Experience

Mr. Colvin’s practice areas include patent, trademark, copyright, trade secret, false advertising, defamation and anti-counterfeiting litigation, along with general business litigation.  Mr. Colvin also handles complex IP and technology licensing deals, cyber-security issues and patent and trademark prosecution matters.

Mr. Colvin’s science and engineering background enables him to acquire a deep understanding of his clients’ technology, while his written and verbal communications skills enable him to translate difficult technical and legal concepts in order to effectively educate and persuade non-technical jurors and judges.

Mr. Colvin earned a Bachelor of Science degree in Aerospace Engineering from Princeton University.  After working for several years as an engineer with IBM, where he designed key components of the U.S. air traffic control system, Mr. Colvin earned his J.D. from George Washington University Law School, where he was one of only 15 students in his class awarded seats on both the Moot Court Board and a competitive law journal.

Representative Litigation Matters

Mr. Colvin has successfully handled dozens of complex IP and business litigation matters, resulting in victories or favorable settlements for his clients.  For example, Mr. Colvin:

  • Won a complex month-long Lanham Act trial for a pharmaceutical client, including extensive injunctive relief and one of largest damages awards in Lanham Act history.  Bracco v. Amersham (D.N.J.)
  • Won a Federal Circuit appeal for an international semiconductor equipment manufacturer, vacating the lower court’s judgment of infringement and a multimillion dollar jury verdict.  August v. Camtek (Fed. Cir.)
  • Secured $0 pre-answer dismissal of patent infringement complaint against U.S. subsidiary of Global 100 technology company. ExitExchange v. NTT America (E.D. Tx.)
  • Negotiated a comprehensive master service agreement between a leading professional services firm and a Fortune 50 company
  • Won motion to transfer declaratory judgment patent action from SDNY to EDTX.  CreateThe Group v. GeoTag (S.D.N.Y.)
  • Prepared complaint and TRO motion papers for copyright and trade secret theft case for leading business management software company; Successfully negotiated pre-litigation settlement
  • Led damages portion of two multimillion dollar patent infringement cases for pioneering e-signature company
  • Co-led infringement portion of large patent and trade secret case on behalf of leading media and marketing analytics company
  • Successfully defended a major semiconductor chip manufacturer against a multimillion dollar patent infringement action; settled favorably during trial.  OPTi v. AMD (E.D. Tx.)
  • Defeated a copyright infringement action against an apparel manufacturer, resulting in a zero-dollar settlement and dismissal of the case.  Volumecocomo Apparel v. LTC Apparel (C.D. Cal.)
  • Successfully defended a major automobile manufacturer in a multimillion dollar patent infringement action relating to vehicle navigation system, resulting in a favorable pre-trial settlement.  Triangle Software v. Volkswagen (E.D. Va.)
  • Successfully defended a large wine producer in SDNY trademark infringement case, featured on front page of Wall Street Journal and Law360; obtained favorable pre-trial settlement..  Casella Wines v. The Wine Group (S.D.N.Y.)
  • Defeated motions for temporary restraining order and a preliminary injunction brought by patent holder against large generic drug manufacturer.  Graceway v. Nycomed (D.N.J.)
  • Successfully defended multiple television personalities in a copyright infringement action in SDNY, resulting in favorable pre-trial settlement.  Freeplay Music v. The Wisdom Center (S.D.N.Y.)
  • Successfully defended a large entertainment company (Sirius Satellite Radio Inc.) in several litigation matters, including a copyright infringement and breach of contract suit, resulting in zero-dollar settlement
  • Successfully defended a multi-billion dollar insurance company in an insurance coverage dispute with a media conglomerate, involving complex underlying copyright liability and damages issues, resulting in favorable pre-trial settlement.  Music Force v. Viacom (C.D.Cal.)
  • Won ANDA patent infringement trial in SDNY involving $1.5 billion pharmaceutical product, resulting in favorable settlement following appellate proceedings.  Purdue v. Endo (S.D.N.Y.)
  • Successfully appealed an adverse false advertising decision, resulting in a reversal of trial court ruling and a landmark decision regarding the important issue of advertising “puffery” and permitting Papa Johns to retain its “Better Ingredients. Better Pizza.” slogan which remains in use today.  Pizza Hut v. Papa Johns (5th Cir.)
  • Represented a manufacturer of factory automation systems in a patent infringement appeal to the Federal Circuit and successfully concluding the subsequent damages phase in the district court.  Laitram Corp. v. NEC (Fed. Cir.)
  • Represented Emmy award-winning music producer in a protracted contract and IP dispute with a former business associate, including numerous appeals, ultimately prevailing on all issues on summary judgment.  Hoover v. Lanois (La.)
  • Represented the leading producer of decorative stained glass novelty items in a copyright and trade dress infringement action against a former supplier and bringing a summary judgment motion that precipitated a favorable settlement of all claims.  Joan Baker Designs v. Silver Bay Creations (C.D. Cal.)

Representative Publications And Speeches

Mr. Colvin has written and spoken numerous times on important issues in IP law, law firm management, social media and cyber security, including the following:

  • Speaker, LegalTech, 2nd Annual Cyber Security Roundup (February 2015)
  • Speaker, LegalTech, Minimizing Cyber Security and Litigation Risk (February 2014)
  • Cyber Warfare and the Corporate Environment, Journal Of Law & Cyber Warfare (August 2013)
  • A “Third Way” to Staff High-Stakes Litigation Matters, Corporate Counsel Magazine (July 2013)
  • Chair, Alternative Fee Panel, Corp Counsel’s 25th Annual General Counsel Conference (June 2013)
  • Advisory Board, The American Lawyer’s Second Annual Litigation Summit and Exposition (November 2012)
  • Chairman and Speaker, IP Litigation Panel, Corporate Counsel Copyright, Trademark and IP Licensing Forum (October 2012)
  • Speaker and Chairman, General Counsel Panel Discussion, The American Lawyer’s New Partner & Corporate Counsel Forum (October 2012)
  • Speaker and Chairman, America Invents Act Panel, ALM IP Counsel Forum (March 2012)
  • Speaker, ALM New Partner Forum (October 2011)
  • Speaker, ALM Law Firm Marketing & Business Development Leadership Forum(May 2011)
  • Speaker, Beyond the Basics: Integrated Social Media Marketing for Law Firms (Sept 2011)
  • National Law Journal article citing effective use of social media in legal industry (Oct 2011)
  • Wall Street Journal and IP 360 articles featuring Casella v. The Wine Group case (Feb 2011)
  • HealthLaw 360 article featuring win in Bracco v. Amersham Lanham Act case (March 2009)
  • Higher Authority: The Supreme Court Sets Its Sights On Patent Rights, Metropolitan Corporate Counsel (September 2008)
  • The Truth is Out There: Five Key Points on Willfulness Under the Lanham Act, Atlantic Coast In-House (May 2008)
  • Be Aware and Take Action on Your IP Rights, Furniture Today (March 2007)
  • Hatch-Waxman and its Implications for Pharmaceutical Research, IAM Magazine (Feb 2006)
  • The Human Dimension in IP Valuation, IP Value 2006 (January 2006)
  • 10 Questions for Evaluating a Company’s IP Portfolio, Journal of Corporate Compliance (December 2005)
  • The American Lawyer “Big Cases” column citing trial win in Purdue v. Endo litigation (Aug 2005)

Bar Admissions

New York, 2001

Louisiana, 1998

California, 1995

U.S. Patent and Trademark Office, 1994

 

Court Admissions

U.S. District Court, District of New Jersey, 2004

U.S. District Court, Eastern District of New York, 2001

U.S. District Court, Southern District of New York, 2001

U.S. Court of Appeals for the Fifth Circuit, 1999

U.S. Court of Appeals for the Federal Circuit, 1998

U.S. District Court, Western District of Louisiana, 1998

U.S. District Court, Eastern District of Louisiana, 1998

U.S. District Court, Central District of California, 1995

U.S. District Court, Northern District of California, 1995