Practice focuses on securing, managing, and enforcing domestic and foreign intellectual property rights for optimal strategic and monetary gain, preparing opinions on intellectual property related assets, and counseling clients on a broad range of intellectual property related matters, including litigation and transactional matters such as patent infringement litigation and patent license agreements.
Relevant Experience
- Manages the asset procurement and utilization efforts for multiple client intellectual property portfolios.
- Counsels clients on a broad range of intellectual property matters, including intellectual property asset acquisition, management, transaction, enforcement, and litigation matters.
- Handles all aspects of complex intellectual property litigation, including comprehensive intellectual property infringement and validity analyses for pre-litigation investigations and litigation proceedings, expert witness preparation, motion and hearing practice, discovery related issues, arbitrations, and appeals.
- Performs complex patent prosecution before the U.S. Patent and Trademark Office, including petitions, appeals, protests, ex parte and inter partes re-examinations, reissues, interferences, and public use proceedings.
- Prepares and prosecutes domestic and foreign patent applications in the electrical, optical, mechanical, and chemical arts, specifically including, but not limited to, wireless and land-based telecommunication systems, digital signal processing systems, computer network systems, optical imaging and telecommunication devices, computer software algorithms, internet technologies, business methods, semiconductor packaging, discrete and integrated analog and digital circuits, electrical and optical interconnection devices, superconducting materials, medical devices, and integrated circuit fabrication processes and systems.
- Performs intellectual property portfolio evaluations and due diligence investigations, particularly with respect to company acquisitions and mergers.
- Prepares patentability, validity, infringement, and new product clearance opinions.
- Prepares and negotiates intellectual property license agreements.
- Prepares and prosecutes trademark applications, and handles Internet domain name issues.
- Prepares and prosecutes copyright applications.
Representative Cases - Cross Match Technologies, Inc. v. Suprema, Inc. et al. (E.D. TX., 2010). Serve as lead litigation counsel for defendant in patent infringement action involving biometric scanner technologies. Representation involving the handling all litigation-related tasks and securing indemnification for client.
- Ronald A. Katz Technology Licensing, L.P. v. TXU Corp. et al. (C.D. CA, 2007). Served as lead litigation counsel for defendants TXU Corp. et al. in consolidated multi-district patent infringement litigation. The matter, which was transferred from the U.S. District Court, Eastern District of Texas, involved interactive voice response technology and included numerous actions and defendants. Representation involved the handling of all litigation-related tasks for every TXU Corp. et al. defendant. The case was settled favorably for all TXU Corp. et al. defendants after forming consortium with co-defendants and obtaining favorable settlement terms.
- Ronald A. Katz Technology Licensing, L.P. v. TXU Corp. et al. (E.D. TX, 2007). Served as lead litigation counsel for defendants TXU Corp. et al. in patent infringement action involving interactive voice response technology. Representation involved the handling all litigation related tasks prior to transfer and consolidation of action in multi-district litigation.
- Alberta Telecommunications Research Centre v. Rambus Inc. (N.D. CA, 2006). Member of litigation team representing defendant Rambus in patent infringement and interference action involving semiconductor memory technology. Representation involved successfully moving to dismiss claims leading to settlement of action on favorable terms.
- Alberta Telecommunications Research Centre v. Rambus Inc. (E.D. VA, 2005). Member of litigation team representing defendant Rambus in patent infringement and interference action resulting in successful motion to transfer suit to venue more favorable to client.
- TradeCard, Inc. v. S1 Corporation et al. (S.D. NY, 2003). Member of litigation team representing defendant Bank of America in patent infringement action involving financial services technology resulting in jury verdict of non-infringement of patent and patent invalidity.
- Hypercom Corporation v. Verve, LLC et al. (D. AZ., 2006). Represented counter-defendant Verve against claims of malicious prosecution, abuse of process, and vexatious litigation resulting in jury verdict for plaintiff for monetary sum order of magnitude less than that sought by plaintiff. Case settled pending appeal.
- Verve, LLC et al. v. Hypercom Corporation (Fed. Cir., 2006). Represented appellant Verve in interlocutory appeal of transfer and dismissal of patent infringement claims. Case settled pending appeal.
- In the Matter of Certain Point of Sale Terminals and Components Thereof, Inv. No. 337-TA-524 (ITC, 2006). Member of litigation team brought in to represent complainant in ongoing patent infringement investigation before the International Trade Commission. Representation involved defending complainant against administrative law judge order to show cause regarding sanctions, successfully appealing order imposing sanctions against complainant, and moving for sanctions against respondent for violation of protective order.
Membership
- Member, District of Columbia Bar
- Member, New York State Bar
- Member, Massachusetts State Bar
- Admitted to practice before: U.S. Court of Appeals for the Federal Circuit; U.S. Court of Appeals for the First Circuit; U.S. District Court for the District of Columbia; U.S. District Court for the District of Massachusetts; New York State Courts; Massachusetts State Courts; District of Columbia Courts.
- Registered to practice before the U.S. Patent and Trademark Office
- Member, American Bar Association
- Member, District of Columbia Bar Association
- Member, New York State Bar Association
- Member, Massachusetts Bar Association
- Member, American Intellectual Property Law Association
- Member, Patent Office Practice Committee, Intellectual Property Owners Assoc.
- Past President, Patent Lawyers Club of Washington
Education  - J.D., Seton Hall University School of Law, 1995
- M.S., Syracuse University, Electrical Engineering, 1989
- B.S., Rochester Institute of Technology, Electrical Engineering, 1986
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