Skip to main content

Patent Litigation 2013


Speaker(s): Bert C. Reiser, C. Edward Polk, Jr., Carolyn H. Blankenship, Christopher K. Hu, Constance S Huttner, David Brightman, David J. F. Gross, David J. Kappos, Elaine Herrmann Blais, Eric J. Lobenfeld, Gene W. Lee, George E. Badenoch, Heather A. Faltin, Hon. Theodore R. Essex, Jennifer BianRosa, Nicholas K. Mitrokostas, Peter Schwechheimer, Timothy Sullivan
Recorded on: Nov. 11, 2013
PLI Program #: 42659

Bert C. Reiser

Bert Reiser is a partner in Latham & Watkins’ Washington, D.C. office, where he is a member of Latham’s Intellectual Property Litigation Practice Group and is a lead attorney in the ITC Patent Litigation Practice.

Expertise

Prior to joining Latham, Mr. Reiser was head of a multi-national law firm’s Section 337 Practice where he was involved primarily in international intellectual property disputes before the United States International Trade Commission (ITC) under Section 337 of the Tariff Act of 1930. In Section 337 investigations, Mr. Reiser has represented both American and foreign companies as complainants and respondents in nearly 40 ITC investigations, including more than a dozen trials.

Previously, Mr. Reiser was the attorney advisor to Judge Paul J. Luckern of the International Trade Commission, where he assisted in the adjudication of over 20 disputes under Section 337. He also has extensive experience in district court patent litigation throughout the United States.

Experience

Mr. Reiser’s experience includes:

  • Certain Baseband Processor Chips and Chipsets, Transmitter and (Radio) Chips, Power Control Chips and Products Containing Same, Including Cellular Telephone Handsets. Represented Qualcomm in a patent infringement case regarding cellular service and device industry. Obtained reversal on appeal of ITC remedy order, overturning significant and longstanding Commission precedent in the area of downstream exclusion remedy.
  • Certain Wireless Communication Chips and Chipsets, and Products Containing Same, Including Wireless Handsets and Network Interface Cards. Successfully represented Qualcomm in a patent infringement suit regarding cellular service and device industry. Obtained early termination of the investigation without trial.
  • Applied Medical Resources Corp. v. United States Surgical Corp. Successfully represented Applied Medical in a patent infringement case in the Central District of California against US Surgical in connection with Applied’s patents on surgical trocars and secured summary judgment of liability for Applied without trial, demonstrating that Applied’s patent was valid and infringed. US Surgical’s liability was affirmed upon appeal by the US Court of Appeals for the Federal Circuit.*
  • Certain Data Storage Systems and Components Thereof. Successfully represented complainant EMC Corporation in a complex patent infringement-based investigation under Section 337 against Hitachi. The investigation involved six software patents and more than 80 claims.*
  • Certain Flooring Products. Successfully defended respondents Unilin Décor N.V., BHK of America, Inc. and Meister-Leisten Schulte GmbH against patent infringement allegations. Following a full evidentiary hearing, the Administrative Law Judge (ALJ) found that none of the respondents infringed the asserted patents which was upheld upon review by the full Commission and upon appeal by the US Court of Appeals for the Federal Circuit.*

*These matters were handled prior to Mr. Reiser joining Latham & Watkins.

Education

JD, American University, Washington College of Law, 1990
BA, Political Science, Central College of Iowa, 1985

Bar Qualifications

District of Columbia, Virginia

Languages

English

Recognition Highlights

Repeatedly recognized as a leading attorney for Section 337 litigation before the ITC. Chambers USA 2011 and The Legal 500 US 2011

Regarded as a Notable Practitioner by Chambers Global 2013


C. Edward Polk, Jr.

Mr. Polk is the Chief Litigation Officer for Exela Pharma Sciences, LLC.  Before joining Exela, Mr. Polk was a partner in the Washington D.C. office of Foley & Lardner LLP, where his practice included patent litigation, patent counseling, and representation of attorneys accused of ethical violations.  Before joining Foley & Lardner LLP, Mr. Polk was an Associate Solicitor with the United States Patent & Trademark Office where, among other things, he argued cases before the U.S. Court of Appeals for the Federal Circuit and district courts, and prosecuted members of patent bar for violations of the USPTO code of professional responsibility.


Christopher Hu concentrates his practice in intellectual property litigation. He has over thirty-five years of experience representing a broad spectrum of clients in patent and trade secret cases and disputes involving a wide range of technologies, including e-commerce, computers, telecommunications devices, medical products, chemicals, pharmaceuticals, consumer products, and mechanical devices. 

Mr. Hu speaks frequently at industry events on topics such as the interaction between the Leahy-Smith America Invents Act (“AIA”) and litigation, including patent litigation.

REPRESENTATIVE MATTERS

  • Defended Barnes & Noble against Alcatel-Lucent in litigation over patents asserted against website features and e-reader
  • Defended Barnes & Noble against Xerox in litigation over patents asserted against website features
  • Defended W.L. Gore & Associates, Inc. against Edwards Life Sciences over patents relating to modular stent-grafts
  • Defended W.L. Gore & Associates, Inc. against Medtronic over patents relating to stent-grafts
  • Defended W.L. Gore & Associates, Inc. against Andersen Windows over a patent relating to low visibility insect screens
  • Defended Sensormatic against Checkpoint over a patent relating to RF anti-theft labels
  • Defended Rheem Manufacturing Co. against Freedom Flow over a patent relating to water heater drain valves
  • Represented W.L. Gore & Associates, Inc. in a trade secret litigation in Arizona state court against a departing employee
  • Defended IBM in litigation against TM Patents over patents relating to RAID data storage devices, message routing in parallel processors and DRAM memory controllers
  • Represented Glaxo against SKB in a litigation and related interference over patents relating to anti-nausea drugs
  • Represented DuPont in litigation against BASF and Monsanto over sulfonated nylon co-polymers used in stain-resistant carpets

COMMUNITY SERVICE & AFFILIATIONS

Mr. Hu is a member of the Board of Overseers for the Thayer School of Engineering at Dartmouth College.


Connie Huttner focuses her practice on patent and technical litigation, as well as litigation involving trade secrets, advertising, and licensing disputes. She has handled a variety of patent trials and appeals involving Abbreviated New Drug Applications (ANDAs) and other pharmaceutical issues, medical devices, software, cosmetics, electronic instruments, coatings, blowing agents and mechanical devices. She also has handled false advertising, and trade secret matters involving English muffins, chewing gum, detergents, food and sporting equipment. Connie has also provided patent opinions and counseling for matters including mergers and acquisitions and other corporate transactions.

Education

Boston College (J.D., magna cum laude, 1980)
     Order of the Coif
     Boston College Law Review

 
Ohio State University (B.S. in Cellular Immunology, 1977) Phi Beta Kappa


David Brightman is Vice President and Associate General Counsel at Yahoo!.  In this role he leads the IP Litigation and Conflict Management group, and is responsible for managing Yahoo!’s patent and defensive trademark litigation.  He also investigates employee IP violations and participates in licensing and patent reform efforts.

Prior to joining Yahoo! in 2008, he practiced patent litigation at Fish & Neave/Ropes & Gray in Palo Alto, CA, and previously at Jones Day in Los Angeles, CA. He graduated from UCLA Law School and became a member of the California bar in 1997, and became a member of the patent bar in 2001.  He is originally from New York and earned his undergraduate degree in Mechanical Engineering from the University of Pennsylvania.


Education

  • JD, 1992, Cornell Law School
  • BS (Mechanical Engineering), 1989, Columbia University

Bar Admissions

  • New York
  • U.S. Patent and Trademark Office

Courts

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

Practice

  • Gene is an experienced lead counsel in patent litigations involving a wide range of technologies, including computer systems and software, telecommunications, medical devices, videogames, financial services, chemistry, semiconductors, and geoscience. In addition to patent litigation, Gene regularly represents clients in patent licensing, post-grant proceedings in the USPTO, including work on many IPR petitions.He also works on trade secret and copyright matters, and with the firm’s corporate department in advising clients on IP-related aspects of corporate transactions.

Representative Clients and Matters

  • Certain Laser Abraded Denim Garments (Inv. No. 337-TA-930; co-lead counsel for major denim brand respondent).This investigation involved patents directed to using lasers to abrade or create patterns on denim garments.
  • Worlds, Inc. v. Activision Blizzard (patent litigation relating to videogame software), court allowed motion of summary judgment of invalidity prior to correction of asserted patents; Worlds.com v. NCsoft Corp. (patent litigation relating to videogame software successfully transferred out of the E.D. Texas)
  • Certain Products Having Laminated Packaging, Laminated Packaging, and Components Thereof (Inv. No. 337-TA-874; co-lead counsel for Respondent Diageo North America). This investigation was the first of the ITC’s pilot program for possible early disposition of cases. Following an accelerated trial on the economic prong of domestic industry, the Commission found that the complainant (a non-practicing entity) failed to satisfy the economic prong and terminated the investigation.
  • Rotatable Technologies v. major Korean electronics company (patent litigation relating to user interface technology), resulting in a stipulated judgment of noninfringement following claim construction, which was affirmed on appeal.
  • NCsoft Corp. v. Bluehole Studios, Inc. (co-lead counsel for plaintiff in trade secret misappropriation, copyright, and unfair business practices litigation relating to videogames)


Elaine Blais, a partner in the firm's Litigation Department, focuses her practice on intellectual property litigation, particularly with respect to patent litigation. Ms. Blais has handled numerous patent infringement lawsuits in federal courts nationwide. She joined Goodwin Procter in 2001 and is currently a member of the firm's Hiring Committee and Partner Integration Committee. She also serves on the firmwide Women's Initiative Steering Committee, co-chairs the Boston Women's Initiative Council and is a member of the firm’s FinTech Practice. Ms. Blais has also served at various times on the firm's Alternative Billing Strategies, Renovations and Big Think Committees.

Work for Clients:

Ms. Blais has been litigating patent cases for nearly two decades. She has advised clients and participated in all phases of patent litigation, from initial counseling up through trial and appeal. Ms. Blais has worked on patent cases involving diverse areas of technology, including pharmaceutical products (Teva Pharmaceuticals, Fresenius Kabi), stem cell technology (ViaCell, Inc.), secure financial transactions (Fidelity), prepaid wireless technology (Freedom Wireless), the Internet (Lycos, Inc.), email tracking systems (Eloqua), semiconductor manufacturing tools (Applied Materials), consumer products (P&G), automatic transmission shift cables, software for reducing artifacts in MRI images, gaming devices and methods, glider designs, steel processing lines, and spinal implants.

She has also represented clients in cases involving copyrights, trademarks, trade secrets, unfair competition and patent-related antitrust issues. Ms. Blais has also filed amicus briefs on behalf of firm clients in a number of significant patent cases before the U.S. Supreme Court and the Federal Circuit sitting en banc, including Therasense v. Becton Dickinson, Microsoft v. i4i, and Caraco v. Novo Nordisk.

Ms. Blais has devoted a significant amount of her practice to counseling clients and advocating to Congress on behalf of clients regarding patent policy. In this capacity, she has worked on various pieces of legislation impacting the pharmaceutical industry, including the America Invents Act. Ms. Blais has been involved in drafting proposed legislation and has made numerous presentations before Congressional members and staff.

Recognition:

In 2012, Ms. Blais (and a client) were selected as a recipient of the Project for Attorney Retention’s 2012 PAR Flex Success Award. The award recognizes attorney-client relationships exemplifying how, with client and firm support, attorneys can work on flexible schedules, deliver exceptional legal services and enjoy extraordinarily successful careers.

In 2009, Ms. Blais was awarded the Mentor Award from the Political Asylum/Immigration Representation Project for her work on behalf of human rights and immigrant advocacy. Ms. Blais continues to dedicate pro bono time to the representation of immigrants seeking asylum, refugee status or special immigrant juvenile status in the United States. While attending law school, Ms. Blais was an associate editor of The Ohio State Law Journal.


Eric Lobenfeld has more than 35 years of experience litigating cases involving patent, trademark, copyright, antitrust, unfair competition, and complex commercial issues. He has first-chaired jury and non-jury trials in state and federal courts throughout the United States, conducted arbitrations, and argued in numerous U.S. state and federal appellate courts. He has participated in Markman claim construction proceedings for more than fifty patents.

Eric represents companies in a wide variety of industries, including computer hardware and software, pharmaceuticals, medical devices, bar code scanning, wireless local area networks, electrical components, television broadcasting, motion pictures, publishing, baby toys, and financial services.

Eric is a regular panelist in the Practising Law Institute's annual two-day patent litigation program, where he has presented on expert issues, damages issues, and given a demonstration of a closing argument in a patent jury trial.

REPRESENTATIVE EXPERIENCE

  • Representing Motorola Solutions in District of Delaware action against Round Rock Research seeking declaratory judgments that ten Round Rock patents concerning radio frequency identification (RFID) technology are invalid and not infringed.Defending a variety of Motorola customers who were sued by Round Rock for infringement.Leading the Joint Defense Group composed of the major suppliers of RFID equipment
  • Represented Takeda Pharmaceuticals in Hatch-Waxman patent infringement litigation against Teva concerning the compound for the blockbuster drug Prevacid®. Won a judgment after trial that the patent is valid and infringed. The Judgment was affirmed by the Federal Circuit.
  • Representing Takeda in multiple ANDA litigations concerning its oral disintegrating tablet formulation, Prevacid® Solu-Tab.
  • Representing Sprint Nextel in patent infringement litigation brought by High Point involving methods and apparatus concerning Sprint's CDMA cellular network.Won summary judgment that all asserted claims were barred by the doctrines of equitable estoppel and laches.Coordinate with Hogan Lovells partners in Europe and Japan who represent wireless carriers in infringement litigation on foreign counterpart patents.
  • Representing Tyco Integrated Security in patent infringement litigation brought by Vringo Infrastructure concerning mobile security management products.
  • Representing 7-Eleven Company and Cardtronics in patent infringement litigation concerning ATM machines with Internet access. Won summary judgment of noninfringement and partial invalidity. Judgment was affirmed by the Federal Circuit.
  • Representing NCR Corporation in action seeking declaratory judgment that all asserted patents are invalid and not infringed.
  • Represented ESPN in patent infringement litigation brought by DDB concerning GameCast recreations of professional sports games on ESPN.com.
  • Representing Depomed, Inc. in patent infringement litigation against Endo Pharmaceuticals concerning Depomed's innovative delayed release formulation patents. The patents cover Endo’s pain management drug Opana®. Representing Depomed in the Inter Partes Review proceedings on the same patents.


George E. Badenoch is chair of the Firm’s Electrical and Mechanical Practice Group. He has over 30 years experience in litigations and adversarial matters concerning all aspects of intellectual property, including patents, trade secrets, trademarks and copyrights.

Mr. Badenoch has had considerable experience in major patent litigations (jury and non-jury) involving computers, semiconductors and pharmaceuticals, with particular emphasis on computerized automatic machinery and equipment and automobile parts. His successful trial of a major patent jury case involving computerized equipment for custom designed ductwork led to the largest intellectual property judgment nationwide in that year. His role as lead defense counsel for a large group of automobile importers led to the dismissal of a much publicized case brought by an alleged inventor of intermittent windshield wipers, even though the same plaintiff had previously secured multi-million dollar verdicts against two of Detroit’s big three automobile manufacturers.

Mr. Badenoch also counsels clients in patent and other intellectual property licensing matters. He has been involved in the licensing aspects of large merger and acquisition transactions and has been head of the firm’s Licensing Practice Group.

Mr. Badenoch has spoken before domestic and international bar association groups, authored brochures advising the Japanese community on patent matters and appeared on a number of panels teaching licensing and patent litigation matters to other lawyers sponsored by the Practicing Law Institute and the American Conference Institute.

Practice Areas

Intellectual Property Litigation

Licensing and Transactions

International Experience

International Trade Commission

Professional Organizations

The New York Intellectual Property Law Association; the American Intellectual Property Law Association; the Licensing Executives Society; the International Intellectual Property Law Association (AIPPI); the Association of the Bar of the City of New York; the American Bar Association’s Litigation, Anti-Trust and Patent, Copyright and Trademark Sections; committee work relating to the World Intellectual Property Organization Harmonization negotiations and the American Bar Association’s Litigation Section, Pretrial Practice and Discovery Committee.


Nicholas Mitrokostas, a partner in Goodwin Procter’s IP Litigation Group, focuses his practice on commercial litigation, with a particular emphasis on intellectual property and patent litigation. Mr. Mitrokostas has extensive trial experience representing clients in the pharmaceutical and biotechnology industries in patent and antitrust litigation. He also has experience counseling and representing higher educational institutions in litigation. Mr. Mitrokostas also devotes a significant amount of time representing pro bono clients in criminal and immigration matters.

Work For Clients:

Mr. Mitrokostas’ recent representations include:

  • Teva Pharmaceuticals, Inc. v. Sandoz, Inc.: Representing Teva Pharmaceuticals in a significant patent litigation involving Teva’s blockbuster branded product, Copaxone®, the most prescribed treatment for relapsing remitting multiple sclerosis. The court ruled that Teva’s nine patents were valid, enforceable and infringed by the defendants’ ANDAs, which was partially upheld on appeal. The case was heard by the U.S. Supreme Court on October 15, 2014.
  • Teva Branded Pharmaceutical Products R&D, Inc. v. Perrigo, Inc.: Represented Teva Branded Pharmaceutical Products R&D, Inc. in patent litigation involving its inhaler, ProAir® HFA, the most widely prescribed albuterol sulfate metered-dose inhaler. The case was settled favorably.
  • Cephalon, Inc. v. Eagle Pharmaceuticals, Inc. (and related cases): Representing Cephalon, Inc. in patent litigation against 18 defendants involving Teva’s branded cancer drug, Treanda®, which is indicated for the treatment of certain lymphomas. The actions are pending in the U.S. District Court for the District of Delaware before Judge Gregory M. Sleet.
  • Mass. Inst. Tech. v. Shire: Representing M.I.T. in litigation involving infringement of patents relating to novel cellular-scaffolds discovered by Professors Bob Langer and Jay Vacanti. The action is pending in the U.S. District Court for the District of Massachusetts.
  • Teva Pharmaceuticals USA, Inc. v. Pfizer, Inc.: Represented Teva Pharmaceuticals USA as ANDA-defendant in patent litigation involving Pfizer’s products, Detrol® and Detrol® LA. The case was settled favorably.
  • Cephalon, Inc. v. Celgene, Corp.: Represented Cephalon, Inc. in patent infringement litigation involving a paclitaxel drug formulation in the U.S. District Court for the District of Massachusetts. The action is pending before the U.S. Court of Appeals for the Federal Circuit.
  • Genzyme, Inc. v. Anika Therapeutics, Inc.: Represented medical device company, Anika Therapeutics, Inc., which was sued for patent infringement relating to its proposed hyaluronic acid injection therapy, Monovisc®, in the U.S. District Court for the District of Massachusetts.

Mr. Mitrokostas also served as one of several attorneys at Goodwin Procter working on matters related to the criminal investigation and prosecution following the July 2006 Central Artery Tunnel collapse in Boston.


THEODORE R. ESSEX

Judge Essex served as an Administrative Law Judge at the Office of Medicare Hearings and Appeals in Cleveland, Ohio, from November 2006 until his United States International Trade Commission (USITC) appointment in October 2007. He previously served as a consultant to the Compensation and Pension Service of the Department of Veterans= Affairs in Washington, DC, from 2005 to 2006.

From 1985 to 2005, Judge Essex served in a variety of positions with the U.S. Air Force (USAF), from which he retired in 2005.  He was Chief of the General Torts Branch of AFLSA/JACT in Arlington, VA, from 2002-2005. He served as Chief of Aviation Law with the Air Education and Training Command, USAF from 2000-2002; as Deputy Staff Judge Advocate with the Air Intelligence Agency, USAF from 1999-2000; as Chief, Operations Law, USAF Headquarters in the United Kingdom from 1996-1999; as an Attorney-Adviser in the AFLEM Office of International Claims and Investment Disputes at the U.S. Department of State from 1995-1996; as a Staff Judge Advocate based in Norway from 1992-1995; as a Deputy Staff Judge Advocate based in the United Kingdom from 1990-1992; as a Circuit Defense Counsel for the USAF AL Legal Services Center from 1988-1990; as a Deputy Staff Judge Advocate based in Belgium from 1987-1988; as an Area Defense Counsel from 1986-1987; and as an Assistant Staff Judge Advocate from 1985-1986.

Judge Essex holds a Juris Doctor degree from The Ohio State University, 1980 and a Bachelor of Arts Degree from Miami University in Oxford, Ohio in 1977. He holds an active law license in the state of Louisiana and is a registered solicitor in England and Wales. Judge Essex is also a professorial lecturer in law at The George Washington University Law School.

The U.S. International Trade Commission is an independent, nonpartisan, quasi-judicial federal agency that provides trade expertise to both the legislative and executive branches of government, determines the impact of imports on U.S. industries, and directs actions against certain unfair trade practices, such as patent, trademark, and copyright infringement.


Carolyn Blankenship is Senior Vice President and Associate General Counsel, Intellectual Property for Thomson Reuters.  She has been in private practice as well as in-house, in a variety of firms and companies, including Skadden, Arps, U.S. Surgical (now Covidien), Priceline.com and Thomson Reuters.  Ms. Blankenship attended the Massachusetts Institute of Technology and Harvard College as an undergraduate, and received her J.D. from Arizona State University College of Law (now the Sandra Day O’Connor College of Law).


David Gross is an IP litigation partner in the Silicon Valley office of Faegre Baker Daniels, a 750-professional firm with over 100 intellectual property professionals and offices in the United States, England, and China.  In 2008, the National Law Journal named David one of the “Top Ten Winning Litigators in the United States” based on his complete defense jury verdict in a patent case for Seagate Technology in the Central District of California.  David is a magna cum laude graduate of Harvard Law School, a national speaker on trial advocacy and IP litigation, and co-author of the NITA trial practice book, The Power Trial Method, and the casebook Winning Patent Litigation.


David J. Kappos is a partner at Cravath. He is widely recognized as one of the world’s foremost leaders in the field of intellectual property, including intellectual property management and strategy, the development of global intellectual property norms, laws and practices as well as commercialization and enforcement of innovation-based assets. Mr. Kappos supports the Firm’s clients with a wide range of their most complex intellectual property issues.

From August 2009 to January 2013, Mr. Kappos served as Under Secretary of Commerce and Director of the United States Patent and Trademark Office (USPTO). In that role, he advised the President, Secretary of Commerce and the Administration on intellectual property policy matters. As Director of the USPTO, he led the Agency in dramatically reengineering its entire management and operational systems as well as its engagement with the global innovation community. He was instrumental in achieving the greatest legislative reform of the U.S. patent system in generations through passage and implementation of the Leahy-Smith America Invents Act, signed into law by the President in September 2011.

Prior to leading the USPTO, Mr. Kappos held several executive posts in the legal department of IBM, the world’s largest patent holder. From 2003 to 2009, he served as the company’s Vice President and Assistant General Counsel for Intellectual Property. In that capacity, he managed global intellectual property activities for IBM, including all aspects of patent, trademark, copyright and trade secret protection. Mr. Kappos joined IBM as a development engineer. During his more than 25 years at IBM, he served in a variety of roles including litigation counsel and Asia Pacific IP counsel, based in Tokyo, Japan, where he led all aspects of intellectual property protection, including licensing, transactions support and mergers and acquisitions activity for the Asia/Pacific region.

Mr. Kappos has received numerous accolades for his contributions to the field of intellectual property, including, among others, the 2013 Champion of Intellectual Property Award from the District of Columbia Bar Association and the 2013 North America Government Leadership Award from Semiconductor Equipment and Materials International (SEMI). He was named one of the 50 Most Influential People in Intellectual Property by Managing IP,one of the 100 Most Influential Lawyers in America by The National Law Journal, and Intellectual Property Professional of the Year by the Intellectual Property Owners Association. Mr. Kappos was inducted into the Intellectual Property Hall of Fame by Intellectual Asset Management Magazine and recommended in the 2013 edition of The Legal 500 in the Technology: Transactional category. He is also a frequent speaker and has authored many published articles on various intellectual property, innovation and leadership topics.

Mr. Kappos serves on the Boards of Directors of the Partnership for Public Service, the Center for Global Enterprise, and the Intellectual Property Owners Educational Foundation.

Mr. Kappos was born in Palos Verdes, California. He received a B.S. summa cum laude in Electrical and Computer Engineering from the University of California, Davis, in 1983, and a J.D. from the University of California, Berkeley, in 1990.


Heather Faltin is the Senior Patent Counsel at Comcast Cable Communications.  Prior to joining Comcast, Ms. Faltin's was an associate in private practice.  Her practice focused on intellectual property litigation, with a particular emphasis on patent litigation.  She has represented clients from a variety of industries, ranging from telecommunications to medical devices.

Ms. Faltin received her J.D. from the University of Virginia School of Law in 2004.  During law school, she served on the editorial board of the Virginia Journal of Law and Technology.  She received a B.S. in Physics (magna cum laude) from the College of William and Mary in 2000.

Ms. Faltin is admitted to practice in Virginia, Pennsylvania and the District of Columbia and before the U.S. Patent and Trademark Office.


Jennifer BianRosa joined Dickstein Shapiro’s New York office in 2008 as an associate in the Intellectual Property Practice. Ms. BianRosa focuses her practice on patent litigation and client counseling.

AREAS OF CONCENTRATION

Ms. BianRosa has litigated patents in the fields of medical devices and computer software; rendered opinions on non-infringement and invalidity; and advised companies on their intellectual property rights. She also has performed due diligence investigations.

REPRESENTATIVE CASES 

  • Small v. Nobel Biocare USA, LLC et al
    Represented dentist in asserting two patents related to dental implants.
  • Barnes & Noble v. Alcatel-Lucent USA Inc.
    Defending Barnes & Noble against a charge of patent infringement involving seven software patents.
  • Barnes & Noble v. Xerox Corp.
    Defended Barnes & Noble against a charge of patent infringement involving four software patents.
  • Belair v. MGA Entertainment, Inc. et al
    Represented local artist Butch Belair in asserting copyright against dolls.
  • Medtronic Inc. v. W.L. Gore & Associates, Inc.
    Defending Gore against a charge of patent infringement involving shape-memory alloys used in medical devices such as aortic stent-grafts.
  • Edwards Lifescience v. Cook Inc. and W. L. Gore & Associates, Inc.
    Defending Gore against a charge of patent infringement involving aortic stent-grafts.
  • SCO v. IBM
    Represented IBM in a counterclaim against SCO for infringement of four software patents.
  • Compuware v. IBM, IBM v. Compuware
    Represented IBM in a counterclaim against Compuware for infringement of six software patents.

RELATED PRACTICES

  • Computer Science
  • Due Diligence
  • Intellectual Property
  • Life Sciences and Chemicals
  • Litigation
  • Patent Litigation

BAR ADMISSIONS

New York

U.S. District Court for the Southern District of New York
U.S. District Court for the Eastern District of New York
U.S. Patent and Trademark Office

PROFESSIONAL BACKGROUND

Prior to joining Dickstein Shapiro, Ms. BianRosa was an associate at Morgan & Finnegan LLP since 2003.

PROFESSIONAL ACTIVITIES

Ms. BianRosa is admitted to practice in New York and before the U.S. District Courts for the Southern and Eastern Districts of New York. She also is registered to practice before the U.S. Patent and Trademark Office.

PUBLICATIONS
 
  • Mark J. Abate & Jennifer BianRosa, “Intellectual Property Law Cases in the New York Federal Courts,” NYIPLA Bulletin Columnist (Jan. 2006 - Jan. 2007).
  • Walter G. Hanchuk & Jennifer BianRosa, “The Effect of the First-Filed Rule on Motions to Transfer,” IP Litigation Column, E-Commerce Law Journal (Sept. 2002).

EDUCATION

Ms. BianRosa received her B.S. in mechanical engineering from Manhattan College (1999) and her M.S. in thermo fluids engineering from Columbia University (2000). She received her J.D. from Boston University School of Law (2003).


Practice Areas

Intellectual Property

Education

BS Economics, Bentley College

Experience

Mr. Peter Schwechheimer is a vice president in the Intellectual Property Practice at CRA. He has 14 years of experience consulting to companies and law firms across a broad range of engagements, including IP litigation, licensing, and valuation. Mr. Schwechheimer specializes in the valuation of intellectual property and has estimated damages arising from patent and copyright infringement, breach of contract, and trade secret misappropriation. In addition, he has analyzed antitrust liability and damages for patent misuse and monopolization as well as damages arising from incorrect inventorship. Mr. Schwechheimer has consulted to Fortune 500 information technology and computer software, services, and solutions corporations regarding patent valuation, licensing, and litigation settlement issues. His experience covers a diverse range of industries, including medical devices, computer hardware and software, cellular telephony technology, telecommunications equipment, pharmaceuticals, and ecommerce. Mr. Schwechheimer has also provided expert witness testimony in deposition and in Federal Court, Eastern District of New York. He earned a BS degree in economics from Bentley College.