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Publications
| Selected Speaking Engagements
| Representative Matters
Professional Activities
| Civic Activities | Bar
Admissions | Education
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"Patent
Issues Facing Universities," Academic Patents
Emerging Issues and Challenges, published by
Institute of Chartered Financial Analysts of India
Books
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Co-author, "Academics Must Protect Their Patent
Rights," The Chronicle of Higher Education,
May 27, 2005
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Co-author, "Patent Issues Facing Universities,"
Research Management Review, Fall/Winter 2006
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"Intellectual
Property Agreements:
Are You Managing Your Rights?", The Chronicle
of Higher Education, November 1, 2009; A. Huq,
D. Goldberg, T. Meagher
Selected
Speaking Engagements
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Moderator, "Sponsored & Collaborative
Research: IP in Life Science Deals Between Universities/Research
Institutions and Industry," Licensing Executives Society 2013 Annual Meeting
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Moderator, "Sponsored & Collaborative
Research: IP Demands in Deals Between Universities/Research
Institutes and Industry," Licensing Executives Society 2011 Annual Meeting
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Moderator
and Speaker, "Contingency Patent Litigation for
Universities," Association of University Technology
Managers 2011 Eastern Region Meeting
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Panelist,
2010 New Jersey Technology Council Regional Commercialization
Conference, Princeton University
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Moderator,
"Sponsored & Collaborative Research: IP Demands
in Deals Between Universities/Research Institutes
and Industry," Licensing Executives Society 2010
Annual Meeting
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Speaker,
"Contingency Patent Litigation for Universities,"
2010 Annual Meeting of the Association of University
Technology Managers
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Moderator,
"Sponsored & Collaborative Research: IP Demands
in Deals Between Universities/Research Institutes
and Industry," Licensing Executives Society 2008
Annual Meeting
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Moderator,
"Overview of Recent Patent Case Law" and "Indefiniteness
Before and After Datamize," 2008 Annual Meeting
of the Intellectual Property Owners Association
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Moderator
and Speaker, "Technology Commercialization From
The University Perspective: How Is It Working?,"
2008 Intellectual Property in the Americas: Free
Trade Agreements, Current Issues, and the Future
of IP conference in Mexico City co-sponsored by
the Intellectual Property Owners Association (IPO),
the Asociación Interamericana de la Propiedad Intelectual
(ASIPI), and the Association Internationale pour
la Protection de la Propriété Intellectuelle (AIPPI).
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Speaker,
"Patent Licensing Agreements," 2008 Annual Meeting
of the Association of University Technology Managers
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Moderator
and Speaker, "Negotiating Agreements with Academic
Institutions," 2007 American Conference Institute
Conference on Pharma/Biotech Collaborations
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Moderator
and Speaker, "Sponsored Research: IP Demands in
Deals between Research Institutions and Industry,"
2007 Annual Meeting of the Licensing Executives
Society (U.S.A. and Canada)
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Moderator
and Speaker, "Key Terms of the Relationship: Mastering
Deal Makers and Breakers for Industry and Research
Institutions," 2007 American Conference Institute
Conference on Pharma and Biotech Industry-Academia
Tech Transfer
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Moderator
and Speaker, "Patent Issues Facing Universities,"
Licensing Executives Society (U.S.A. and Canada)
2006 Winter Meeting
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Moderator
and Speaker, "Sponsored Research: IP Demands in
Deals between Universities and Industry," 2006 Joint
Meeting of the Association of University Technology
Managers and the Licensing Executives Society (U.S.A.
and Canada)
Representative Matters
Patent Litigation
ABB Air Preheater v. Regenerative Environmental Equip.
Co. - Regenerative thermal oxidizers; ran case with
partner, took and defended all important depositions;
handled all oral argument on discovery motions; argued
successful summary judgment motion of infringement
Agilent Technologies v. E20 Communications -
Optical fiber connectors; ran case for Agilent Technologies
with fellow partners
Robert Bosch Corp. v. Lewis - Anti-theft system
for automobile stereos; took key depositions and defended
expert depositions
Boston Scientific Corporation v. JW, Cordis, and
Guidant - Drug coated coronary stents; ran case
with fellow partner (subsequently a jury found client's
patents valid and infringed)
Chips & Technologies v.
Opti Computer - Memory controllers for personal computers;
took and defended key depositions
Compaq v. Packard Bell and Intel - Personal computers;
took key depositions
Comsonics v. Hewlett-Packard - Cable television
signal meters; ran case for Hewlett-Packard with fellow
partner
Conklin Instrument v. Adtran - Telephone switching
products; only associate, performed all critical liability
analysis
Construction Technology v. Lockformer - Cutting
system; filled in for departed attorney at successful
trial on certain key issues; prepared damages expert
Contel v. V-Band - Turret telephone system; performed
liability analysis
Coupco v. Home Shopping Network - Electronic
couponing system; ran case with partner; took and defended
key depositions; handled oral argument
DigaComm, LLC v. Vehicle IP, LLC - Cellular telecommunications;
represented third-party General Electric Company
Electro Design Mfg. v. Texas Instruments - Digital
missile guidance set for anti-tank missiles; second
chair at trial on key liability issues; took key depositions;
defended expert depositions and prepared liability expert
for trial
Gilbarco v. Octel and U.S. West - Voice messaging;
performed liability analysis
Hitachi v. Texas Instruments - Semiconductor
fabrication; performed liability analysis
International Business Machines v. Conner Peripherals
- Disk drives; ran discovery of this 20 patent case
with partners; took and defended key depositions
Khyber Technologies v. Hewlett-Packard - Windows
CE computers; ran case for Hewlett-Packard with fellow
partner
Knowledge Enterprises v. Cogliano - Electronic
educational products; ran case; conducted all oral argument
and depositions
Levine v. Hewlett-Packard - Digital cameras;
ran case for Hewlett-Packard; handled all court appearances
with fellow partner
Menuco Corp. and Birkmayer v. Prolongevity -
NADH; ran case; handled all oral argument
Methode v. Hewlett-Packard and Agilent Technologies;
Agilent Technologies v. Methode and Stratos Lightwave
- Optical fiber connectors; ran three cases (11 patents,
three venues) for Hewlett-Packard and Agilent Technologies
with fellow partners
Net2Phone v. Skype and eBay - Voice over Internet
Protocol (VoIP); represented third-party General Electric
Company
Pico Products v. Eagle Comtronics - Television encoding/decoding
system; performed liability analysis; took and defended
key depositions
Rackman v. Microsoft - Encrypted software; performed
liability analysis
Sicom v. Agilent Technologies - Logic analyzers;
ran case for Agilent Technologies with fellow partners
Soundview v. Tri-Vision - V-Chip; ran short-lived
case
Staplevision v. Packard Bell - Video monitors;
performed liability analysis and conducted settlement
negotiations
Tavares v. Optimum Solutions - Scanning software;
took and defended all key depositions and all expert
depositions
Therma-Tru v. Plastpro and Nan-Ya Plastics -
Compression-molded entry doors; ran case; conducted
oral argument including successful CAFC appeal; obtained
summary judgment of noninfringement as to all products
in dispute (Therma-Tru had sought more than $120 million
in damages)
Total Spectrum Mfg. v. Vinten Broadcast - Robotic
navigation system for television studio cameras; conducted
all oral argument, prosecuted reexamination of patent
in suit
Turbosound v. Eastern Acoustic Works - Concert
speakers; took key depositions
Wang Laboratories v. CFR Associates - Distributed
data processing system; second chair on key liability
issues at successful trial for Wang Laboratories, took
and defended key depositions
Wokas v. Gilbarco - Gasoline dispensing; took
and defended key depositions
Wool Development v. Creaset - Trouser creasing;
performed liability analysis, prosecuted reexamination
of patent in suit
X-10 USA v. Sicommerce - IR/RF remote control
system; took and defended all depositions
Trademark Litigation
Laurel Entertainment v. Laurel Way - Laurel mark;
performed liability analysis
Sturbridge Yankee Workshop v. Morash Associates
- PBS series "New Yankee Workshop"; ran case; took and
defended all depositions
Commercial Defamation Litigation
Plastpro 2000 v. Therma-Tru Corp. - Defamation;
ran case
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Professional Activities
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Intellectual
Property Owners Association
Vice-Chair, Arbitration and Mediation Committee,
2006 and 2007
Vice-Chair, IP Licensing Committee, 2008
and 2009; presented with the IPO Outstanding Committee
of the Year Award in 2008
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New
Jersey Intellectual Property Law Association
Past Chair, Speakers Bureau
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New
Jersey Technology Council
Past Member, Government Affairs Committee
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Licensing
Executives Society (U.S.A. and Canada), 2004-2011
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Association
of University Technology Managers
Membership Committee, 2007-2012
Civic
Activities
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Member,
Executive Committee, United Nations Association
of the USA Council of Organizations; 2009 - 2010
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Produced
two charity albums in 2007 and 2008 ("A Princeton
Christmas: For the Children of Africa" and A Princeton
Christmas For the Children of Africa Vol. 2"; www.princetonchristmas.org);
proceeds from which have provided more than 250,000
meals (download PDF report here as to the first CD)
to hungry children in sub-Saharan Africa in-school
feeding programs of the United Nations World Food
Program (www.wfp.org),
the world's largest hunger relief organization;
has served as a Coordinator for the WFP Committee
of New York City, part of the Friends of the World
Food Program (now the World Food Program USA: www.wfpusa.org),
the 501(c)(3) non-profit organization formed by
the United Nations World Food Program.
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Initiated
the effort that became Princeton Academy of the
Sacred Heart (www.princetonacademy.org),
a 240-student school in Princeton, New Jersey and
member of the international Network of Sacred Heart
Schools.
Board Member and Buildings & Grounds Chair;
1997-2005
Member, Athletic & Convocation Center Task
Force; 2005-2006
Member, Upper School Task Force; 2006-2008
Member, Princeton Academy of the Sacred Heart/Stuart
Country Day School of the Sacred Heart Partnership
Committee; 2008-2010
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Committee
Leader, WFP Committee of Princeton, Friends of the
World Food Program, 2009-2010
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Member,
Saint Ann School Board, The Church of Saint Ann,
Lawrenceville, N.J.; 2009-2010
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Councilman,
Township of Lawrence, New Jersey; 1994-1997
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Chairman,
Vice-Chairman, and Member, Zoning Board of Adjustment,
Township of Lawrence, New Jersey; 1984-1986
Bar Admissions
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U.S. Supreme
Court
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U.S.
Court of Appeals for the Federal Circuit
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New
Jersey
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New
York
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Pennsylvania
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U.S.
Patent and Trademark Office
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U.S.
District Court for the District of New Jersey
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U.S.
District Court for the Northern District of California
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U.S.
District Court for the Southern District of New
York
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U.S.
District Court for the Eastern District of New York
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U.S.
District Court for the Eastern District of Texas
Education
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J.D.,
The Catholic University of America, Columbus School
of Law
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B.S.,
Electrical Engineering, Carnegie Mellon University
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