Jedediah Wakefield

Fenwick & West LLP

San Francisco

Intellectual property litigation

Wakefield, the chair of Fenwick & West's litigation practice, focuses on trademark, copyright, trade secret and right of publicity matters as well as licensing, technology transfers and complex commercial disputes for technology and life sciences companies.

He's been retained by Peloton Interactive Inc., Loxo Oncology Inc., General Motors Co., SoundCloud Ltd. and a number of confidential clients.

In a biopharma trade secrets case, Wakefield represents Loxo, an Eli Lilly & Co. subsidiary that develops medicines for genomically-defined cancers, in a dispute with Pfizer-owned Array BioPharma Inc., which accused Loxo of trade secrets theft after seven of its former employees joined the company.

Loxo sued for declaratory judgment and won; Wakefield then defended the win before the 10th U.S. Circuit Court of Appeals. In December, Array dismissed its claims. Loxo Oncology Inc. v. Array Biopharma Inc., 18-CV03062 (D. Colo., filed Nov. 29, 2018).

"When Pfizer acquired Array [in 2019] a new set of eyes looked at the case and took a more mature view of the litigation," Wakefield said, explaining Array's decision to throw in the towel and pointing out that the companies had a prior relationship that led to unnecessary infighting. "Array wanted to bench a group of scientists unnecessarily," he said.

Exercise equipment maker Peloton of New York City chose Wakefield to defend it from trademark infringement claims brought by Ojai-based Move Press LLC, which publishes a cycling magazine named Peloton. The word refers to a group of cyclists in a race. Both parties obtained trademark registrations in 2014.

When the magazine demanded the exercise company cease its use of the mark, Peloton Interactive denied that any likelihood of confusion or dilution exists. The magazine sued more than four years later. Move Press LLC v. Peloton Interactive Inc., 18-CV01686 (C.D. Cal., filed Feb. 28, 2018).

The magazine asked for $30 million or more in damages, contending that consumer confusion was likely. But there was a problem.

"The plaintiff delayed four and a half years from when they knew Peloton was offering bikes," Wakefield said. "They tried to walk that back during summary judgment proceedings, but the judge wasn't moved by that."

In late 2019, U.S. District Judge John A. Kronstadt of Los Angeles threw out the case, adopting Wakefield's argument that the doctrine of laches -- which allows courts to dismiss claims as time-barred due to plaintiff delay -- should control the matter.

"Four years is the time limit after which delay is presumptively unreasonable," Wakefield noted. He added that high value companies like his client are often the target of opportunistic claimants looking for a big payday.

"I got a Peloton after working on the case," Wakefield said. "I felt I had been sitting through a long infomercial about the bike. And no, I didn't get a deal."

-- John Roemer