Lawrence Rosenthal, who co-chairs Stroock’s Intellectual Property Practice Group, manages the patent and trademark portfolios of domestic and international clients, regularly advising them on the coordinated application of intellectual property rights. He also has participated in numerous licensing, technology transfer, and corporate transactions. Mr. Rosenthal has represented clients before the United States International Trade Commission and in trial and appellate courts across the country, litigating issues involving patents in a wide range of technologies, trademarks, trade dress, copyrights and unfair competition.
Mr. Rosenthal’s clients represent a wide range of industries, such as computers and electronics, consumer products including alcoholic beverages, cosmetics, timepieces and toys, and chemical and biotechnology. He has obtained patents on sophisticated electronic devices as well as toys, trademarks for products such as wines, magazines and watches, and copyrights in fabric designs and product packaging. Mr. Rosenthal has been advising Japanese companies on intellectual property matters for over thirty years and has spoken before the Japanese Institute of International Business Laws, the Association of Japanese Corporate Legal Departments and the Japanese Commercial Arbitration Association.
Mr. Rosenthal has been the leader and driving force of a trial team that has waged a seven-year war against various camera manufacturers and distributors that infringed Fuji Photo Film Co., Ltd.’s one-time use camera patents. This included an initial investigation and two enforcement proceedings before the International Trade Commission and a jury trial in the District of New Jersey. Among the successful results of this campaign have been an ITC general exclusion order, prohibiting the importation of infringing cameras, the tenth largest patent infringement judgment of 2002, a successful licensing program and the largest civil penalty for violation of a cease and desist order ever imposed by the ITC. Mr. Rosenthal has been involved in numerous other jury and bench trials and hearings involving all aspects of intellectual property law.
SELECTED CASES
As counsel to leading Japanese film and camera manufacturer in high-profile patent infringement litigation against 26 respondents, obtained a general exclusion order and 20 cease and desist orders from the International Trade Commission barring respondents from importing or transferring previously imported one-time-use cameras, which infringe client’s patents. In District Court jury trial against one of the respondents and its principal, obtained for client a $30 million judgment after jury trial. In an ITC enforcement proceeding against a respondent and its principal, obtained an ITC civil penalty of $13.675 million. In a second District Court action obtained a preliminary injunction against successors of the original respondent and an order freezing for inspection the containers of cameras slated to be exported.
Obtained summary judgment on behalf of major publishing company in federal trade dress case involving the cover of a new magazine.
Secured dismissal of utility patent infringement claim against major manufacturer of holiday novelty products.
Co-counsel for leading Japanese food products company against leading U.S. food products company that recovered $27,000,000 for infringement of a patent directed to a method for producing a bacterium that overproduces amino acids.
As counsel for a leading timepiece company, obtained simultaneous court-ordered seizures of 25,000 counterfeit articles in New York, Los Angeles, Miami and Dallas.
REPRESENTATIVE CLIENTS
Easter Unlimited Inc.; Fuji Photo Film Co., Ltd.; Fuji PhotoFilm U.S.A., Inc.; Seiko Corporation; Seiko Epson Corporation; Marubeni America Corporation
Memberships
Sections on Litigation and Intellectual Property, American Bar Association; International Trademark Association; New York Intellectual Property Law Association; International Intellectual Property Association, U.S. arm of AIPPI; American Intellectual Property Law Association; Institute of Electrical and Electronics Engineers; Federal Circuit Bar Association
Activities
Co-author, Implications of New U.S.-Japan Income Tax Treaty for Intellectual Property Licenses, Stroock Special Bulletin, August 2, 2004; Co-author, Music Wars the Conflict Between Technology and Music Continues, International Legal Strategy, August 2000; Co-author, Enforcement of U.S. Patent Rights through the International Trade Commission, International Legal Strategy, July, 1999; Co-author, "Avoiding Inadvertent Waiver of the Attorney-Client Privilege in U.S. Patent Infringement Litigation, International Legal Strategy, Vol. VII-7, July 15, 1998; Co-author, "Enforcing Trademarks at the United States Border," International Legal Strategy, Vol. VII-3, March 15, 1998; Co-author, "The Importance of Keeping Good Records," International Legal Strategy, Vol. VI-12, December 15, 1997; Co-author, "The Effects of Infringing a Valid U.S. Patent" International Legal Strategy, Vol. VI-3, March 15, 1997; Co-author, "Court Limits Jury's Role In Patent Interpretation," The National Law Journal, October 23, 1995; Author, "Trade Regulation," The National Law Journal, Janurary 9, 1995; Author, "U.S. Patent Law Goes Global," The National Law Journal, Dec. 26, 1994-Jan. 2 1995; Author, "Your Intellectual Property Under GATT," The Metropolitan Corporate Counsel, November 1994
Admitted to Practice
New York, 1964
U.S. Patent and Trademark Office, 1967
U.S. District Court, Southern and Eastern Districts of New York, 1969
U.S. Court of Appeals, Second Circuit, 1973
U.S. Supreme Court, 1980
U.S. Court of Appeals, Ninth Circuit, 1980
U.S. Court of Appeals, Federal Circuit, 1983
Court of International Trade, 2004
Education
LL.B., New York University School of Law, 1964; Editor, New York University Law Review, 1963-1964
LL.M., New York University School of Law, 1973
B.E.E., Cornell University, 1961 |