Representative Matters

Representative Matters

(full list of matters is available upon request)

Litigation (Go to Transactional Matters)

I have extensive experience representing clients in federal and state courts in all stages of litigation, including pre-filing and early case assessment, fact and expert discovery, patent claim construction, motion practice, trial, and appeals.  The full list of litigations in which I have been involved is available upon request.  Below is a list of select representative matters (bold typeface identifies my clients).

    • Baley v. Allergan (SDNY) — asserting claims for copyright infringement of photographs.
    • WS Chapter of the Kings Guard v. Davenport (WDNY) — defending against claims of trademark infringement.
    • Dog&Bone v. Noke LLC (SDNY) — successfully represented patent owner in asserting patent infringement claims in the field of Bluetooth® electronic devices.
    • EJ Brooks v. Cambridge Security Seals (SDNY) — successfully defended against claims for Trade Secret misappropriation; asserted Antitrust claims under the Lanham Act. (co-counsel)
    • Via Vadis v. Skype (D. Del.)* — won a dismissal with prejudice for Skype in an action accusing Skype’s VoIP software of infringing patents related to systems for distributed data access and management on a network.
    • StormHarbour Securities v. IIG-TOF (NY Sup. Ct., Commercial Div.) — won a summary judgment awarding the full amount of requested damages for breach of contract and unpaid investment banking fees. (co-counsel)
    • TransPerfect v. MotionPoint Corporation (N.D. Ca.)* successfully represented TransPerfect through a jury trial in a cross-infringement action involving eight patents directed to web based E-commerce systems for translation of web pages. (with prior firm)
    • Aeritas v. Delta Airlines; LVL v. Delta Airlines (D. Del.)* — represented Delta in several patent infringement lawsuits related to mobile device technologies.
    • Rembrandt v. Adelphia Comm’s et al. (S.D.N.Y., D. Del.)* — defended Adelphia in a multi-district complex patent infringement litigation related to software and communication technologies for high-speed cable modems.
    • WebXchange v. Allstate, et al.  (D.Del.)* — successfully represented an internet startup, in asserting its patents in the field of E-commerce and internet communications software.
    • Bridge Associates v. Bridge Finance Group (D. Conn.)* — represented client in asserting claims for trademark infringement.
    • Wardlaw, et al. v. Becton, Dickinson and Company, (D. Con.)* — reached a very favorable settlement for BD, which was accused of breaching a patent license, and of infringing the underlying patents related to immunoassay diagnostic tests.
    • Shaklee v. Masimo (C.D. Cal.)* — represented Shaklee in a patent infringement litigation concerning medical devices for pulse oximetry and spectroscopy, and associated embedded software.
    • Nokia Corporation v. Kyocera Wireless Corp. (E.D. Tex.)*  — patents related to cellular phones and wireless data transmission based on the CDMA2000 specification

* –

Transactional Matters (Go to Litigation)

I have also counseled clients on IP and other matters in various contexts, such as M&A transactions, franchising, and potential securities investment, including performing IP due diligence, assessing patent portfolios and  drafting and analyzing IP licenses.

  • Counseled Toys ‘R’ Us Ireland Limited with respect to the IP License associated with creating the first Irish national franchise of Toys ‘R’ Us;
  • Various Investment Institutions (various matters) — assessed the patent portfolios of potential investment targets and performed due diligence.  Patents related to semiconductor technology, electronic devices for the automotive industry, and others;
  • Major U.S. Bank (with prior firm) — Assessed the patent portfolio related to online banking and money management of a potential acquisition target;
  • Counseled a Major International Financial Institution accused of infringing the copyrights of an electronic daily newsletter; (with prior firm)
  • Counseled Trimble Navigation in various patent matters related to Radio Frequency Identification (RFID), GPS, and land surveying technologies; (with prior firm)
  • Reviewed and analyzed substantially all of the licensing agreements of a Major International Electronics Manufacturer interested in acquiring a competitor; (with prior firm).