Polaroid Corporation v. Eastman Kodak Company, D. Mass.
Polaroid Corp. v. Eastman Kodak Co.,
641 F. Supp. 828 (D. Mass. 1985), aff'd, 789 F.2d 1556 (Fed. Cir. 1986)
(liability); 16 U.S.P.Q.2d 1481 (D. Mass. 1990), modified, 17 U.S.P.Q.2d 1711
(D. Mass. 1991) (damages) – Bench trial of patent infringement case where I represented Polaroid. Seven Polaroid patents were found valid and
infringed after the 1981-1982 liability trial where, as a senior associate I examined witnesses, worked closely with lead counsel on strategic issues, and wrote many briefs. The injunction ultimately issued by the District Court was heavily publicized as demonstrating the consequences that can flow from patent infringement.
As a partner, I had a leading role
in the 1989 damages trial, focusing on marketing and economic issues, and examined and cross-examined many witnesses. The Court awarded Polaroid about 900 million
dollars. The case was settled for 925
million dollars. This remains the largest final damages award issued by a District Court for patent infringement.
The liability trial is the subject of a book published in 2015: A Triumph of Genius- Edwin Land, Polaroid and the Kodak Patent War by Ronald K. Fierstein
NBA v. Motorola & STATS, S.D.N.Y.
NBA v. Motorola & STATS (939 F. Supp.
1071 (SDNY 1996); rev’d in part, vacated in part and aff’d in part; 105 F.3d
841 (2 Cir. 1997)) –Trademark, copyright and unfair competition
action arising out of Motorola's sale of its SPORTSTRAX paging device. I took a leading role for Motorola at the bench trial in April of 1996. I handled the
bulk of the courtroom work and made the closing argument after trial. Motorola won on all but the unfair
competition claim in the District Court, and won on unfair competition in the
Second Circuit. I was actively involved in strategy and brief writing on the appeal.
These were landmark decisions about the rights to digital content on the internet. The Second Circuit ruled that federal preemption barred any misappropriation claim other than the narrow "hot-news" exception articulated in the 1918 decision of the Supreme Court in INS v. Associated Press.
Plasma Physics and Solar Physics patent enforcement program, E.D.N.Y.
I was lead trial and negotiation counsel for Plasma Physics and Solar Physics in a patent enforcement program spanning the years 1997- 2005, which included twenty litigations brought by research companies Plasma Physics and Solar Physics against the world's leading manufacturers of semiconductors and flat panel displays, two litigations brought by equipment manufacturers against my clients, and license negotiations with companies who chose not to litigate. I ultimately closed twenty license agreements for Plasma Physics and Solar Physics and settled all litigation.
In 2002, a commentator was quoted as saying that the settlements had "the potential to be one of the biggest in the semiconductor industry. "Backyard inventor yokes LCD giants, " EETimes, Monday June 10, 2002, www.eef.com.
Eastman Kodak Co. v. Ricoh Co. Ltd, S.D.N.Y. ; In re Eastman Kodak Co., S.D.N.Y. Bankruptcy Court — Lead trial counsel for Ricoh in defense of a breach of license agreement suit arising out of Ricoh's acquisition of Pentax Ltd., where Kodak's claim for back royalties exceeded $100 million. Lead patent counsel in related bankruptcy proceedings, including Ricoh's bankruptcy claim against Kodak for infringement of numerous Ricoh patents covering printer technology (2012-2013).