Our practice comprises intellectual property litigation, licensing, procurement, and protection including patent, trademark, copyright, trade secret and unfair competition causes in the federal and state courts and agencies. Established in 1993, the firm provides cost-effective and individually attentive counsel and representation complemented by the experience of its members at the preëminent intellectual property law firms.
Education: Temple University School of Law, J.D. 1982. Indiana University of Pennsylvania, B.A. cum laude 1979, political science, chemistry, psychology. Admitted to practice, New York, 1983; California, 1991; United States Supreme Court; United States Court of Appeals for the Second and Federal Circuits; United States District Court for the Southern, Eastern and Northern Districts of New York, Eastern District of Texas.
Prior affiliation: Pennie & Edmonds, 1982-1991. Experience and areas of practice: Litigation of patent, trademark, trade dress, contract, trade secret, counterfeiting, copyright, unfair competition, antitrust, restrictive covenants, and related causes; inter partes proceedings in the United States Patent and Trademark Office; International Trade Commission proceedings and customs recordation in the importation of intellectual property; Federal Trade Commission investigations and proceedings for consumer protection and unfair competition; licensing and transfer of intellectual property rights; counseling in the protection and use of intellectual property and inventions. Experience has included polymer chemistry, electroplating, pharmaceuticals, gelatin capsules, dilating and feeding catheters, occult blood detectors, electric drills and tools, drywall screw anchors, fasteners, caulking compounds, thermoplastic molding compositions, vibrating beam accelerometers, construction methods, fashion apparel and accessories, athletic shoe designs, windsurfers, bicycles, tennis rackets, athletic protective wear, electronic pest repellers, air ionizers, electrical energy consumption monitoring devices, fragrances, fabric softeners, detergents, antiperspirant compounds, consumer product packaging and containers, graphic designs, gourmet foods, wine and agricultural products, telecommunications services, market research methods.
Member: American Bar Association (Intellectual Property and Litigation sections); The State Bar of California (Intellectual Property section); American Intellectual Property Law Association; International Wine Law Association; Association of the Bar of the City of New York.
Education: Fordham University School of Law, J.D. 1984. Barnard College, Columbia University, B.A. chemistry 1978. Admitted to practice, New York, 1985; United States Supreme Court; United States Court of Appeals for the Second and Federal Circuits; United States District Court for the Southern and Eastern Districts of New York, Eastern District of Texas. Registered to practice before the United States Patent and Trademark Office.
Prior affiliations: Pennie & Edmonds 1984-1988, Hopgood Calimafde 1988 - 1992. Experience and areas of practice: Litigation of patents, trademarks, copyrights, unfair competition, related antitrust issues and product liability; drafting and prosecution of patent and trademark applications, including international convention; counseling in the protection and infringement of intellectual property in matters including monoclonal antibodies, oral contraceptives, pregnancy detection, dermatological treatments, magnetic resonance imaging, carbon dioxide slab lasers, pulse oximeters, flow cytometers, computer languages, financial software, ink jet cartridges, electrical energy monitoring devices, houseware product designs, bicycle mechanics, three-dimensional television, scuba equipment, sportswear, cosmetic accessories and applicators, slot machines, marine distress signals, construction innovation, advertising jingles, gourmet food denominations, jewelry design, trading cards, toys, artistic design piracy.
"Patent and Copyright Protection for Innovations in Finance" J. Financial Management Ass'n, 17(4):66 (Winter 1988).
Over the past two decades, we have represented our clients in litigation and obtained favorable results for them in the following representative matters, including those cases (^) in which our firm also served as patent and litigation counsel to Trademark & Patent Counselors of America, P.C.
Successfully defended Italian food producer and its US importer against charges of trademark infringement and unfair competition in trial of federal declaratory judgment action. Italian registrant claimed that its common law rights and federally registered trademark Bella di Cerignola ["Bella dee Cherry-nyola"] [and design] prevented its competitors, including our Italian and US clients, from using the term in describing their olives produced and imported from the Cerignola region of Italy. We obtained a judgment for our clients declaring Bella di Cerignola to be a generic olive variety not entitled to trademark protection and secured that judgment on appeal.
Successfully defended two former employees of a private business telecommunications provider against claims of trade secret misappropriation and breach of covenant against competition, and preserved the rights of their new business to operate unfettered by restrictions sought to be imposed by the former employers.
Obtained a temporary restraining order and preliminary injunction against our client's competitor which had simulated the design and trade dress of our client's popular sonic pest repeller.
Successfully defeated antitrust challenge to restrictive covenant in trade dress and copyright settlement agreement
Negotiated a favorable settlement for our client in suit for infringement of motorized scooter patent.
Aggressively enforced our client's trademark and trade dress rights in New Jersey District Court against its former distributor of rice and Chinese food products.^
Litigated and negotiated client's rights based upon settlement agreement in prior litigation involving trademarks for imported luxury writing instruments.^
Negotiated favorable settlements for various clients in the apparel industry charged with federal trademark and copyright infringement.
Enforced terms of consent decree and injunction against infringement of our client’s trademarks for jewelry and gem stones.
Obtained patent for three NYC employees who had independently invented an innovative parking meter security system and successfully defended them before the NYC Board of Ethics against their employer’s suggestions that their patent rights created a conflict of interest.
Successfully defended trademark infringement claims brought by vitamin supplement firm against client in skin care vitamin treatment businesses by commencing declaratory judgment action and negotiating favorable settlement.^
Enforced trademark rights against former franchisees on behalf of sewing machine manufacturer.^
Enforced rights of Cornell University athletic trainer in actions for infringement of his patent for inventive hockey shoulder protective equipment in the US and Canada.
Enforced musician-author's copyright in commercial internet misappropriation.
Representing a schizophrenic Alabama death row prisoner pro bono, obtained a federal writ of habeas corpus vacating his death sentence, and reinstated his constitutional rights on writ of certiorari in the United States Supreme Court.
Prior to the founding of this firm, our attorneys gained their litigation experience representing major clientsin discovery and dispositive motion practice and as second chair trial counsel. The following are representative examples.
James A. Power Jr
Phillips Petroleum Company v. Aristech Chemical Company and Rexene Products Company Civil Action No. H-87-3442 (S.D. Tex. Dec. 23, 1996), aff’d, Phillips Petroleum Company v. Huntsman Polymers Corp. and Aristech Chemical Corp., 157 F.3d 866 (Fed. Cir. 1998). Successfully defended Rexene against claims of infringement of Phillips patent covering block copolymer compounds and methods of copolymerization. Transferred case, 84 C 2021 (N.D. Ill. July 25, 1984). Drafted pleadings; conducted discovery including numerous motions over seven years; conducted depositions of Phillips patent attorneys and research scientists and licensees under the Phillips patent. Second chair in 1990 alternative dispute resolution procedure which was transformed into a hearing before a court appointed special master on defendants’ motion for summary judgment of non-infringement; drafted summary judgment briefs. The Special Master recommended the motion be granted. Prepared briefs urging District Court to adopt recommendations of Special Master and defended against Phillips’ motion to disqualify Special Master after his decision. The District Court upheld the Special Master's recommendation and entered summary judgment in our client's favor, which was later affirmed on appeal.
Master Lock Company v. Justen Products Civil Action No. 90 C 3788 (N.D. Ill.). Successfully asserted claims on behalf of Master Lock that Justen infringed its registered trademark MASTER, and infringed the trade dress of its MASTER LOCK padlocks and security products by imitating the packaging and thereby engaging in unfair competition. Negotiated settlement including consent injunction.
Phillips Petroleum Company v. Rexene Products Company Civil Action No. 90-208 (D. Del.). Successfully defended Rexene against claims of infringement of Phillips’ pioneer polypropylene patent on the asserted ground that Phillips had terminated Rexene's license. Drafted pleadings; conducted discovery; managed pretrial motion phase of case and prepared motion to dismiss Claim I for retroactive patent infringement damages on theory that license was void ab initio, insofar as it was compulsory counterclaim in prior litigation (below); supervised drafting of motion for summary judgment of Claim II for prospective damages and an injunction, on ground that license was not properly terminated. The District Court dismissed Claim I and entered judgment in favor of Rexene on Count II after a trial. Later reversed in part (as to Claim II), Phillips Petroleum Co. v. Huntsman Polymers Corp., 82 F.3d 435 (Fed. Cir. 1996).
CONOPCO, Inc. dba Fabergé v. CSA Limited, Inc. dba Salon Products Civil Action No. H-90-1351 (S.D. Tex.). Successfully asserted claims on behalf of Fabergé that CSA infringed Fabergé 's registered trademark Grande Finale, and infringed the trade dress of its Fabergé Grande Finale salon hair spray by imitating the packaging and thereby engaging in unfair competition. Drafted pleadings, motion for temporary restraining order and preliminary injunction with affidavits and brief. District Court granted TRO. CSA consented to judgment prohibiting further use of their confusingly similar "Grand Finesse" and "Great Finish" names on their salon hair spray products.
Lever Brothers Company v. Kane-Miller Corporation Civil Action No. 89-CIV-6635 (S.D.N.Y.). Successfully asserted claims on behalf of Lever that Kane-Miller infringed Lever's registered trademark Buttermatch, and infringed the trade dress of its Shedd's Buttermatch spread products by imitating the packaging and thereby engaging in unfair competition with Lever. Prepared pleadings; successfully opposed motion to suspend civil action in favor of prior Trademark Office opposition proceedings; conducted discovery, secured favorable settlement including consent decree enjoining Kane-Miller from use of "Buttermate" name and packaging.
LA Gear v. Thom McAn Shoe Company, Melville Corporation, et. al., Pagoda Trading Company. Inc. and San Shoe Corporation Civil Action No. 88 CIV 6444 (S.D.N.Y.). Successfully defended San Shoe Corp. against claims that their athletic shoe infringed the design patent and trade dress of the LA Gear "Hot Shot" athletic shoe, negotiating dismissal of patent claim. Drafted pleadings, conducted discovery, pretrial motions. Second chair at trial. Obtained voluntary dismissal of all claims against San Shoe upon the strong urging of the District Court after trial of unfair competition claims. The District Court ultimately held the other defendants liable for infringement on all counts, entered an injunction and ordered an accounting.
Kilberis v. Sears, Roebuck & Company Civil Action No. H-87-2366 (S.D. Tex.). Successfully defended Sears against claims that its Craftsman electronic drills infringed of patent covering keyless drill chuck. Drafted pleadings, pretrial motions and briefs, conducted discovery, motion for summary judgment of non-infringement, prepared position papers and participated in non-binding dispute resolution proceeding; second chair at trial, drafted post-trial briefs.
Phillips Petroleum Company v. United States Steel Corp., 673 F. Supp. 1278 (D. Del. 1987), aff’d, 865 F. 2d 1247 (Fed. Cir. 1989). Represented defendant El Paso Products Co. in patent infringement litigation involving pioneer patent on polypropylene compound following protracted, multi-party, international patent interference proceedings on competing claims of inventorship. Prepared pretrial motions and conducted discovery. Third chair at trial. Authored portions of trial and appellate briefs.
Mechanical Plastics Corp. v. Unifast Indus., Inc., 610 F. Supp.1073 (pretrial motion), 657 F. Supp. 502 (E.D.N.Y. 1987), aff’d, 846 F.2d 78 (Fed. Cir. 1988). Patent infringement suit. Drafted pleadings and pretrial motions, conducted discovery. Second chair at trial.
Mechanical Plastics Corp. v. The Rawlplug Corp., 501 N.Y.S.2d 82 (2d Dep’t 1986). Action against former employer for breach of contract and misappropriation of invention. Drafted pleadings, conducted discovery and pretrial motion practice. Participated in interlocutory appeal.
Mechanical Plastics Corp. v. USM Corp. Civil Action No. H-84-880 (D. Conn.). Successfully asserted patent infringement claims and defended trademark invalidity counterclaim asserted by and against USM. Drafted pleadings, conducted discovery; dismissed counterclaim for declaratory judgment of trademark invalidity for lack of justiciable controversy; obtained favorable settlement on patent claims.
Marguerite Del Valle
Microsoft Corporation v. Qantel Business Systems, Cancellation No. 16,596, Trademark Trial and Appeal Board, United States Patent and Trademark Office. Proceeding instituted by Microsoft to cancel registration of Qantel's trademark QICBASIC for computer language. On behalf of Qantel, prepared and responded to all discovery requests; engaged in settlement negotiations, prepared witnesses and defended depositions of Qantel personnel; deposed Microsoft witnesses. Prepared opposition to and defeated motion for summary judgment that mark was descriptive or had been abandoned.
Olin Corporation v. Sigma Scientific Incorporated, Civil Action No. 86-8035-RG (C.D. Cal.). Action by Olin for injunctive relief from Sigma's infringement of Olin's registered trademarks and unfair competition. Counterclaim by Sigma for fraud, predatory pricing in the market for marine signal flares, and cancellation of Olin's trademark registrations. On behalf of Olin, drafted pleadings; conducted all written discovery; conducted depositions of Sigma's corporate officers and sales manager and defended depositions of Olin's marketing manager, sales manager, accountant, and bookkeeper; prepared papers in support of motion for preliminary injunction with affidavits; drafted papers in support of motion for summary judgment. Based on information obtained during discovery, parties entered into settlement agreement prior to trial.
Ortho Diagnostic Systems v. Coulter Corporation, Civil Action 86-2060 (S.D. Fla.) Action for infringement of patents on monoclonal antibodies for T-cell subsets and apparatus for detecting and measuring subset ratios. Prepared and responded to all written interrogatories and document requests; prepared Ortho witnesses and defended them at their depositions; discovery motions. The case was settled on terms favorable to Ortho, based on materials disclosed during discovery.
Ortho Pharmaceutical Corporation v. Smith and American Home Products, Civil Action No. 90-242 (E.D. Pa.). Declaratory judgment action on behalf of Ortho for invalidity of AHP's patent on the synthesis of norgestrel, a contraceptive compound. AHP filed a counterclaim for infringement of its patent. On behalf of Ortho, drafted all pleadings, prepared all papers in the opposition to AHP's motion for preliminary injunction with expert affidavits, prepared all written discovery and responses, prepared Ortho deponents and defense of their depositions, served as second chair at the trial. Although an injunction was entered, Ortho defeated AHP's post-trial motion to broaden the scope of injunctive relief.
Dana Farber Cancer Institute v. Ortho Pharmaceutical Corporation, Civil Action No. 88-0318-N (D. Mass). Action for conversion of patent rights, breach of fiduciary duty, unjust enrichment, violation of antitrust laws, interference with business relationships, unfair and deceptive business practices, and fraud. On behalf of Ortho, prepared and responded to discovery requests; prepared witnesses and defended depositions; prepared and defended against numerous discovery motions and motions to amend pleadings. Prevailed on motion for partial summary judgment made by Ortho on the grounds that Dana-Farber's tort claim was barred by the statute of limitations and that several causes of action were predicated on an alleged fiduciary duty for prosecuting patent applications which was neither owed nor breached by Ortho. The remaining claims were dismissed pursuant to a settlement favorable to Ortho.
Matter of Ortho Pharmaceutical Corporation, Patent Reexamination No. 90/000,830, United States Patent and Trademark Office. Successfully defended scope and validity of Ortho's patent for treatment of non-inflammatory acne with 13-cis-retinoic acid against competitor's petition for reexamination. Prepared responses to patent examiner's rejections in support of Ortho's patent claims, prepared and submitted expert affidavits in support of Ortho's patent. Successfully prosecuted appeal to Board of Patent Appeals & Interferences from examiner's rejection of all claims which resulted in the confirmation of the client’s patent claims.
Wilson v. The Institute for Social and Scientific Development and Jack D. Solomon v. Gaming and Technology Incorporated, Case No. 88C-622S (D. Utah). Defended Gaming on third party complaint for indemnification and right of contribution, in action by Wilson against Institute and Solomon for a declaratory judgment of ownership of patent as wrongfully assigned by Gaming, breach of contract, tortious interference, fraud and misrepresentation, and to quiet title as owners of the patent. Prepared and submitted an affidavit of Gaming's vice-president and a correction of assignment to the Patent Office to clear title, resulting in a stipulation of dismissal with prejudice of Wilson's complaint. Successfully moved to dismiss third-party complaint against Gaming for lack of in personam jurisdiction.
Snaper and Borkin v. United Gaming, Inc., Solomon, The Institute for Social and Scientific Development,Case No. A269191-II-D, Nevada District Court, Clark County. Represented United Gaming in action for damages arising from cloud on patent title, in which Gaming counterclaimed for a declaration of patent ownership and alleging fraud, and Solomon cross claimed for breach of contract, defamation, and indemnification. Conducted all discovery, establishing incontestably that Gaming was legal owner of disputed patents. Negotiated dismissal of plaintiffs’ complaint; successfully moved for partial summary judgment on cross claims and obtained stipulation of client’s ownership of patents and general release.
Nuoptix 3-D Corporation and Terry Beard v. UN Productions Inc. (D.N.J.). Represented plaintiffs in action for infringement of patent for viewing glasses with differential spectral transmission characteristics for three dimensional television viewing. Drafted pleadings, served discovery, and negotiated cease of further manufacture and destruction of infringing articles.
Debra Murray v. Shalmay Company and Point Blank, Inc.(S.D.N.Y.). Represented designer Debra Murray in action for copyright infringement and unfair competition arising from Shalmay’s unauthorized copies of Murray’s artistic design on wearing apparel. Prepared complaint, motion for preliminary injunction with affidavits and brief, and conducted discovery. Obtained favorable settlement for client.