Concentration

High technology patent litigation, intellectual property counseling

Summary

Neil Sirota's practice encompasses patent litigation, as well as validity and infringement opinions, patent prosecution and counseling on intellectual property matters such as patent procurement strategies and licensing. He also has experience litigating trademark, trade dress and copyright issues.

Over the course of his nearly 20 years practicing patent law, Mr. Sirota has developed particular expertise representing clients in high technology patent litigation matters before federal district courts nationwide, including multi-district litigation, as well as the International Trade Commission and the Court of Appeals for the Federal Circuit. 

Mr. Sirota has litigated a wide array of technologies, including semiconductor device fabrication, mobile phone antenna designs, power transistor devices, liquid crystal displays, cable television transmission systems, Internet communications, roofing shingles, faucet designs, gas springs, and electromagnetic interference protection devices.

Mr. Sirota taught intellectual property law for several years as an adjunct professor in the graduate design management program at Pratt Institute. Prior to entering law school, he worked at Hazeltine Corporation, where he designed radio frequency circuits for various applications, primarily for use in the testing of receiver/transmitter aircraft identification systems.

Representative Engagements

• ACTV, Inc. v. Walt Disney Co. (S.D.N.Y.) represented ACTV in patent suit relating to internet/television convergence; case settled before trial.
• American Bio Medica Corp. v. DiPro Diagnostic Products, Inc. (D. Del.) defended DiPro in design patent and trade dress infringement suit relating to diagnostic drug test kit; obtained transfer to S.D. Cal. and case settled shortly thereafter.
• Apeldyn Corp. v. Samsung Electronics Co., Ltd. (D. Del.) currently defending Samsung in patent infringement suit relating to liquid crystal display driving system and method.
• Anvik Corp. v. Samsung Electronics Co., Ltd. (S.D.N.Y.) currently defending Samsung in patent infringement suit relating to scanning microlithography.
• Commissariat à l'Energie Atomique v. Samsung Electronics Co., Ltd. (D. Del.) defended Samsung in patent infringement suit relating to vertical alignment mode liquid crystal display devices; obtained summary judgment of invalidity for failure to disclose best mode on one of two asserted patents, as well as summary judgment of non-infringement for most asserted claims in second patent; settled before trial.
• Dell, Inc. v. This Old Store (N.D. Tex.) – represented Dell in suit against unauthorized reseller of Dell computers; settled before trial.
• Fractus, S.A. v. Samsung Electronics Co., Ltd. (E.D. Tex.) currently defending Samsung in patent infringement suit relating to mobile phone antenna technology.
• Honeywell International, Inc. v. Hitachi, Ltd. (D. Del.) represented Hitachi in patent infringement suit relating to liquid crystal display backlight arrangement; case settled after depositions.
• Intellectual Properties Development Corp. v. Tele-Communications, Inc./ AT&T Broadband LLC (S.D.N.Y.) defended TCI/ AT&T and related companies in separate actions (multi-district litigation) in a patent infringement suit involving hybrid fiber coax cable television systems; obtained summary judgment of invalidity and non-infringement on all asserted claims; Federal Circuit affirmed on non-infringement grounds.
• Masco Corp. v. Price Pfister (E.D. Va.) represented Masco d/b/a Delta Faucet in suit involving cross claims of design patent and trade dress infringement and other state law causes of action; obtained jury verdict in Masco's favor; Federal Circuit affirmed on appeal.
• Minnesota Mining and Manufacturing Company v. North American Science Associates, Inc. (D. Minn.) defended NAMSA in patent suit relating to medical instrument sterilization techniques; case settled before trial.
• Plasma Physics Corp. (E.D.N.Y.) represented Plasma Physics in multiple suits against semiconductor chip manufacturers asserting patents relating to semiconductor processing using plasma enhanced chemical vapor deposition (PECVD); cases settled prior to trial; currently representing Plasma Physics in asserting its patents against several Taiwanese LCD manufacturers.
• Power Mosfet Technologies, Inc. v. Infineon Technologies A.G. (E.D. Tex.) defended Infineon and related companies in a patent infringement suit relating to power transistor structures; prevailed at a bench trial; Federal Circuit affirmed on appeal.
• Theis v. Northern Telecom, Inc. (N.D. Cal.) defended Northern Telecom in patent suit relating to voicemail technology; successful defense at trial; Federal Circuit affirmed on appeal.
• Tulip Computers International B.V. v. Dell Computer Corp. (D. Del.) defended Dell in patent infringement case involving a patent directed to personal computer form factors; obtained summary judgment of non-infringement on half the products at issue prior to trial; case settled shortly before jury deliberation.
• Vanguard Products Corp. v. Parker Hannifin Corp. (D. Conn.) represented Vanguard in suit against competitor for infringement of patents relating to electromagnetic interference gaskets; won multimillion dollar award at jury trial; Federal Circuit affirmed on appeal
• Whirlpool Corp. v. LG Electronics (I.T.C. and D. Del.) represented Whirlpool in the International Trade Commission and in the District of Delaware in a patent infringement dispute involving indoor ice making systems for refrigerators and other refrigerator technologies.
  

Publications, Speeches and Presentations

Publications

• "Recent Upswing in E-Patent Litigation Likely to Continue," New York Law Journal, December 1, 2003 (Robert Maier, co-author)

Speeches and Presentations

• "Printed Publications in an Electronic World,"  24th Annual Patent Practice Seminar, JPPCLE, Inc., New York, April 2008
• "Technically Speaking: How Technology Is Changing the Way We Litigate," Strategies for Effective Intellectual Property Litigation, Directors Roundtable, New York, April 2005
• "Enablement and Written Description Requirements," New York Intellectual Property Law Association, New York, March 2003
• "Joint Development/Defense Representation: Privilege Issues," Baker Botts Open House, New York, June 2002
• "Mock Oral Argument: Patent Claim Construction," New York Intellectual Property Law Association, New York, October 2000