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Firm Accomplishments
Alternative Dispute Resolution
- Arbitrated, under the American Arbitration Association (AAA), a domestic patent dispute involving air bag technology where the Panel will decide, among other issues, inventorship of each of approximately 20 patents.
- Arbitrated, via a CPR referral, a domestic patent dispute, involving a genetically-engineered pharmaceutical drug having cumulative sales through 2006 of approximately US $4.4 Billion and expected additional sales throughout the remainder of the terms of the patents in dispute of approximately US $22 Billion.
- Arbitrated a BIT dispute under the UNCITRAL rules and through the London Court of International Arbitration (LCIA), specifically an international contract dispute between a US telecommunications company and a foreign government involving alleged governmental expropriation of a national telecommunications network, with damages being claimed by the telecommunications company of approximately US $150 Million.
- Arbitrated, under the AAA, a domestic patent dispute involving reverse geometry contact lenses, and, in conjunction therewith, conducted along with my co-arbitrators, a Markman (claim construction) hearing.
- Arbitrated, under the AAA, a contract dispute involving a very large semiconductor manufacturer and concerning development of specialized integrated circuits for DSL (digital subscriber line) equipment with liabilities being claimed amounting to several tens of millions of US dollars.
- Mediated, via a court-annexed referral from the United States District Court - Eastern District of New York, a domestic Hatch-Waxman patent dispute, involving a pharmaceutical drug having annual sales of approximately US $350-400 Million. This mediation encompasses four separate Hatch-Waxman actions, which have been consolidated for mediation, involving two plaintiff "branded" manufacturers and three defendant generic manufacturers.
- Arbitrated, via a CPR referral, a US patent dispute involving arterial stents, with multiple patents at issue, between two major multi-national competing medical device manufacturers with liability estimated to be between US $400-800 Million, and in conjunction therewith conducted, along with my co-arbitrators, a Markman hearing to interpret the patent claims in contention.
- Mediated, via a World Intellectual Property Organization (WIPO) referral, an international patent dispute involving both mechanical and electronic aeronautical technology, with multiple US patents at issue, with potential liability to the parties involved of approximately US $600 Million. Through this mediation -- the results of which greatly exceeded the parties' expectations, the parties not only settled their existing disputes but also agreed on establishing a framework to avoid future patent disputes going forward.
- Arbitrated, under the AAA, an IT dispute resulting from an installation of enterprise (ERP) software and involving a large international accounting/IT consulting firm with liabilities claimed between US $25-40 Million.
- Mediated an international patent dispute between two large US appliance manufacturers that successfully ended five years of foreign patent litigation with liabilities claimed of approximately US $30 Million.
- Mediated a US patent dispute involving personal digital assistants (PDAs) which successfully ended US patent litigation and formed a framework for future business co-operation between the disputants.
- Arbitrated, via a CPR referral, a telecommunication dispute concerning payment of reciprocal compensation between a large incumbent local exchange carrier (ILEC) and a competitive local exchange carrier (CLEC) with a total amount of compensation impacted at the ILEC estimated at approximately US $50 Million.
- Mediated, for the New Jersey Superior Court, disputes covering a wide range of substantive legal areas (including, e.g., contract, real property and general commercial matters).
- Arbitrated domain name disputes for ICANN accredited dispute resolution service providers (WIPO, NAF, CPR, eResolution). (click here to access decisions rendered) (approximately 160 decisions thus far)
- Served on single and three person arbitration panels, as chair of three person panels, and as mediator and co-mediator.
(Read letters of commendation)
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- Intellectual Property
- Successfully obtained over 2,500 U.S. and foreign patents thus far across a wide range of electrical, mechanical, chemical and biotechnology arts. (click here to view representative US patents)
- Successfully represented various clients in U.S. patent litigations, with all litigations settled very favorably to our clients.
- Successfully represented a very large U.S. telecommunications company in securing a cross-license, on quite advantageous terms, to a competitor's portfolio of over 12,000 U.S. and foreign patents.
- Successfully handled and managed various inter-parties patent/trademark proceedings in the U.S. and overseas for various clients.
- For example, we:
- Successfully defended, together with our European agent, a series of 7 different European patents, each directed to a different invention involving mass-flow metering and each of which we drafted and prosecuted, against a European competitor which separately opposed each of the patents before the European Patent Office (EPO). Several of these oppositions also involved successful appellate proceedings before the EPO.
- Are litigating, together with our German agent, separate actions involving patent and validity involving one of our domestic clients and filed in the German Courts.
- Successfully handled trademark oppositions and other inter-parties trademark matters both in the U.S. and overseas.
- Successfully handled and managed large worldwide patent/trademark application filing campaigns for various U.S. clients through which patent/trademark applications were simultaneously filed and subsequently prosecuted in many countries throughout the world, including both convention and non-convention, and PCT and EPO regional filing systems.
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