Donna H. Catalfio is a partner in the Intellectual Property Department and a member of the Intellectual Property Litigation, Patents, and Trademark and Copyright Groups. She handles intellectual property litigation, including patent, trade secret, copyright, and trademark, as well as transactional matters, such as negotiating and drafting patent and trademark licenses, software licenses, book publishing contracts, and distribution agreements. Ms. Catalfio is a registered patent attorney admitted to the federal patent bar.
Ms. Catalfio has appeared in several patent litigation cases, recently taking a leading role in the claim construction phase of a national patent infringement case involving 50+ defendants. She has also been involved in enforcing and defending patents in such areas as software for help desk solutions, financial transaction systems, and online reservation systems. She served as lead counsel for a client recently sued for infringement of a patent covering induction motors.
With her background in patent prosecution, Ms. Catalfio brings substantial knowledge to invalidity and claim construction issues in any patent case. Her non-infringement summary judgment briefing led to a successful settlement for a major tire company in Arizona district court.
Apart from her patent litigation and prosecution practice, Ms. Catalfio has extensive experience in trademark and copyright law, protecting clients' rights from cradle to grave. She oversees the application and registration of a number of clients' trademarks and copyrights, and has led nationwide enforcement efforts for clients. She routinely defends and prosecutes trademark infringement, cybersquatting, and false advertising claims in both federal and state court, as well as before the U.S. Patent and Trademark Office. Ms. Catalfio has also successfully prosecuted a number of cybersquatting claims before the National Arbitration Forum under the Uniform Domain Name Resolution Policy (UDRP).
Ms. Catalfio recently negotiated and drafted a successful trademark assignment for a large retail grocery chain. In addition, she is experienced in litigating trade secret and restrictive covenant cases involving departing employees.
Before attending law school, Ms. Catalfio worked as an environmental engineer, receiving practical industry experience in patented technologies both in the United States and abroad.
Judicial Externship
U.S. Court of Appeals for the Ninth Circuit, 2003