Biography

Brian is an experienced intellectual property attorney who provides strategic representation to both plaintiffs and defendants in patent disputes involving such diverse technologies as medical devices, dietary supplements, automotive components, consumer products, electromechanical devices, semiconductors, robotic devices, bicycles, vending machines, window coverings and product packaging.

Brian is a skilled litigator who also helps clients resolve trademark, state unfair competition and business tort (trade secret) claims. He has participated in all phases of litigation, from discovery and pretrial preparations through to trial and post-trial activities. He has served as trial counsel before federal trial and appellate courts throughout the United States, including district courts in New York, Virginia, Delaware, Texas, Illinois, Minnesota, Michigan, Pennsylvania, Florida, Massachusetts, Indiana, Tennessee and California. He also appeared before the Court of Appeals for the Federal Circuit for two cases that resulted in favorable reversals of lower court decisions and an immediate favorable settlement.

In addition to his trial practice, Brian also provides comprehensive counseling on intellectual property matters, advising clients on the development and management of international and domestic IP portfolios for patents, trademarks and trade secrets to help maximize the protection on the client’s research and development activities, commercial products and marketing strategies. He has participated in patent re-examinations and lectured before the American Society of Mechanical Engineers (ASME) on patent portfolio development.

Additionally, Brian advises on freedom-to-operate issues (including validity and noninfringement opinions), patent due diligence investigations and competitor patent portfolio analysis. On behalf of large multinational companies as well as venture capital funds, particularly in the medical device field, Brian often analyzes products and patent portfolios for clients interested in acquiring, merging with or obtaining an equity position in a company, including in startup companies.

Representative Matters

  • JDS Therapeutics and Nutrition 21 LLC v. Pfizer et al. – Represented JDS and Nutrition 21 in a patent infringement action on nutritional supplements; case settled.
  • JDS Therapeutics and Nutrition 21 LLC v. Church & Dwight – Represented JDS and Nutrition 21 in a patent infringement action on nutritional supplements; case settled.
  • JDS Therapeutics and Nutrition 21 LLC v. Schwabe North America and Nature’s Way – Represented JDS and Nutrition 21 in a patent infringement action on nutritional supplements; case settled.
  • Concepts in Health Inc. v. Contract Pharmacal Corp. – Represented Contract Pharmacal in a patent infringement action on dietary supplements; case settled.
  • Synthes (USA) v. Smith & Nephew, Inc. – Represented Synthes in patent infringement action on bone plates for fracture fixation.
  • Smith & Nephew, Inc. v. Synthes-Stratec, Inc. and Synthes (USA) – Represented Synthes in patent infringement action on intramedullary rods for treatment of femoral fractures, case bifurcated, bench trial on liability, case settled favorably following Federal Circuit hearing.
  • Smith & Nephew, Inc v. Synthes-Stratec, Inc. and Synthes (USA) – Represented Synthes in appeal of district court decision, case settled favorably following Federal Circuit hearing.
  • Litex Inc. v. Delphi Automotive Systems Inc. – Represented Litex in patent infringement action on nonthermal plasma reactor for exhaust treatment; case settled after presentation of Litex's case.
  • Teleflex Inc. v. KSR International Inc. – Represented KSR in patent infringement action in district court on electronically controlled, adjustable pedals; district court granted KSR motion for summary judgment of invalidity.
  • Automotive Technologies International v. BMW, et al. – Represented DENSO International in patent infringement action on side impact air bag sensor; client settled.
  • Niles Audio Corporation v. Components Specialty Inc. – Represented Components Specialty in trade dress action on outdoor speaker design; case settled with no payment.
  • BIC Corporation v. Golden Applexx, et al. – Represented BIC in a patent infringement action on lighters; defendants consented to injunction and payments.
  • Hunter Douglas Inc. v. Comfortex Inc. – Represented Hunter Douglas in a patent infringement action on window coverings; favorable jury verdict.
  • BIC Corporation v. First Prominence, et al. – Represented BIC in a patent infringement action on lighters; obtained $17 million default judgment.
  • Berol Corporation, et al. v. BIC Corporation. – Represented BIC in a patent infringement action on correction fluid applicators; case settled with cross-licenses.
  • Harmonic Design Inc. v. Hunter Douglas – Represented Hunter Douglas in a patent infringement action on motorized window coverings; reversed lower court decision in Federal Circuit and case settled.
  • Jack A. Ekchian v. Home Depot, et al. – Represented Jack Ekchian in a patent infringement action on electronic inclinometers; reversed lower court decision in Federal Circuit; obtained patent out of reexamination; case settled with multiple defendants.

Before Fox Rothschild

Prior to joining Fox Rothschild, Brian was a partner at Pennie & Edmonds LLP, a boutique law firm focusing on intellectual property law. He was also a partner at Jones Day where he headed up their Medical Devices practice group. Most recently, he was a partner at Stroock & Stroock & Lavan LLP, a New York-based commercial law firm, where he provided IP guidance and representation.

Honors & Awards

  • Included in a list of "Super Lawyers" by New York Super Lawyers (2013-2016)