Patent Litigation

Our litigators have successfully asserted and defended patent cases in federal courts throughout the country, including jurisdictions with heavy patent dockets (e.g., California, Delaware, Massachusetts, New Jersey, Pennsylvania, Texas, and Virginia), the Court of Appeals for the Federal Circuit, and before the International Trade Commission.  Foremost, we are trial lawyers, and our diverse IP litigation practice enables us to excel across a wide range of technologies.  Our approach is to pair lawyers who have strong technical backgrounds in the relevant technology with experienced trial lawyers, thereby giving our clients the best of both worlds:  a litigation and trial team which can construct the strongest possible technical arguments in support of our position and can also explain our case to a judge and jury in language which is simple and persuasive.

From individual inventors to Fortune 500 companies, our lawyers have represented a wide range of clients in patent matters and have successfully litigated against some of the largest law firms in the U.S. The firm’s patent practice has been recognized in the Chambers USA guide, and the firm has been ranked as a recommended firm for patent litigation by Managing Intellectual Property magazine’s IP Stars guide.  Patent Litigation group members have also been recognized individually by Chambers, as IP stars by Managing Intellectual Property, and as part of IAM’s Patent 1000 list.

Our patent attorneys are also skillful and experienced negotiators, able to assist our clients in maximizing the value of an IP asset sale.  We draft infringement and validity opinions, conduct detailed intellectual property due diligence and freedom-to-operate analyses, and counsel clients on monetizing strategies for patent portfolios.

Key Contacts

All Attorneys

Telecommunications/Wireless

Represent an institutional patent holder in multiple litigations against large telecommunications companies concerning VoIP and various landline connectivity services.

Represented an Israeli technology and software company in patent infringement litigation against a major computer device and platform designer and manufacturer over client’s live streaming technology.

Defended multiple wireless providers and media streaming software developers in patent infringement litigation concerning music delivery to mobile devices.

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Electronics

Represented a large computer chip manufacturer in a multi-defendant patent litigation regarding the design of computer chips relating to wireless communication involving Temporal Key Integrity Protocol (TKIP).

Represented an international manufacturer of commercial ink jet printers against patent infringement claims regarding direct-to-garment printing.

Defended Israeli company against patent litigation brought by a non-practicing entity involving wireless security systems technology.

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Mechanical Components

Represent fire suppression manufacturer against leading aircraft manufacturers and a major industrial supply manufacturer in a patent infringement action concerning the use of nitrogen to prevent and extinguish fires on board large commercial airplanes.

Obtained summary judgment of non-infringement on behalf of international manufacturer in patent litigation concerning a gear system for use in industrial equipment.

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Software

Defended gaming machine manufacturer against three software patents concerning multiplayer gaming and technology.  Obtained multiple jury verdicts of invalidity despite the patents having been confirmed multiple times in reexamination before the Patent Office.

Defended a major Korean computer company in patent infringement action by international Fortune 500 consumer electronics company involving computer video graphics technology.

Represent an institutional patent holder in multiple litigations against large gaming companies and platforms concerning distributed multi-player tournament game technology.

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Business Methods

Defended major clothing retailer in a patent dispute concerning debit and gift card transaction technology.

Defended big three automobile manufacturer against a patent licensing entity in a case involving online sales methods.

Defended an automobile parts retailer against a patent licensing entity in patent dispute concerning online electronic catalogs.

Design Patents & Consumer Products

Represented patentee in series of patent litigations against major shoe manufacturers concerning the use of a polymer for improved comfort and stability in shoes.

Represent Israeli manufacturer of natural quartz surfaces in patent and copyright strategy in connection with a dispute raised by a competitor company.

Represented an international consumer products company in successfully asserting its patent against an infringing company, resulting in the infringing company agreeing to cease production of the product.

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Medical Devices

Represented medical device company in patent jury trial concerning cardiac stents resulting in an $8.3 million jury verdict.

Represented major medical device manufacturer in multiple licensing disputes and patent litigations against competitors relating to coronary stent technology. Resulted in several of the largest verdicts and settlements in history.

Represented medical device manufacturer in litigation concerning cancer radiation therapy.

Represented plaintiff medical device company in litigation concerning imaging systems for cardiac surgery.

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Chambers has again recognized C&G for its excellence in General Commercial Litigation, Securities Litigation, and White Collar Crime & Government Investigations. Chambers notes C&G’s “strong commitment to client service” and “top-quality advice,” labeling the firm as “outstanding.”

Chambers also recognized the following individuals: Jonathan S Abernethy for White Collar Crime & Government Investigations; Karen H Bromberg for Intellectual Property: Patent; and Mark S Cohen for General Commercial Litigation, Securities Litigation, and White Collar Crime & Government Investigations.

IAM Patent 1000 has recognized Karen H Bromberg as a leading patent professional in its 2019 guide, noting an “excellent track record” and efficiency in “facilitating early wins.”  Published by Intellectual Asset Management (IAM), the ranking identifies top patent professionals in key jurisdictions around the globe and takes into account an attorney’s depth of knowledge, market presence, level of work, as well as positive peer and client feedback.

Managing Intellectual Property has named Karen Bromberg as a Patent Star and as a Trademark Star in its 2018 IP Stars rankings. IP Stars are private practice IP professionals who have been highly recommended by their peers and clients.

Chambers has recognized Cohen & Gresser in its 2018 USA guide. The firm is recognized for its excellence in General Commercial LitigationSecurities Litigation, and White-Collar Crime & Government Investigations.

Chambers notes that C&G is "a very high-quality firm" with "very smart, very capable people who are very dedicated to their clients," and that C&G attorneys "have great judgment and are excellent lawyers."

Chambers also recognized the following individuals:

Jonathan S Abernethy for White-Collar Crime & Government Investigations, Karen H Bromberg for Intellectual Property: Patent, and Mark S Cohen for Securities Litigation and for White-Collar Crime & Government Investigations.

IAM Patent 1000 has recognized Karen H Bromberg as a leading patent professional in its 2017 guide.  Published by Intellectual Asset Management (IAM), the IAM Patent 1000 identifies top patent professionals in key jurisdictions around the globe, compiling its data through interviews with numerous attorneys at law, patent attorneys, and in-house counsel.

Chambers USA and Legal 500's United States guides have recognized Cohen & Gresser and a number of the firm's lawyers for outstanding achievements during the past year in the categories of Commercial Litigation, Securities Litigation, Patents, and Corporate Investigations and White Collar Defense.

Managing Intellectual Property has named Karen H Bromberg, Damir Cefo, and Gurpreet (Ray) Walia as Patent Stars in its 2017 IP Stars ranking.  Karen was also selected as a 2017 Trademark Star.  IP Stars are private practice intellectual professionals who have been highly recommended by their peers and clients.  

We are pleased to announce that twenty-two of our U.S.-based C&G attorneys have been recognized by Super Lawyers this year across a wide range of practice areas. Super Lawyers also named C&G co-founding partners Mark S Cohen and Lawrence T Gresser to its list of the top 100 lawyers in the New York metropolitan area, and partner Karen H Bromberg to both its list of top 50 women lawyers and top 100 lawyers in this region. Super Lawyers ranks outstanding lawyers who have attained a high degree of peer recognition and professional achievement. Fewer than five percent of all lawyers in the U.S. receive this honor.

We are pleased to announce that the firm and four of its partners are recognized in the 2016 Chambers USA legal directoryThis year's directory recognizes the firm in White Collar Crime & Government Investigations, Securities Litigation, and Patents. Read more

Each year, Managing Intellectual Property magazine ranks top IP firms and lawyers in its annual IP Stars ranking guide. This year, the guide recognized three C&G attorneys as 2016 IP Stars. 

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Amazon is looking into moving to patent technology that would allow shoppers to use live selfies to complete purchases. Privacy attorneys, including C&G's Karen Bromberg, weigh in on this issue in a recent Law360 article. 

Each year, the IAM Patent 1000 identifies top patent professionals in key jurisdictions around the globe. This year, IAM Patent 1000 has recognized Karen Bromberg as a leading patent professional for 2015. Published by Intellectual Asset Management (IAM), the IAM Patent 1000 compiles its data through interviews with numerous attorneys at law, patent attorneys and in-house counsel, and identifies the leading players in the field.

Each year, Managing Intellectual Property magazine ranks top IP firms and lawyers in its annual IP Stars ranking guide.  For the second year in a row, the guide ranked Cohen & Gresser as being recommended in the Patent Contentious category, and Karen Bromberg, partner and chair of the firm’s Intellectual Property and Technology group, was named an IP Star for Counselling, Licensing, and Patent Litigation. Additionally, Dr. Gurpreet (Ray) Walia has been recognized as an IP Star in Patent Litigation, Patent Opinion, and Patent Strategy and Counseling category. 

On Monday, the U.S. Supreme Court issued a ruling in Kimble v. Marvel Enterprises that leaves intact a 50-year-old rule barring royalty agreements that continue after a patent expires. C&G's Damir Cefo and other attorneys weigh in on why the decision is significant.

On Tuesday May 27, 2015, the U.S. Supreme Court ruled a good faith belief that a patent is invalid is not a defense to induced infringement. C&G's Karen H Bromberg speaks to Law360 about why this decision in Commil USA LLC v. Cisco Systems Inc. is significant.
Cohen & Gresser is pleased to announce that the firm and five of its attorneys are recognized in the 2015 edition of Chambers USA, a national ranking guide that recognizes outstanding lawyers and law firms across the United States who are strongly recommended based on in-depth interviews with thousands of lawyers, clients, and industry leaders, with the most weight assigned to client feedback. The final rankings take into account a lawyer's legal ability, professional conduct, client service, commercial astuteness, diligence, and commitment to the profession, among other qualities most valued by clients.
Each year, Law360 selects a small group of practitioners from across the country in each of its practice area and industry groups to aid in shaping the publication’s editorial content for the following year. This year, five C&G attorneys were named as Law360 Editorial Advisory Board Members: 
 

- Mark S Cohen, Partner:  White Collar Advisory Board

- Robert J Gavigan, Partner: Mergers & Acquisitions Advisory Board

- Bonnie J Roe, Partner:  Private Equity Advisory Board

- Daniel H Tabak, Partner: Legal Ethics Advisory Board

- Christopher M P Jackson, Counsel: Life Sciences Advisory Board

 

Cohen & Gresser has been ranked as a "Recommended" New York law firm in the 2015 edition of Benchmark Litigation.   In addition to the firm’s ranking, partners Mark S Cohen, Lawrence T Gresser, C Evan Stewart, and Karen H Bromberg were all individually recognized by the publication.  Benchmark Litigation is a leading guide to top litigation firms and attorneys in the United States and bases its rankings on extensive face-to-face interviews around the country over a six-month period with the nation's leading private practice attorneys and in-house counsel. 

Cohen & Gresser LLP is pleased to announce that it has been recognized in the 2014 edition of Chambers USA, a national report on lawyers and law firms published annually. Chambers recognized Cohen & Gresser's Patent Litigation group as a Recognized Practice. The guide also ranked Karen H Bromberg in the Patent category with commentary that she is "a complete rock star, with extensive knowledge and negotiating acumen, who provides real-world advice."

Each year, Managing Intellectual Property magazine ranks top IP firms and lawyers in its annual IP Stars ranking guide.  This year, the guide ranked Cohen & Gresser as being recommended in the Patent Contentious category, and Karen Bromberg, partner and chair of the firm’s Intellectual Property and Technology group, was named an IP Star for 2014. 

The U.S. Supreme Court recently ruled that users of generic drugs cannot bring state-law design defect claims against generics makers because the manufacturers cannot change a drug's design under federal law. Walia notes, "The decision reaffirms the fundamental principle of the Hatch-Waxman Act: Generic manufacturers must follow FDA requirements for pharmaceutical compositions and labels. A manufacturer of generic drugs cannot change a generic drug's design or labeling under federal law, and therefore should not be penalized for following federal law."

The past few months have shed some light on the Patent Trial and Appeal Board’s approach to estoppel in post-grant proceedings, which applies to final written decisions on a claim-by-claim basis. Moreover, estoppel applies not only when a petitioner, or a real party in interest or privy of the petitioner, raised the arguments in a prior IPR or PGR proceeding, but also when he/she “reasonably could have raised” them. 

This article discusses the Teva v. Sandoz decision and the tension it creates between the subordinate status afforded extrinsic evidence under Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) and the deference that will be afforded district court factual findings based on extrinsic evidence.  

In this article, Dr. Walia suggests that the Federal Circuit appears to be leaning toword a more flexible approach in terms of pharmaceutical patens, as evidenced in recent decisions. 

Obviousness type double patenting (ODP), or non-statutory double patenting, is a judicially created doctrine meant to prevent a party from extending an earlier commonly owned patent’s term by claiming patentably indistinct subject matter through claims in a later patent. An ODP rejection of the second patent application with indistinct patentable claims can be overcome by filing a terminal disclaimer as long as both patents are commonly owned or a joint research agreement exists for both patents.

Inter Partes Review (IPR) is conducted at the Patent Trial and Appeal Board (PTAB) to review the patentability of claims only on the basis of anticipation and obviousness based only on patents or printed publications. So far, more than 70 percent of petitions have resulted in instituting of an IPR. This article discusses best practices for petitioning for an IPR and how it can be a very attractive route for potentially invalidating patent claims for generics which do not have the 180-day market exclusivity incentive

In Actavis, the Supreme Court declined to hold these agreements presumptively anticompetitive as advocated by the FTC or apply the scope-of-the-patent test, but held that such agreements should be reviewed by the rule-of-reason antitrust standard. This article discusses the implications of this decision. 

In Hatch-Waxman litigation, the filing of an ANDA seeking approval to market a pharmaceutical product before the expiration of patents covering that product is a technical act of infringement sufficient to establish jurisdiction to resolve the issues of patent infringement and validity in litigation. This article examines the litigation that follows the ANDA filing by considering whether the product that is likely to be sold would infringe the patent.

In affirming the district court’s award of attorneys’ fees, the Federal Circuit agreed with the district court that the patent holder’s failure to “produce admissible evidence of infringement” rendered the case exceptional, historically a very high bar for prevailing defendants to meet. However, in reaching this decision, the Federal Circuit relied upon two recent U.S. Supreme Court decisions, Octane Fitness, LLC v. ICON Health & Fitness, Inc. and Highmark, Inc. v. Allcare Health Mgmt. Sys., Inc., both of which significantly relaxed the standard for what is deemed an “exceptional case” under § 285.

Don’t assume your client will receive a stay pending post grant proceeding. Many practitioners assume that an IPR will trigger a stay of litigation.  This article discusses recent cases that suggest careful case planning, to request or resist, is necessary to best achieve a client’s goals.

The article provides an analysis of recent remarks by Assistant Attorney General Stuart Delery, in which the AAG described the government’s approach to enforcement actions targeting off-label promotion of drugs and devices.  Considering the AAG’s remarks along with recent FDA draft guidance on the distribution of scientific literature, the article focuses on the effect that First Amendment concerns, intensified by recent case law developments, may have had on the way in which the government investigates cases, evaluates evidence, and develops and presents its theories of liability in off-label cases.

A patent on cloning human stem cells was issued recently by the U.S. Patent Office to a disgraced scientist who had admitted to fabricating his results. Despite appearances, however, the issuance of this patent is not a glaring mistake on the part of the USPTO, nor is it certain that the patent was obtained by fraud or should be held invalid. As long as the inventor was scrupulously honest in his dealings with the USPTO, he may be entitled to the monopoly rights granted to him.

Some courts are holding defendants to a heightened pleading standard for affirmative defenses and counterclaims. A review of different pleading standards for claims in different jurisdictions suggests that defendants should look carefully at evolving case law in their jurisdiction in which they are sued until the Federal Circuit presumably harmonizes the pleading standards.

In March of 2016, C&G's Damir Cefo spoke at the annual AIPPI Conference in Tel Aviv about building a powerful U.S. portfolio. 

The Knowledge Group has assembled a panel of key thought leaders and practitioners to provide an opportunity to discuss the issues raised by the Apotex Inc. v. Daiichi Sankyo Inc. decision in a two-hour, LIVE Webcast. The panel of speakers will summarize past cases, review the recent Federal Circuit Court decision, and discuss the implications and pending confusion wrought by Declaratory Judgment in Hatch-Waxman Cases. Speakers will also offer best practices in avoiding and mitigating future litigation risks.
The Alice decision held that patent claims directed to certain abstract ideas are invalid under 35 U.S.C. Sec. 101. This represents the fourth time in the past five years that the Supreme Court has tackled the question of whether a patent was directed to patent-eligible subject matter. The decision impacts the future of software patents, other business method patents, and patent troll (NPE) activity. This One-Hour Briefing will address what inside counsel need to know about the Supreme Court’s decision on patent eligibility including:
  • What factors of patent eligibility does the Alice ruling not address
  • Applying Alice from the perspective of the patent defendant