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Intellectual Property

Attorney, electrical engineer and Certified Information Privacy Professional (CIPP) serving as a creative legal strategist advising high-tech clients on everything from product development to contracts, marketing, licensing, regulatory compliance, data privacy, Intellectual Property (“IP”) protection, litigation and corporate restructuring. A decade of experience in counseling large global brands by distilling complex legal and technical jargon down to understandable concepts and working cross-functionally with legal, business, marketing, engineering and financial stakeholders to align their legal strategy with business objectives.

Representative EXPERIENCE

District Court Litigation:

  • Trade Secret and Copyrights: Defended automotive client against a former supplier alleging trade secret misappropriation, copyright infringement, unfair competition, and unjust enrichment in federal district court.  Successfully defended online retailer against a claim that the barcode scanning feature within its mobile applications violated a patent by obtaining summary judgment of non-infringement in federal district court. 

  • Patent: Successfully defended banking client against patent troll alleging that its currency trading software violated their patent by invalidating the patent as an abstract idea in federal district court. This case was eventually affirmed by the Supreme Court and now stands as a litmus test for weeding out weak or overbroad patents.

  • Patent: Successfully defended an ISP against patent trolls alleging patent infringement by participating in joint defense group coalitions, developing invalidity and non-infringement positions, and driving positions that led to a favorable settlement of litigation in federal district court. 

  • Patent: Successfully preserved a client’s patent exclusivity for its blockbuster drug by defeating an ANDA validity challenge by a competitor in a 12-day bench trial in federal district court. 

  • Patent: Represented jet engine manufacturer in patent infringement action against a competitor in federal district court.

Post-Grant PTAB Proceedings:

  • Successfully defended a software client in the Electronic Design Automation (EDA) industry against allegations of patent infringement by invalidating all of the asserted patent claims in a post-grant proceeding before the USPTO’s PTAB.

  • Represented a medical diagnostic client against a competitor challenging the validity of its oral brush biopsy patents in three post grant proceeding before USPTO’s PTAB.

  • Successfully defended high-speed cable manufacturer against a competitor alleging patent infringement by invalidating nearly all the asserted patents in four of the first post-grant proceedings before the USPTO’s PTAB and by invalidating the remaining claims on appeal to the Court of Appeals for the Federal Circuit in the first decision of its kind. 

Honors 

SuperLawyers, New York Metro Rising Star (2015 - 2019)

DFA Spotlight on Flex

Cardozo Writing Award

Bar admissions

NY State Bar (2010)

Patent Bar (2010)

Court of Appeals for the Federal Circuit (2012)

Certifications

Certified Information Privacy Professional/US, IAPP (2019)

Education

Benjamin N. Cardozo School of Law, Juris Doctor

Columbia University, Bachelor of Science, Electrical Engineering

Yeshiva University, Bachelor of Arts

Publications

  • Adapting to Innovation: 3D Printing: New Legal Issues Emerge with the Technology's Revolutionary Potential

  • PTAB Monitor: Winning It on Appeal: How to Avoid Remand and Reverse the Board’s Validity Determination at the Federal Circuit

  • IP Magazine: Are USPTO-promulgated trial rules reliable?

  • Law360: Fed. Circ. Slams PTAB For Not Explaining Why It Axed Patent (quoted)

  • Law360: Merck Ruling A Wake-Up Call For Patent Owners Facing PTAB (quoted)

  • Law360: Is Broadest Reasonable Interpretation Here To Stay?

  • Law360: Get Ready For Fed. Circ. Guidance On AIA Trials

  • TechCrunch: Sued As A Young Startup? Don’t Surrender

  • InsideCounsel: How a Fractured Federal Circuit is Applying the Supreme Court’s Alice Decision to Software Patents

  • Emerging Trends: Has the Supreme Court Lowered the Bar for Software Patent Eligibility Challenges?

  • Emerging Trends/US Supreme Court: Is Software Patentability in Peril?

  • NYLJ: Return of Preemption Doctrine in Determining Patent Eligibility