Profil
Scott J. Bornstein is Senior Vice President, Co-Managing Shareholder of Greenberg Traurig's New York office, Co-Chair of the firm's Global Intellectual Property & Technology Practice, Co-Chair of the firm's Global Patent Litigation Group, and serves on the firm's Executive Committee. Scott has deep patent trial experience and has served as lead counsel in more than 250 patent litigations. He has broad experience in patent, trademark and copyright litigation, licensing and general IP counseling for a wide variety of national and international clients. Scott also has wide-ranging experience working with clients to develop comprehensive prosecution and enforcement strategies which support their business objectives.
Scott's clients are involved in a variety of technologies and industry sectors, including aerospace, automotive, avionics, biologics, business methods, chemical, consumer products, eCommerce, electronics, energy and filtration, financial services, food and beverage, Hatch-Waxman, materials science, medical devices, metallurgy, pharmaceutical, plastics, software and telecommunications industries. He also advises clients on various AI, blockchain, fraud detection, and AR issues in the context of litigation and portfolio management in industries such as financial services, gaming, fraud detection, manufacturing and others. Scott has also served as Chair of the IP Section of the American Association of Pharmaceutical Scientists.
Scott serves as a guest lecturer at New York University Stern School of Business. He also serves as an advisor to Endless Frontier Labs at New York University’s Stern School of Business, a program for early-stage science and technology based startups and previously served as an advisor to Creative Destruction Laboratories, a competitive seed-stage program focused on maximizing the probability of success of massively-scalable science and technology startups.
Inspired by his father, one of the youngest survivors of Auschwitz, Scott also dedicates a great deal of pro bono time to matters combatting antisemitism including leading pending litigation on behalf of Israeli and American victims of the terrorist attacks on October 7 against American Muslims for Palestine and National Students for Justice in Palestine for providing material support to Hamas, defending the site StopAntisemitism.org in a defamation lawsuit initiated by a University of Michigan student caught spray painting hateful graffiti on the Jewish Resource Center, as well as assisting college students who have been subjected to antisemitism by other students and faculty.
Concentrations
- Patent litigation
- ANDA Hatch-Waxman litigation
- Inter partes review (IPR) and CBM reviews
- International Trade Commission Section 337 litigation
- General IP counseling, licensing, due diligence and opinions
- Trademark, trade dress, trade secret and copyright litigation
- Defamation
Kompetencje
Doświadczenie
- Takeda Pharmaceuticals America, Inc. et al. v. Teva Pharmaceuticals, Inc. et al.: Representing Teva in a Hatch-Waxman case in the District of New Jersey against Takeda Pharmaceuticals involving the drug product ponatinib hydrochloride, which Takeda sells under the brand name Iclusig® for treating certain types of leukemia.
- Neurocrine Biosciences, Inc. v. Teva Pharmaceuticals USA, Inc.: Representing Teva in a Hatch-Waxman case in the District of Delaware involving Teva’s Paragraph IV challenges to Neurocrine’s patents relating to the drug product Ingrezza®.
- Vifor Fresenius Medical Care Renal Pharma Ltd., et al. v. Teva Pharmaceuticals USA, Inc., et al.: Trial counsel for Teva in the District of Delaware involving the VELPHORO® (sucroferric oxy-hydroxide) for treating hyperphosphatemia. The case was resolved after trial.
- Almirall, LLC v. Amneal Pharmaceuticals LLC: Representing Amneal in its Paragraph IV challenge to Almirall’s patents in the District of Delaware relating to a generic version of Aczone® Gel, 7.5%.
- Fresenius Kabi USA, LLC v. B. Braun Medical Inc.: Representation of B. Braun in connection with litigation involving 505(b)(2) application for propofol product.
- Meda Pharmaceuticals Inc., et al v. Teva Pharmaceuticals USA, Inc.: Representation of Teva in connection with Hatch-Waxman litigation involving nasal spray DYMISTA in the District of Delaware.
- Orexigen Therapeutics, Inc. v. Actavis. Represented Actavis/Teva in the trial and Federal Circuit appeal of a Paragraph IV ANDA challenge of Orexigen Therapeutics' patents in the District of Delaware relating to Contrave® (naltrexone HCl/bupropion HCl) extended-release tablets indicated for the treatment of obesity and weight management. The case resulted in a finding of invalidity of two of the Orange Book patents.
- Pernix Ireland Pain Ltd and Pernix Therapeutics, LLC v. Actavis Laboratories: Representing Actavis/Teva in Paragraph IV challenges of Pernix Ireland Pain Ltd.'s patents in the District of Delaware relating to Zohydro® extended release tablets indicated for the management of severe pain requiring daily, around the clock, long term treatment.
- LEO Pharma A/S et al v. Actavis Laboratories UT, Inc.: Representing Actavis/Teva in Paragraph IV challenge of Leo Pharma A/S's patents in the District of Delaware relating to Picato® gel used to treat actinic keratosis on the skin.
- Mallinckrodt LLC, et al. v. Watson Laboratories, Inc.: Representing Actavis/Teva in Paragraph IV challenge of Mallinckrodt LLC's patents in the District of New Jersey relating to Xartemis® extended-release tablets for the treatment of acute pain requiring opioid treatment and for which alternative treatment options are inadequate.
- Aralez Pharmaceuticals Inc. et al. v. Teva Pharmaceuticals USA, Inc., et al.: Representing Teva in Paragraph IV challenge of Aralez Pharmaceutical Inc.'s patents in the Eastern District of Texas relating to Yosprala®, which is indicated for patients requiring aspirin for secondary prevention of cardiovascular and cerebrovascular events and who are at risk of developing aspirin-associated gastric ulcers.
- Shire Development, LLC, et al. v. Watson Pharmaceuticals et al.: Representing Actavis/Teva in Paragraph IV challenge of Shire Development's patent in the Federal Circuit relating to Lialda®, indicated for induction and maintenance of remission in patients with active, mild to moderate ulcerative colitis.
- Recro Gainesville LLC v. Actavis Laboratories FL Inc.: Representing Actavis/Teva in Paragraph IV challenge of Recro Gainesville LLC in the Federal Circuit relating to Pernix's patents on Zohydro® extended release tablets indicated for the management of severe pain requiring daily, around the clock, long term treatment.
- Glaxo, Inc. v. Novopharm Ltd.: Participated in an effort to enforce the single most valuable patent franchise of the 1990's for a large pharmaceutical company against more than a dozen generic companies seeking ANDA approval.°
- Hanmi Pharmaceutical Co., Ltd.: Represented Hanmi Pharmaceutical in connection with an NDA filing under 505(b)(2) for S-omeprazole and related patent due diligence.
- Pinkerton Tobacco Co., LP, et al. v. The Art Factory AB, et al.: Represented Kretek International, Dryft Sciences, The Art Factory, and TillCe in a patent litigation in the Central District of California filed by Swedish Match and its subsidiaries relating to nicotine pouch products. Judge Stanley Blumenfeld entered final judgment of non-infringement in favor of Kretek and Dryft Sciences after previously granting a motion to dismiss The Art Factory and TillCe for lack of jurisdiction.
- Pinkerton Tobacco Co., LP, et al. v. Kretek International Inc., et al.: Represented Kretek and Dryft Sciences in a trade secret litigation filed by Swedish Match and its subsidiaries relating to nicotine pouch products. After successfully moving to have the case transferred from the Western District of Kentucky to the Central District of California, the case settled on favorable terms before trial.
- Certain Nicotine Pouches and Components Thereof and Methods of Making the Same; Inv. 337-TA-1192: Represented Kretek International, Dryft Sciences, and The Art Factory in a suit brought at the International Trade Commission by complainant Swedish Match and its subsidiaries relating to nicotine pouch products. The suit was resolved via voluntary dismissal.
- Alcoa Inc./ Arconic: Serving as global IP counsel since 2006 for Alcoa Inc., the world's largest aluminum company. In that capacity, responsible for oversight of prosecution, licensing, due diligence and general IP counseling.
- KKG, LLC v. Reynolds Consumer Products Inc., et al.:Lead counsel for Reynolds Consumer Products Inc., a Fortune 50 retailer, in a patent litigation in the Eastern District of Texas brought by a patent holding company in connection with Reynolds Slow Cooker Liner products. After a three-day trial, the jury returned a verdict of non-infringement in approximately one hour.
- Symbology Innovations, LLC v. General Mills, Inc.: Represented General Mills in the Eastern District Texas before the Honorable Judge Schroeder. The patents involved the use of QR codes to directly access product information on the Internet. Settled with plaintiff on terms very favorable to client.
- Reflection Code LLC v. General Mills, Inc.: Represented General Mills in the Eastern District Texas before the Honorable Judge Gilstrap. The patents involved the use of QR codes to access a database that redirects a user to product information on the Internet. The case settled on favorable terms.
- Alcoa Inc. v. Alcan Inc., et al.: In a cooperative effort with Cravath, Swaine & Moore, LLP, successfully asserted patent on behalf of Alcoa Inc. against Alcan relating to aluminum alloy used to construct the Boeing 777.
- Bennett v. Alcoa Inc., et al.: Appointed lead counsel for defendants Alcoa Closure Systems International and Erie Plastics in a multi-defendant case filed by a patent holding company in the Eastern District of Texas before the Honorable Judge Ward. The asserted patents related to closure systems for beverage containers.
- Leslie Zemeckis v. Sterling & Ross Publishers Inc.: Represented Sterling & Ross Publishers in connection with arbitration against Leslie Zemeckis relating to breach of contract and alleged copyright infringement. The case settled favorably after a lengthy arbitration hearing.
- Metaldyne Company v. Alcoa Inc.: Lead counsel for Casting Technologies Company, a subsidiary of Alcoa Inc., in connection with a trade secret litigation in the Eastern District of Michigan involving cast aluminum components for the automotive industry. Obtained settlement for client on eve of trial after summary judgment arguments.
- Minkus Electronic Display Systems Inc. v. Adaptive Micro Systems LLC, et al.: Represented six defendants in a patent litigation initiated by Minkus Electronic Display Systems Inc. in the District of Delaware before Chief Judge Robinson. The complaint alleged infringement of a patent generally relating to digital display technology.
- Poly-America L.P., et al. v. Presto Products Company: Retained by Presto Products to serve as lead counsel in a patent litigation in the Eastern District of Texas. The patent in dispute related to methods of manufacturing "wave cut" plastic bags.
- Reynolds Consumer Products v. LPS Industries, Inc.: Appointed lead counsel for Reynolds Packaging Company in a "rocket docket" litigation in the Eastern District of Virginia in a case involving infringement by PackMate of patents and trademarks relating to the Handi-Vac vacuum sealing system for recloseable plastic bags.
- Selecto, Inc. v. Everpure, LLC and Pentair Filtration, Inc.: Lead counsel for Pentair Corporation in connection with a patent litigation in the Central District of California involving infringement by Selecto of a patent relating to modular water filtration devices. The case settled on favorable terms immediately after we obtained a favorable Markman ruling.
- Taranis IP LLC v. Garmin International, Inc., et al.: Lead counsel for Garmin International in a patent litigation initiated by Taranis IP in the Northern District of Illinois. The asserted patent generally relates to synthetic vision systems for vehicles.
- Tru-Balance, LLC v. Alcoa Inc.: Lead counsel for Alcoa Inc. in a patent litigation initiated by Tru-Balance in the District of Colorado. The asserted patent related to a wheel centering pin device. Recently prevailed on a motion to stay the case pending a reexamination initiated by GT and all claims of the patent were found invalid by the PTO.
- Island Intellectual Property LLC v. TD Ameritrade, Inc., et al.: Lead counsel for The Charles Schwab Corporation, TD Ameritrade, Inc., TD Ameritrade Clearing, Inc., TD Ameritrade Trust Company, and TD Ameritrade Holding Corp (Schwab) in a patent litigation in the Eastern District of Texas. Island Intellectual Property LLC filed the lawsuit against Schwab, alleging that Schwab infringed five patents generally relating to aggregated deposit accounts. On the eve of trial, the Court granted Schwab’s motion for summary judgment, invalidating all asserted Island patent claims.
- Every Penny Counts v. Valutec Card Solutions, LLC, et al.: Lead trial counsel for Valutec, a subsidiary of Metavante, in a litigation brought by a patent holding company in the Middle District of Florida for alleged infringement by Valutec's gift cards. Obtained a final judgment in favor of Valutec for non-infringement at the Markman hearing. Affirmed on appeal with costs awarded to Valutec.
- CryptoPeak Solutions, LLC v. 3M Company; CryptoPeak Solutions, LLC v. Charles Schwab & Co, Inc.; CryptoPeak Solutions, LLC v. optionsXpress, Inc.: Lead counsel for 3M Company, Charles Schwab and optionsXpress in connection with a patent suit initiated by CryptoPeak Solutions, LLC in the Eastern District of Texas before Judge Schroeder. The asserted patent generally relates to securely generating public and private encryption keys in a verifiable manner.
- Ruby Sands LLC v. Charles Schwab Corp.; Ruby Sands LLC v. Fidelity Investments: Lead counsel for Charles Schwab and Fidelity in litigations in the EDTX before Judge Gilstrap. The asserted patent related to the capture and transfer of images from one image transfer device to another. Settled with plaintiff on terms very favorable to clients.
- Joao Bock Transaction Systems, LLC v. Bank of Stockton, et al.: Lead counsel for Farmers and Merchants Bank in a patent litigation initiated by Joao Bock in the Central District of California. The asserted patent relates generally to apparatus and method for providing account security.
- Joao Bock Transaction Systems, LLC v. Scottrade, Inc.: Lead counsel for Scottrade, Inc. in connection with the defense of a patent litigation initiated by Joao Bock in the Northern District of Georgia. The asserted patents generally relate to on-line secure transactions. Moved to transfer the case from Georgia to the Eastern District of Missouri.
- LBS Innovations LLC v. American Express, et al.: Lead counsel for American Express in a multi-defendant litigation initiated by LBS Innovations in the Eastern District of Texas. The patent related generally to a wireless system for providing services to mobile computers.
- Leon Stambler v. Amazon.com, Inc., et al.: Appointed lead counsel for defendant Office Depot in a multi-defendant case filed by Leon Stambler in the Eastern District of Texas before the Honorable Judge Folsom. The asserted patents relate to secure online payment services.
- Leon Stambler v. Intuit Inc., et al.: Lead counsel for S1 Corporation and International Bancshares in a patent litigation in the Eastern District of Texas. The patents-in-suit generally relate to encryption technology for securing online technologies.
- Leon Stambler v. Merrill Lynch & Co., et al.: Lead counsel for Metavante Corporation, a division of Fidelity Information Services, in connection with alleged infringement of patents relating to secure online payment services. The case was initiated by patent holding company in the Eastern District of Texas before the Honorable Judge Folsom.
- Mesa Verde Strategies, LLC v. E*TRADE Financial Corporation, et al.: Lead counsel for Fidelity (FMR, LLC), optionsXpress, Inc. and Peregrine Financial Group in relation to allegations of infringement by a patent holding company in the Central District of California.
- NextCard, LLC, v. American Express Company, et al.: Lead counsel for American Express in multi-defendant patent litigation in the Eastern District of Texas before Judge Ward. NextCard asserted 4 patents generally relating to systems and methods for instant approval of credit card applications on-line. GT secured a favorable settlement early in the discovery period.
- Trading Technologies International, Inc. v. optionsXpress Holdings, Inc.: Appointed lead counsel for optionsXpress, a subsidiary of Charles Schwab & Co., in a patent litigation initiated by Trading Technologies in the Northern District of Illinois. The 12 asserted patents generally relate to electronic trading of commodities and securities. GT prevailed on its motion for summary judgment resulting in invalidity, unenforceability or non-infringement of 8 of the patents-in-suit.
- Vetnos LLC v. SidePrize LLC d/b/a PrizePicks: Lead counsel for Vetnos LLC, a B2B sports-tech company and pioneer in the gamification of athlete-based content in the US market, in patent and trade secret litigation filed against PrizePicks, one of the largest daily fantasy sports providers in the market, in the United States District Court for the Northern District of Georgia. The complaint alleges that PrizePicks is infringing Vetnos’ patents and misappropriating Vetnos’ valuable trade secrets. The three patents at issue relate to systems for presenting fixed-odds, skill-based games. On July 9, 2024, Judge William M. Ray, II adopted an earlier Report and Recommendation by the Special Master denying PrizePicks’ motion to dismiss the case Vetnos has brought against the company. The decision affirms the validity of the patents asserted by Vetnos and confirms that Vetnos’ complaint stated a claim for misappropriation of trade secrets against PrizePicks.
- Certain Filament Light-Emitting Diodes and Products Containing Same (II); Inv. No. 337-TA-1220: Lead counsel in the defense of Satco in parallel lawsuits brought at the International Trade Commission and in the Eastern District of New York by complainant, the Regents of the University of California at Santa Barbara, over four patents relating to LED technology. After a five-day trial, in February 2022, the ITC issued its Final Determination finding all of the asserted claims invalid and not infringed. Separately, we succeeded in invalidating all claims from four UCSB patents in related IPR proceedings. All rulings were affirmed by the Federal Circuit.
- Satco Products, Inc. v. The Regents of the University of California: Lead counsel for petitioner Satco in four inter partes review proceedings before the PTAB against The Regents of the University of California at Santa Barbara (“UCSB”) relating to LEDs. Successfully invalidated all claims of two patents which had been asserted by UCSB. The Federal Circuit affirmed the Patent Trademark Appeal Board’s decisions finding the challenged claims of four patents owned by the Regents of the University of California (“Regents”) unpatentable.
- Satco Products, Inc. v. The Regents of the University of California: Lead counsel for petitioner Satco in four inter partes review proceedings before the PTAB against The Regents of the University of California at Santa Barbara (“UCSB”) relating to LEDs. Successfully invalidated all claims of two patents which had been asserted by UCSB. Currently awaiting final determinations on two additional petitions for inter partes review.
- Satco Products, Inc. v. Signify North America Corporation, et al.: Lead counsel for Satco in a patent infringement action filed against Signify North America Corp. and Signify Holding B.V. in the United States District Court for the Western District of Texas, alleging infringement of three patents directed to light bulbs containing LED filament and Gimbal LED recessed lights. Judge Albright has granted Satco’s motion to dismiss seven counterclaims filed by Signify.
- Satco Products, Inc. v. Seoul: Lead counsel for petitioner Satco in inter partes review proceedings before the PTAB against Seoul Viosys Co. Ltd. and Seoul Semiconductor Co. Ltd. Successfully invalidated all challenged claims in U.S. Patent No. 9,343,631, all challenged claims in U.S. Patent No. 10,134,967, and one challenged claim in U.S. Patent No. 8,860,331.
- Satco Products, Inc. v. Seoul Semiconductor Co., Ltd., et al.: Lead counsel for Satco in a patent infringement action filed against Seoul Semiconductor Inc. and Seoul Semiconductor Co., Ltd. in the United States District Court for the Northern District of Georgia. Satco asserts that Seoul infringes three patents owned by Satco relating to LED technology.
- CyberSource Corporation v. Retail Decisions, Inc.: As substitute lead counsel, promptly prevailed on motion for summary judgment of invalidity of all asserted claims by CyberSource Corp. against Retail Decisions, Inc. based on the "machine or transformation" test in In re Bilski. The case was pending in the Northern District of California before Chief Judge Patel. After CyberSource appealed the district court's decision, the Federal Circuit affirmed and held that the claims failed the “machine-or-transformation” test and claimed an unpatentable mental process.
- Furnace Brook LLC v. Aéropostale, Inc., et al.: Lead counsel for Levi Strauss & Co., Dick's Sporting Goods, Inc., and Aéropostale, Inc. in a patent litigation initiated by Furnace Brook, a patent troll, in the Northern District of Illinois. The accused systems are e-commerce websites which permit online sales and marketing. On September 29, 2010, Honorable Judge Virginia M. Kendall of Northern District of Illinois granted defendants' motion for summary judgment of collateral estoppel, resulting in dismissal of the case. The decision was affirmed on appeal.
- Glory Licensing LLC v. Toys "R" Us, Inc.; Glory Licensing LLC v. Sears Holding Corporation: Lead counsel for Sears Holding Corporation and Toys "R" Us, Inc. in connection with separate actions initiated by Glory Licensing in the District of New Jersey. The patents in suit relate to collecting and extracting data from hard copy documents. Successfully invalidated all asserted claims under §101 on our motion to dismiss.
- Harper Engineering Company v. FACC AG: Representing FACC in a patent and trade secret litigation in the Southern District of Alabama, concerning overhead stowage bins FACC Operations GmbH designed for use in certain Airbus aircraft.
- Alcoa Global Fasteners, Inc. v. West Coast Aerospace, Inc: Represented Alcoa Fastening Systems, Inc in asserting patents relating to aerospace fasteners against West Coast Aerospace in the Central District of California before Judge Percy Anderson. The case ended in a voluntary dismissal.
- Honeywell v. Universal Avionics: Lead counsel for large avionics company against five patents asserted by Honeywell relating to terrain awareness warning systems in the District of Delaware. Prevailed on summary judgment of invalidity and non-infringement against over 100 asserted claims. Presented oral argument on appeal before the Federal Circuit.
- Universal Avionics Systems Corporation v. Optima Technology Group, Inc., et al.: Represented Universal Avionics in a declaratory judgment action in the District of Arizona against Optima, a patent holding company, seeking a ruling that several patents generally relating to synthetic vision systems for aircraft were invalid and not infringed. The case settled on favorable terms.
- Represented Rockwell Collins in connection with infringement investigation relating to synthetic vision systems.
- Represented Arconic, a global leader in aluminum manufacturing, with applications in the automotive and aerospace industries, in a trade secret dispute involving data and unauthorized computer access with legal implications in both China and the United States.
- Network Signatures, Inc. v. General Mills, Inc.: Lead counsel for General Mills in a patent litigation in the Central District of California. The patent related generally to a method of using public and private keys to generate a cryptographic signature which can be used to authenticate information. Succeeded in rendering all asserted claims unenforceable due to inequitable conduct.
- Ambato Media, LLC v. Garmin International, Inc., et al.: Lead counsel for defendant Garmin International, Inc. in a multi-defendant case filed by Ambato Media in the Eastern District of Texas before the Honorable Judge Rodney Gilstrap. The asserted patent related to navigation devices. After prevailing at the Markman hearing, Ambato was forced to drop its allegation of infringement against over 95% of the accused products.
- Akamai Technologies, Inc. v. Limelight Networks, Inc.: Representation of Limelight Networks in connection with 11 IPRs against Akamai Technologies relating to content delivery network patents.
- Digital Audio Encoding Systems, LLC v. LG Electronics, Inc., et al.: Representing LG in a patent infringement action in the District of Delaware concerning a patent relating to the encoding of signals based on a property of receiving device.
- Aloft Media, LLC v. Compuware Corp., et al.: Lead counsel for optionsXpress, Inc. against Aloft in a patent case in the Eastern District of Texas. The asserted patents relate to online decision-making technology.
- Acted as lead counsel for consumer electronics developer in a patent litigation originally filed in the Southern District of New York in connection with allegations of infringement relating to digital streaming technology. Based on our motion to transfer, the case is presently pending in the Northern District of California.
- GeoTag Inc. v. Gucci America Inc., et al.: Appointed lead counsel for defendant Skechers USA, Inc. in a multi-defendant case filed by Geotag, Inc. in the Eastern District of Texas. The asserted patent generally relates to geographically organizing information from the Internet.
- IpLearn, LLC v. Blackboard Inc.: Appointed lead counsel for defendant Blackboard Inc. in a case filed by IpLearn, LLC in the District of Delaware. The 11 asserted patents relate generally to computer-aided group-learning methods and systems.
- T-REX PROPERTY AB v. JCDecaux North America, Inc., et al.: Representing JCDecaux in a patent infringement action in the Eastern District of Texas initiated by Swedish entity T-Rex. The asserted patents relate to systems and methods for displaying information on electronic display screens and T-Rex has accused JCDecaux’s digital billboards and signage of infringing these patents.
- NetJumper Software, LLC v. Google, Inc.: Appointed lead counsel for Google in a patent litigation initiated by NetJumper in the Eastern District of Michigan. The patent relates to web browser plug-in software for navigating search engine query results.
- Secure Axcess, LLC v. Bank of America Corp., et al.: Lead counsel for North Dallas Bank & Trust in a patent litigation initiated by Secure Axcess in the Eastern District of Texas. The asserted patent relates to a system and method for authenticating a web page.
- Ogma, LLC v. 3M Company, et al.: Lead counsel for 3M Company in connection with a patent suit initiated by Ogma, LLC in the Eastern District of Texas relating to a patent generally relating to television display formatting technology.
- SBJ IP Holdings 1, LLC v. Blockbuster Inc., et al.: Lead counsel for Toys "R" Us, Inc. in a patent litigation initiated by SBJ IP Holdings 1, LLC in the Eastern District of Texas before Judge Ward. The asserted patent relates to generating and displaying pre-customized web pages.
- Representation of Complainant Bracco Diagnostics in an ITC trial relating to the importation of strontium-rubidium radioisotope infusion systems. The Commission adopted the ALJ’s summary determination that Respondent’s accused product directly infringed the asserted patents.
- CareFusion 303 Inc. v. B Braun Medical Inc.: Lead trial counsel for B Braun Medical Inc. in connection with the defense of a claim for patent infringement by CareFusion 303. The asserted patents generally relate to medical valve devices. After prevailing on multiple discovery motions, we obtained substantial monetary sanctions against the plaintiff for discovery misconduct. In a very rare ruling, the court also granted B. Braun’s motion for summary judgment on its defense of laches, reducing the potential damages at trial by approximately 90-95 percent. And, at trial the Court granted B. Braun's motion to dismiss the case with prejudice as an evidentiary sanction against plaintiff and revoked the pro hac vice applications of counsel for plaintiff for a period of three years.
- Braun Melsungen AG, et al. v. Becton, Dickinson and Company, et al.: Representation of B. Braun Medical in a litigation involving infringement by Becton, Dickinson and Company of 10 U.S. patents relating to IV catheter safety mechanisms. B. Braun sought an injunction and damages for Becton Dickinson's infringement through its manufacture and distribution of the BD Insyte™ Autoguard™ BC IV Catheter and the BD Nexiva™ Closed IV Catheter System. The case settled for B. Braun following extensive fact and expert discovery.
- EVM Systems, LLC v. Rex Medical, L.P., et al.: Trial counsel for Rex Medical, L.P. and Argon Medical Inc. in patent litigation initiated by a non-practicing entity called EVM Systems, a subsidiary of Acacia. The case was tried in the Eastern District of Texas, Tyler Division before the Honorable Judge Robert W. Schroeder, III. After a five-day trial, the jury returned its non-infringement verdict in just under two hours.
- Rydex Technologies LLC v. B. Braun Medical Inc., et al.: Represented B. Braun Medical Inc. in multi-defendant patent lawsuit in the District of Delaware concerning U.S. Patent Re. No. 5,913,180 C1 and electronic intravenous medical pump controls.
- Barry v. Medtronic Inc.– Lead trial counsel for Medtronic in a jury trial involving surgical methods and systems for correcting severe spinal deformities in the EDTX.
- Augustine Medical, et al. v. LMA International, et al.: As counsel, arranged for the prompt dismissal of a declaratory judgment action which challenged the validity and enforceability of a patent directed to anesthesia delivery devices.°
- Delcath Systems, Inc.: Retained by a publicly traded medical device company to provide general IP advice. The technology involves the use of balloon catheters to isolate specific organs for the purpose of supplying concentrated doses chemotherapy agents.
- Enzo Biochem. Inc., et al. v. Affymetrix, Inc.: Lead counsel for Enzo Biochem in connection with eight patent litigations relating to methods and devices for labeling, hybridization and detection of nucleic acids.
- OrSense Ltd.: Representation of Israeli medical device manufacturer in connection with IP due diligence relating to device for non-invasive monitoring of blood constituents.
- Ortho Pharmaceutical Corp. v. Miles Laboratories, Inc.: On behalf of major pharmaceutical company, prosecuted flow cytometer (blood analyzer) technology against large medical device manufacturer through trial.°
- Pfizer Inc. v. Perrigo Co.: Participated in a patent trial on behalf of a major pharmaceutical company in the Southern District of New York. Before a nine member jury, asserted the patent for a well-known consumer product against the world's largest supplier of private label, generic goods.°
- Princeton Biochemicals, Inc. v. Beckman Coulter, Inc.: Lead trial counsel in a ten-day jury trial, in which a patent relating to capillary electrophoresis technology was asserted against a multi-national instrument supplier.°
- W. Zohmann v. B. Braun Melsungen AG & B. Braun Medical Inc.: After a five-day jury trial, defeated a multimillion-dollar claim for infringement of two patents directed to pencil point spinal needles on behalf of B. Braun.°
°The above representations were handled by Mr. Bornstein prior to his joining Greenberg Traurig, LLP.
- Hanesbrands Inc., et al. v. Keds LLC, et al. Lead counsel for Keds in a trademark lawsuit initiated by Hanesbrands in the District of Massachusetts over foreign uses of “Champion,” one of the most recognized – and valuable – brands in sportswear. The case was dismissed after the parties reached a settlement.
- Clancy v. Webb, et al. Lead counsel for Jack Ryan Enterprises Limited and Jack Ryan Limited Partnership, two companies formed by renowned novelist Tom Clancy and his first wife, Wanda King, to develop and commercialize Mr. Clancy’s novels, in a copyright ownership case relating to rights to Mr. Clancy’s famous books and characters. In February 2021, Judge Ellen Hollander of the U.S. District Court for the District of Maryland issued an opinion partially resolving claims to copyright ownership in books and fictional characters created by Mr. Clancy, including Patriot Games, Clear and Present Danger, and The Sum of All Fears. The Court ruled that Jack Ryan Enterprises Limited and Jack Ryan Limited Partnership owned the copyrights in some of Mr. Clancy’s most well-known novels, as well as the rights to the characters as developed in those novels.
- Certified, Inclusive Leadership: Addressing Unconscious Bias to Build Stronger, Diverse Teams, Leonard N. Stern School of Business, New York University, 2020
Sukcesy i wyróżnienia
- Listed, Patexia, ANDA Litigation Intelligence Top 100, 2024
- Listed, Chambers USA Guide, Intellectual Property: Patent, 2022-2024
- Listed, The Best Lawyers in America, 2022-2025
- Litigation - Intellectual Property, 2022-2025
- Litigation - Patent, 2023-2025
- Biotechnology and Life Sciences Practice, 2023-2025
- Listed, The Legal 500 United States, Intellectual Property> Patents: Litigation (International Trade Commission), Mentioned - "Firms to Watch," 2023
- Listed, The Legal 500 United States
- Intellectual Property > Patents: Litigation (Full Coverage), "Recommended Lawyer," 2022-2024
- Intellectual Property> Patents: Litigation (International Trade Commission), "Recommended Lawyer," 2024
- Listed, Benchmark Litigation, 2018-2025
- "National Practice Area Star (Intellectual Property)," 2020, 2022-2025
- "Local Litigation Star," 2020-2025
- "National Litigation Star," 2018-2019
- Listed, Managing IP Magazine's World IP Handbook and Survey, "IP Stars: Patent Stars," 2013-2024
- Ranked by Patexia amongst the Top 100 Best Performing and Most Active ANDA Attorneys (Representing Defendants), 2022
- Ranked by Patexia amongst the Top 100 Most Active CAFC Attorneys (Representing Appellants), 2022
- Team Member, a Law360 “Product Liability Practice Group of the Year,” 2021-2022
- Listed, Thomson Reuters, "Stand-Out Lawyers," 2022-2024
- Listed, Acritas Stars™ Independently Rated Lawyers, “Star Lawyers,” 2020-2021
- Listed, Who's Who Legal
- "IP," 2024
- "Patents," 2020
- Honoree, The National Law Journal, "Trailblazer" Award, Intellectual Property, 2018
- Listed, IAM Magazine, 2011-2024
- Listed, "IAM Patent 1000," Litigation, 2012-2015 and 2017-2024
- Listed, "IAM Patent Litigation 250: The World's Leading Patent Litigators," 2011
- Listed, LMG Life Sciences, 2012-2025
- Shortlisted, "Hatch-Waxman Litigator of the Year – Generic," 2024
- "Life Science Star," 2012-2023
- Listed, Super Lawyers magazine, New York Metro Super Lawyers, 2010-2024
- Team Member, a U.S. News - Best Lawyers "Law Firm of the Year" in Trademark Law, 2020, 2022
- Shortlisted, Managing IP magazine, "Outstanding IP Litigator – New York," 2013
- Board Member, Julia’s Grace Foundation
- Co-Chair, American Association of Pharmaceutical Scientists, IP Committee
- Chair, IP Section-Women's Bar Association for the State of New York
- Advisor, Endless Frontier Labs, New York University Stern School of Business, 2019-Present
- Advisor, ‘Creative Destruction Lab – New York City,’ 2018-Present
- Fellow, American Bar Foundation
- Member, American Bar Association
- Member, New York Intellectual Property Law Association
- Member, American Intellectual Property Law Association
Kwalifikacje
- J.D., Temple University Beasley School of Law
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B.S., Biology, Indiana University Bloomington
- Concentrations of study in genetics and chemistry
- New York
- U.S. District Court for the Eastern District of New York
- U.S. District Court for the Southern District of New York
- U.S. District Court for the Western District of New York
- U.S. District Court for the Eastern District of Texas
- U.S. Court of Appeals for the Federal Circuit
- U.S. District Court for the District of Colorado