Representative Litigation Matters

Patent Litigation

  • Successful defense of fraud claim led to withdrawal by defendants of inequitable conduct counterclaim and favorable settlement Trinity Industries v. Spig Industry and Selco (E.D.Va.)
  • Lead patent counsel for sheet pile manufacturer asserting patents on sheet steel pile connectors against Arcelor Mittal and its subsidiary Skyline Steel. PilePro LLC v. Skyline Steel LLC and Arcelor Mittal (E.D. Texas)
  • Trial counsel for branded company in Hatch-Waxman litigation against generic drug company regarding anti-depressant. Obtained preliminary injunction against generic company after trial. Glaxo Wellcome v. Eon Labs Mfg. Inc. (S.D.N.Y.)
  • Trial counsel for Glaxo in Hatch-Waxman litigation against generic drug company regarding anti-ulcer medication resulting in judgment for patentee that patent was valid and infringed. Glaxo Inc. v. Novopharm Ltd. (E.D.N.Y.)
  • Trial counsel for branded company in Hatch-Waxman litigation against generic pharmaceutical company regarding antibiotic. Glaxo Wellcome Inc. v. Ranbaxy Labs, Inc. (D.N.J.)
  • Represented branded company in Hatch-Waxman litigation against ANDA filer regarding anti-depressant through appeal and remand. Glaxo Wellcome Inc. v. Andrx Pharm, Inc. (S.D. Fla.)
  • Represented branded pharmaceutical company in Hatch-Waxman litigation regarding anti-depressant. Glaxo Wellcome Inc. v. Watson Labs. Inc. (S.D. Ohio).
  • Represented Ethicon in section 146 action involving sutures on appeal from patent office. American Cyanamid v. Ethicon Inc. (D.N.J.)

Trademark and Lanham Act Litigation

  • Defense of trademark infringement action against local nightclub seeking to stop United States franchise of top global nightclub brand, preliminary injunction motion withdrawn. Club Space Mgt. Inc. v. Eden Ballroom and Space IBZ Planet SL (S.D.N.Y.)
  • Represented individual plaintiff enforcing trademark in infringement action against financial services company. Watson v. American Express Travel Related Services (S.D.N.Y.)
  • Defended consumer product company against claim by competitor of false advertising under the Lanham Act. Church & Dwight v. Airwick Industries (S.D.N.Y.)

Trade Secret Litigation

  • Defeated attempted misappropriation of PilePro’s trade secrets relating to pricing and purchasing sheet pile retaining wall systems software PilePro v. SP Network LLC (Eighth Judicial District, Clark County, Nevada)
  • Represented former franchisee in unfair competition litigation. Defeated summary judgment on promissory note and obtained favorable settlement. Lavazza Premium Coffees v. Oro Co. and EPC Holdings (Supreme Court, New York County).
  • Represented branded pharmaceutical company in action against generic company for theft of trade secrets. Glaxo Wellcome v. Chelsea Labs. (S.D. Ohio)
  • Defense of gas turbine company against claims of misappropriation of trade secrets. GE Co. v. Schenectady Turbine Service (N.D.N.Y.)

Copyright Litigation

  • Represented Fisher Price in bench trial defeating claim of copyright infringement. Ed Kaplan Assoc. v. Fisher Price (SDNY)

Admissions

  • New York
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Second Circuit
  • U.S. District Court for the Southern District of New York
  • U.S. District Court for the Eastern District of New York

Advisory Positions

  • Chair of the Patents Committee of the Association of the Bar of the City of New York (2010-2013)
  • Vice Chair of the Food, Drug and Cosmetic Section of the New York State Bar Association (Jan. 2017-present); Co-Chair of the Committees on Drugs, and member of the Committee on biologics. (2016-present)

Education

  • New York University School of Law, LLM in Trade Regulation 1983
  • State University of New York at Buffalo School of Law, JD 1977, Senior Editor of the Buffalo Law Review, Judicial Intern, Hon. John T. Curtin U.S. District Judge, W.D.N.Y.
  • University of Wisconsin, MA in English Literature 1974
  • State University of New York at Buffalo, BA 1972, Phi Beta Kappa

Awards & Accolades

  • New York Super Lawyers, 2006, 2007, 2008, and 2010

Representative Lectures And Seminars

  • Presenter, “Evolving FDA Requirements for NCE Exclusivity”, Developments in Drug Law, Annual Meeting of the Food, Drug and Cosmetic Section of the New York State Bar Association, New York, NY, January 26, 2017
  • Presenter, “Patent Litigation Fundamentals”, Judicial Law Clerks Seminar, Eastern District of Pennsylvania, Philadelphia, PA, January 17, 2017
  • Moderator, Roundtable, “Are Software Patents Unconstitutional? Should These Patents Be Saved?”, Association of the Bar of the City of New York, October 19, 2016
  • Presenter, “Patent Litigation,” Patents 101, Association of the Bar of the City of New York, New York, NY, April 14, 2016
  • Presenter, “Software Patents: How to Navigate the Tremendous Uncertainty”, and “Intellectual Property Protection for Smart Phone Applications”, Ben-Ami & Associates, Rehovot, Israel, February 18, 2016
  • Presenter, “Patent Litigation Fundamentals”, Judicial Law Clerks Seminar, Eastern District of New York, Brooklyn, NY, February 3, 2016
  • Moderator, “Legal Developments During 2015: Expanding Antitrust Enforcement, Shrinking Patent Protection, and FDA Regulation of Off Label Marketing,” Annual Meeting of the Food, Drug and Cosmetic Section of the New York State Bar Association, New York, NY, January 28, 2016
  • Panelist, “Managing Your Intellectual Property Career,” Committee on Women in the Profession, Association of the Bar of the City of New York, New York, NY, June 16, 2015
  • Presenter, “Patent Litigation at the ITC”, Patents 101, Association of the Bar of the City of New York, New York, NY, April 9, 2015
  • Presenter, “Recent Developments in Antitrust, Intellectual Property, and False Advertising Affecting Your Food and Drug Practice”, Annual Meeting of the Food, Drug and Cosmetic Committee of the New York State Bar Association, New York, NY, January 29, 2015
  • Presenter, Patent Litigation Fundamentals, Judicial Law Clerks Seminar, Eastern District of New York, October 29, 2014
  • Moderator, Roundtable on “How the AIA and Recent Supreme Court Cases Will Affect Your Licensing Strategies”. Joint Presentation by the Patents Committee of the Association of the Bar of the City of New York and the Licensing Executive Society, New York, New York, October 2014
  • Panelist, Roundtable on Patent Assertion Entities. Association of the Bar of the City of New York. Jones Day, New York, NY, December 2013
  • Presenter, “Intellectual Property Considerations in China,” New York City Bar CLE Program, New York, NY, May 2013
  • Presenter, “Patent Law for Non-Patent Lawyers”, New York City Bar CLE Program, New York, NY March 2013
  • Presenter, “Pivotal Court Cases for FDA Practitioners, 2012-2013 Updates”, Annual Meeting of the Food Drug, and Cosmetic Association of the New York Bar Association, New York, NY, January, 2013
  • Presenter, “Therasence v. Becton Dickinson: Consequences for Patent Litigation, Eastern New York Intellectual Property Association, New York, NY, November, 2012
  • Presenter, “Developments in Pharmaceutical and Biotech Patent Law 2012”, Practicing Law Institute, New York, NY, April, 2012
  • Presenter, “Biologics and the Biosimilars Approval Pathway”, New York State Bar Association Food, Drug and Cosmetic Law Section, New York, NY, January 2011
  • Program Co-chair, “Getting the Most Out of Your Patent License”, Association of the Bar of the City of New York, New York, NY, December 2010
  • Moderator, Roundtable on the Future of Gene Patents, Association of the Bar of the City of New York, New York, NY, April 2010
  • Moderator, Roundtable on the Battle Over Gene Patents, Association of the Bar of the City of New York, New York, NY, December 2009
  • Moderator, Structuring Patent Licenses after MedImmune and Quanta, Association of the Bar of the City of New York, New York, NY, May 2009
  • Moderator, Roundtable on In Re Bilski, Association of the Bar of the City of New York, New York, NY, December 2008
  • Protecting Your Drug Formulation in the Changing Patent Landscape, Drug Formulation, Cambridge Healthtech Institute, Philadelphia, PA, November 2008
  • Panelist, Roundtable on Permanent Injunctions in Patent Cases after eBay, Association of the Bar of the City of New York, New York, NY, December 2006
  • Panelist, “Eye on the Supreme Court: Key Patent Cases before the Supreme Court and Their Impact on Pharmaceutical Patent Life Cycles”, Maximizing Pharmaceutical Patent Life Cycles, American Conference Institute, New York, NY, October 2006
  • Panelist, Roundtable on the Federal Circuit’s Changing View of Inequitable Conduct, Association of the Bar of the City of New York, New York, NY, June 2006
  • Speaker, Citigroup Health Care Conference, Washington, DC, March 2006
  • Moderator, “How Have Hatch Waxman Reforms Changed the Patent End Game”, Maximizing Pharmaceutical Patent Life Cycles, American Conference Institute, New York, NY, October 2005
  • “Forensic Polymorphs and Pseudo Polymorphs: Mysticism, True Lies and the Expert Witness”, The Pittsburgh Conference on Analytical Chemistry and Applied Spectroscopy, Orlando, FL, March 2005
  • “Litigating Polymorph Patents”, Polymorphism & Crystallization, Philadelphia, PA, June 2003
  • “Polymorph Patent Protection and Infringement Actions”, Polymorphism & Crystallization, Philadelphia, PA, June 2002
  • “Litigating Polymorphs Patents”, Polymorphism & Crystallization, Philadelphia, PA, June 200

Amicus Brief

Amicus Curiae Brief of the Association of the Bar of the City of New York, Lighting Ballast Control, LLC, v. Philips Electronics North America Corporation, Court of Appeals for the Federal Circuit, June 2013