant clients to settle the counterclaims instead, a rare feat in the U.S. His representative matters include:
- Represented a tiny Taiwanese computer mouse manufacturer in successfully filing the first antitrust and IP misuse case against Microsoft. This case was widely reported in major media around the world and in biographies of Bill Gates. Since then, Thomas has litigated against Microsoft in 20 separate cases. Microsoft, Inc. v. Z-Nix, U.S. District Court for the Central District of California, Case No CV 92-3711 KN(GHKx).
- Successfully invalidated all three lighter utility patents on the basis of a precedent-setting summary judgment motion. Tokai Corp, et. al. v. Easton Enterprises, Inc., U.S. District Court for the Central District of California, Case No. EDCV 07-883-VAP. Affirmed on appeal by the U.S. Court of Appeals for the Federal Circuit, Case Nos. 2010-1057 and 2010-1116.
- Represented Chinese manufacturer and distributor before the International Trade Commission (ITC) in a Section 337 patent Investigation and met clients' objectives. Investigation No. 337-TA-565, In the Matter of Certain Ink Cartridges and Components Thereof.
- Defended one of the world's largest communication equipment manufacturer in a patent litigation. As a result of the favorable settlement, Thomas was appointed the client's exclusive outside counsel. Xircom v. Chenel, U.S. District Court for the Central District of California, Case No. 95-0967 HLH.
- Successfully prosecuted a patent infringement action involving computer fans and heat sinks. The action was settled with the entry of a permanent injunction and the payment of damages. Sunonwealth v. Adda, United States District Court for the Central District of California, Case No. CV 98-10484 RAP (BQRx).
- Successfully defended a multimillion dollar lawsuit involving seven design patents in truck lights by winning summary judgment motion invalidating five of the patents, then obtaining consent judgment invalidating all seven patents and a six figure award of damages for client's counterclaim. Grand General Accessories Manufacturing v. United Pacific Industries, Inc. et.al., United States District Court for the Central District of California, Case No. CV08-07078 DDP.
- Defended a patent infringement lawsuit against laptop manufacturer resulting in the dismissal and payment by Plaintiff to our client to settle inequitable conduct counterclaim. nView Corporation v. Rever Computer, Inc., United States District Court for the Eastern District of Virginia, Case No. C95-264A.
- Prosecuted copyright and trademark claims on behalf of a leading educational publisher, School Zone Interactive, against a Spanish and Arabic localization company; won summary judgment motion and an award in excess of $2.3 million, plus attorney’s fees. Multimedia Zone Inc. et al. v. Star E Media, et al., U.S. District Court for the Central District of California, Case No. SA CV 03-1151 JVS (ANx).
- In defense of software distributor, successfully moved for summary adjudication of the copyright claims, establishing that the first sale doctrine applied to the sale of software products. Novell v. Cableware Technologies, Inc., U.S. District Court for the Central District of California, Case No. 99-05019 MRP (Mcx).
- Successfully defended an apparel company accused of copyright infringement and unfair competition resulting in a token settlement without any injunction. Jordan Outdoor Enterprises, Ltd. v. Otto International, Inc., Case No. 4:06-CV-82 (CDL).
- Successfully litigated a jewelry copyright case which resulted in the dismissal of all claims and a very favorable settlement for defense. Kabana, Inc. v. Arts Kingdom Jewelry Co., Ltd., et al. Case No.: CIV 06-0679 JH(WDS).
- Successfully defended 4 cell phone accessory companies in copyright infringement suit by first securing insurance coverage, then ultimately forcing Plaintiff to dismiss suit and pay our clients attorneys fees to settle the suit.
- Won trademark cancelation trial decision before the U.S. Trademark Trial & Appeal Board against leading telecommunication equipment manufacturer. Archtek America Corporation v. Hayes, Trademark Trial and Appeal Board, Opposition No. 91092916.
- Defended Southern California Chinese Computer Association Chairman in a trademark infringement action and turned the table around by forcing Plaintiff to dismiss the lawsuit and pay defense to settle the counterclaims. Everview, Inc. v. Korea Data Systems, United States District Court for the Central District of California, Case No. CV 94-3776 ER (SHx).
- Defended an infrasonic massager importer accused of million-dollar trademark infringement and unfair competition. The client turned to Thomas for representation after losing the preliminary injunction motion. Won on summary judgment motion and forced the plaintiff to pay the client instead in settlement. China Healthways v. East Health Development, Inc., et al.,U.S. District Court for the Central District of California, Case No. CV 02-3137 LGB (JWJx).
- Prosecuted a counterfeit tea ring on behalf of one of the largest fine tea merchants. Secured a seizure order, permanent injunction and judgment in the amount of close to $1 million including attorney’s fees and costs. Eastrise v. Kim Seng, U.S. District Court for the Central District of California, Case No. CV 97 9313 DT (RNBx).
- Successfully opposed the trademark application for “OTTO KERN” by one of the world’s largest fashion conglomerates. Otto International, Inc. v. Otto Kern GmbH, Opposition No. 91170126 (TTAB 2009).
- Defended a shoe importer on counterfeiting claims after its inventory was seized without notice by FILA. After filing of the opposition to the order to show cause re the preliminary injunction, the action settled with all of the shoes returned to the client, and no payment of money and no injunction. Tact Sane adv. Fila, U.S. District Court for the Central District of California, Case No. CV 98 56187 R (RNBx).
- Defended a start up tool importer accused of misappropriation of trade secrets by a leading tool company. Plaintiff ended up dismissing its case and paying our client to settle its counterclaim. Link adv. Belwith, Los Angeles Superior Court, Case No. BC 131401.
- Successfully led the defense of a bank and loan officer accused of half a million dollar misappropriation of trade secret by winning a bench trial. Preferred Bank v. East West Bank, et al. Los Angeles Superior Court, Case No. BC 253382.
- Represented president and other executives of public company accused of multi-million dollar computer software trademark infringement and successfully settled case to the satisfaction of clients. Objective Interface Systems, Inc. v. Joan Garrett, U.S. District Court for the Northern District of California, Case No. CV 06 80346 (DLJ).
- Successfully prosecuted a breach of computer contract case winning $5 million verdict. G-Tech U.S.A., Inc. v. AST Computers, Los Angeles Superior Court, Case No. BC 225807.
- Represented East West Bank in a successful secured transaction funding the production of “American Gun” (2005).
- Represented Executive Producer Randy Wooten and Orange Dot Entertainment in the production and distribution of the documentary, “The Mars Underground” (2005), a Scot J. Gill film.
- Represented UCLA Vice Chancellor Chi Ming Ho and Professor C. J. Kim in a multimillion-dollar micro machine patent sale transaction with one of the 10 largest computer companies.
- Served as lead negotiator and counsel in the first PC software joint venture in the People’s Republic of China. This transaction was front page news in the China People's Daily, China’s official newspaper.
- Represented GAT, a financial software and consulting company, and its principal, Professor Tom Ho, in a multimillion-dollar merger with publicly held Barra.
- Represented PIC in a software development agreement with IBM funded by IBM and secured by copyright in the source code of the software.
- Counseled a regional bank in successfully hiring the entire sales department of a competing bank, which filed a lawsuit against our client but promptly dismissed it. Client in effect acquired the competing bank without having to pay multimillions in acquisition cost.
- Formed GC Capital LLC, a technology venture fund, and counseled its successful fund raising, subsequently moving its headquarters from US to Hong Kong.
- Represented United Business Computers, Inc., an office products distribution software company, in its stock merger with eCommerce Industry Inc.
- Counseled the formation of MRT LLC, private placement and guided MRT to become a premier DVD manufacturer and subsequent re-domicile from California to Cayman Islands.
- Represented GVC, a leading Taiwan computer component manufacturer, in successfully obtaining U.S. government approval of its takeover of Maxtech Corporation, an American distributor and OEM manufacturer of modems and computer peripherals and its takeover of BCM Advanced Research Incorporated, an American computer company.
- Represented PC Club from formation to its growth to become a regional computer retailer.
Before Fox Rothschild
Thomas was the chair and founder of his own law firm, the Chan Law Group LLP. He also previously served as in-house counsel with various corporations, including as general counsel of Lee Data Corporation (one of the largest 10 publicly held corporations in Minnesota at the time.)
During law school, Thomas was a student intern with the Honorable Shirley Abrahamson, current Chief Justice of the Wisconsin Supreme Court.
Beyond Fox Rothschild
A frequent lecturer and commentator, Thomas has been widely quoted in the Los Angeles Times, The New York Times, Wall Street Journal and other national newspapers and magazines and has made frequent guest appearances on television and radio broadcasts. He has been a speaker at Boalt Hall (University of California, Berkeley), University of California Los Angeles School of Law and Anderson School of Management, Finnish Institute for International Trade, SPA, Comdex, MacWorld International Summit and the International Technology Law Association. Thomas also presented the annual Intellectual Property Update for the Southern California Chinese Lawyers Association (SCCLA) from 2000 to 2002.
Thomas has testified at U.S. Congressional and administrative hearings on reducing trade barriers and protecting intellectual property and has been a keynote speaker at the U.S. Department of Commerce’s Annual Executive Conference.
Thomas was appointed by the U.S. Secretary of Commerce and the U.S. Trade Representative to serve on the Industry Sector Advisory Committee, where he advised the United States on trade policies during the Reagan and senior Bush administrations.
Additionally, Thomas was admitted to the United States Supreme Court in November of 2012.
Honors and Awards
• Included in a list of "Southern California Super Lawyers" for 2012 and 2013 in the area of Intellectual Property
• Named one of the Top 50 Intellectual Property Litigators in California by the Daily Journal
• Listed as a "Go-To Lawyer" by Corporate Counsel Magazine
• Listed in Marquis Who’s Who in the World and Who’s Who in American Law
• Martindale-Hubbell "AV" rated
• Recognized by the legal community as a California Super Lawyer in Los Angeles Magazine in 2011 and 2012
• Recognized as an “Outstanding Speaker” by the Chinese-American Engineers and Scientists Association of Southern California (1996)
• Recognized as a Preeminent Lawyer by The Bar Register of Preeminent Lawyers
Additionally, Tom Chan has been recognized for his dedication and positive impact over the years by the following organizations:
• Asian Pacific American Bar Association
• Chinese Americans United for Self Empowerment
• Southern California Chinese Computer Association
• The Judges of the Los Angeles Superior Court
• Global Advanced Technology Corporation
• The Secretary of Commerce
• The Southern California Chinese Lawyers’ Association Board of Governors
• The South Bay Chinese American Chamber of Commerce
• The Southern Bay Chinese Cultural Center
• The Wisconsin Supreme Court Justices