REPRESENTATIVE ENGAGEMENTS AS LEAD COUNSEL

UNITED STATES SUPREME COURT

• Star Athletica, LLC. v. Varsity Brands, Inc., et al. (2017); Chosun v. Chrisha (2005): Successfully represented amicus curiae Chosun International in convincing the Supreme Court to restore the law upholding copyrightability of clothing as laid out by the Second Circuit.

• Nicassio v. Viacom International Inc., and Penguin Random House, LLC (US, 19-560): Lead counsel in petition for certiorari seeking resolution of conflicting copyright decisions in the federal appellate courts relating to application of the scènes-à-faire doctrine.  

• Jovanni Fashion, Limited v. Fiesta Fashions, et al. (US, 12-836): Lead counsel in team including former registrar of copyrights in case seeking to recognize copyrightability of clothing.

• Capital Bridge Co., Ltd. v. IVL Technologies Ltd., 552 US 1142 (2008): Represented patent holder in petition seeking review of decision on patent relating to wireless karaoke devices.

PATENT LITIGATION

• GHS v. Selner (PTAB, 2024): Successfully represented doctor who developed biocidal wound preparation against drug company claiming doctor derived the invention from drug company researcher.

• Floriey v. Life Pro Fitness LLC, and Bed, Bath & Beyond, Inc. (EDNY, 2022): Enforced patents dealing with adjustable barbells.

• QFO Labs, Inc. v. Best Buy Stores, LP (D. Minn., 2021): Successfully defended retailer and drone manufacturer against charges of patent infringement.

• QFO Labs, Inc. v. Amazon.com Inc. (D. Minn., 2022): Successfully defended online marketplace operator and drone manufacturer against charges of patent infringement.

• Johnson Controls Technology Company v. BuildingIQ, Inc. (D. Del, 2021): Successfully defended smart building HVAC technology company against patent owner.

• Multiwave Sensors, Inc. v. Sunsight Holdings, LLC (M.D. Fla., 2017): Successfully enforced patent relating to cell tower antenna installations.

• Hsueh v. Harbor Freight (D CT, 2014): Enforced mechanical tool patent against major retailer.

• Tour Technology Systems, LLC v. VFM Leonardo, Inc. (EDNY, 2015): Enforcement of industry dominating virtual tour technology patent against largest hotel rich content provider.

• Conair v. Miele & Cie. Kg (SDNY, 2013): Enforced cappuccino machine patent against major European appliance manufacturer.

• Tour Technology Systems, LLC v. Ice Portal (EDNY, 2014): Enforcement of virtual tour technology patent against major rich content provider.

• Honeywell International, Inc. v. Venstar (D. Minn, 2011): Represented largest private label thermostat manufacturer against claims under numerous patents, structuring a resolution which led to subsequent acquisition of the company by major international smart building technology company.

• Sears Petroleum v Archer Daniels Midland (NDNY 2003): Represnted major agricultural conglomerate against charge of patent infringement dealing with con-based deicing technology.

• Conair Corporation v. Eurasia Concepts, Inc. (DC Conn, 2004): Obtained injunction enforcing pioneering hair straightener patent involving rearrangement of disulfide bonds in human hair keratin using an equilibrium reaction.

• Chorus Corporation v. Riber S.A. (DC NJ, 2000): Successfully defended patent infringement claim on behalf of manufacturer of ultrahigh vacuum semiconductor fabrication equipment.

• Seche v. Tevco (DC CD Cal, 1995): Defended SNPE subsidiary against alleged infringement of patent on quick drying nail enamels, obtaining for client royalty free license and major purchase by patent holder of product from defendant client.

• Hoechst v. Foster-Miller (PTO Bd Int, 1995): Represented junior party respecting inventorship of process for manufacture of high strength liquid crystal polymer materials.

• William Wrigley, Jr. Co. v. Waters, (DC SNY) 5 USPQ2d 1741 (Dec. 16, 1987); affd. 890 F.2d 594, 13 USPQ 2d 1125 (2nd Cir., 1989): Enforced obligations against patent agent in successful nine-week bench trial.

• JVC v. RCA (DC SNY, 1983): Represented JVC in contest respecting inventorship of videodisc resulting in termination of RCA videodisc business.

• Instruments SA v. American Holographic, Inc. (DC Del, 1979): Enforced pioneer holographic optical element patents against infringer.

TRADEMARK AND TRADE DRESS LITIGATION

• Baby’s Coffee v. Hess et al (DC La, 2023): Obtained injunction enforcing trademark rights in the name of coffee bar in Key West against an infringer in New Orleans Louisiana.

• Stay You, LLC v. H&M Hennes & Mauritz LP (DC SNY, 2023): Enforced trademark rights in spoken slogan of podcast against national clothing retailer.

• Dwarven Forge v. The Design Mechanism (DC Conn, and TTAB, 2017): Stopped infringement of trademark rights in fictional place name employed in client’s gaming products against fantasy game publisher.

• Algood Casters v. Caster Concepts (DC SNY, 2020): Obtained injunction enforcing the trademark MAXX.

• AJB v. Backjoy Orthotics (DC Conn, 2016): Obtained injunction preventing defendant from continuing to manufacture pressure point device infringing trade dress rights of plaintiff.

• Betches, LLC v. AwsomenessTV, Inc. (DC ENY, 2016): Enjoined use of client’s webzine name for comedy show against T-Mobile subsidiary.

• Dayco Products, LLC v. Dorman Products, Inc (E.D. Mich., 2009): Successful enforcement of trade dress rights in the shape of automatic belt tensioners.

• ProFitness Physical Therapy Center v. Pro-Fit Orthopedic and Sports Physical Therapy P.C., 314 F. 3d 62, 65 USPQ2d 1195 (2nd Cir., 2004): Obtained for client an order enjoining trademark infringement after a decision introducing the legal theory of progressive encroachment to Second Circuit law.

• Neiman Marcus Group, Inc. v. Philippe Charriol International, Ltd., 56 USPQ2d 1975 (DC SNY, 2000): Obtained summary judgment decision for plaintiff in a declaratory judgment defense of a plaintiff-retailer in a jewelry design trade dress case.

• Hermes International v. Lederer de Paris Fifth Avenue, Inc., 50 F.Supp.2d 212, 50 USPQ2d 1257 (DC SNY, 1999): Defended retailers against alleged infringement of trade dress in handbags, obtaining favorable decision on summary judgment.

• Times Newspapers, Ltd. v. Times Pub. Co., 1993 WL 120614, 25 USPQ2d 1835, 21 Media L. Rep. 1065 (MD Fla., 1993): Successfully asserted London paper’s “The Times” trademark against newspaper in Tampa.

• Score, Inc. v. Cap Cities/ABC, Inc., 724 F. Supp. 194, 13 USPQ 2d 1230 (DC SNY, 1989): Successfully asserted trade dress rights in television program.

• BLI v. Heritage Quilts (DC SNY, 1978): Successfully asserted trade dress rights in clothing in ground-breaking fashion industry case.

COPYRIGHT LITIGATION

• MerchDirect LLC v. Cloud Warmer, Inc. (DC ENY, 2017): Successful defense of copyright action relating to software for e-commerce platform.

• Chosun International, Inc v. Chrisha Creations, Ltd. (2nd Cir., 2005): Asserted copyright for costumes and succeeded in obtaining decision recognizing clothing as subject matter which may be protected by copyright law, overruling a longstanding tenet of the copyright law.

• Celebration International, Inc. v. Chosun International, Inc., 234 F.Supp.2d 905, 2003 Copr.L.Dec. P 28, 562, 65 USPQ 2d 1504 (SD Ind., 2002): Defended copyright infringement claim respecting Halloween costumes.

​PUBLICATIONS

• Intellectual Property Today, February 2009: “Does the Power of the Internet Justify Changing Traditional Rules for Trademark Infringement?".

• Thompson Hine LLP Bulletin, September 2008:  “Intellectual Property Update: Inter Partes Reexamination Becoming Efficient and Effective in Removing Weak Blocking Patents”.

• Intellectual Property Today, October 2005: “Second and Fifth Circuits Clash on Copyright Protection for Costumes and Clothing”.