Intellectual Property disputes can be complex, high stakes matters affecting the very heart of any business. Lewis Baach Kaufmann Middlemiss's Intellectual Property Group has experience in all areas of Intellectual Property law, including patents, trade secrets, trademarks, and copyrights, and has litigated on behalf of both plaintiffs and defendants.
Our attorneys work closely with our clients to understand the entire situation, each client’s industry and technology, and its specific goals. We give our clients options, and an honest assessment of potential outcomes, and their likelihoods and expected costs. We work with our clients to develop a strategy to deliver the best possible results in the most cost-effective and expeditious manner possible.
Though our primary focus is litigation, we have experience with development and protection of Intellectual Property assets including patent and trademark prosecution and copyright registration, along with extensive experience with drafting contracts and licenses and evaluations of Intellectual Property portfolios. This all-around perspective on Intellectual Property is invaluable in fully understanding a dispute and the best resolutions.
Lewis Baach Kaufmann Middlemiss has expertise in settlement and alternative dispute resolution. However, we generally approach disputes with trial in mind. Proper trial development, including real understanding of the technology and the facts involved, early development of trial themes that can resonate with a jury and full preparedness in pre-trial matters gives Lewis Baach Kaufmann Middlemiss's clients an advantage in any settlement negotiation.
This approach also means that our cases are prepared for trial if an acceptable pre-trial settlement does not materialize. Lewis Baach Kaufmann Middlemiss has a deep bench of trial attorneys with a range of trial experience, including a cadre of former prosecutors who are at home in the courtroom as well as the former co-chair of the Intellectual Property department at a prominent New York firm. The combination of trial experience, plus thorough preparation, positions each case for maximum success.
- Representing patent holder in patent infringement matter brought on its behalf against Google and Waze related to real time vehicle guidance and traffic forecasting and related inter partes review proceedings. Makor Issues & Rights Ltd. v. Google Inc. and Waze, Inc., Case No. 1-16-cv-00100, D. Del.
- Representing patent holder in patent infringement matter brought on its behalf against Microsoft related to automatic user interface generation for large databases. Kaufman v. Microsoft Corporation, Case No. 1-16-cv-02880, S.D.N.Y.
- Representing patent holder in patent infringement matter brought on its behalf against Telerik related to software component testing. Typemock, Ltd. v. Telerik Inc., Case No. 1-17-cv-10274, D. Mass.
- Representing Internet broadcasting company, WAG Acquisition, L.L.C. d/b/a SURFERNetwork, in nine patent infringement matters brought on its behalf related to streaming media delivery systems and related inter partes review proceedings. Eg., WAG Acquisition, L.L.C. v. Multi Media, LLC et al., Case No. 2-14-cv-02340, D.N.J.
- Representing copyright holders of various Russian television programs in several copyright infringement matters brought on their behalf related to distributors’ unauthorized streaming of the programs over the Internet, mobile applications, and IPTV streaming facilities. E.g., Komanda LLC v. Kartina Canada Inc., et al. Case No. 17-cv-2362, S.D.N.Y.
In the News
- IP Watchdog, June 22, 2018
- The SAS decision was an unfortunate misstep on the part of the Supreme Court of the US
SAS Institute v Iancu ended the PTAB’s practice of partial institution for inter partes review (IPR) proceedings.Intellectual Property Magazine, June 2018
“We are very pleased that the Board ruled in favor of WAG in these IPRs,” Abramson told Law360 via email. “The rulings reflect that the real party-in-interest and privity provisions in 35 U.S.C. § 315(b) constitute a serious limitation on the time frame available for interrelated parties to challenge patents through inter partes review.”Law360, February 28, 2018
“We are pleased to have several claims that have survived IPR attack, such that Makor’s patent infringement case in the district court can go forward at least as to those claims,” Ron Abramson, an attorney for Makor, told Law360 on Tuesday. “As I am sure you are aware, current statistics show that the large majority of instituted IPRs result in invalidation of all challenged claims. We are pleased to be in the exception to that rule in the present cases.”
[Makor is represented by Ronald Abramson and Ari J. Jaffess ]Law360, February 13, 2018
If the patent owner can make the case that there is a factual issue about whether the invention is conventional, "that'll almost always get you out of summary judgment," said Ronald Abramson of Lewis Baach Kaufmann Middlemiss PLLC. "This opens up a big can of worms to avoid summary judgment."Law360, February 13, 2018
- Press Release: Woodsford Litigation Funding to provide international litigation boutique Lewis Baach Kaufmann Middlemiss PLLC with innovative $20m global portfolio financing facility
Woodsford Litigation Funding, one of the leading global third party funders, has announced a funding facility agreement with Lewis Baach which ensures the firm can offer clients an expedited, one-stop arrangement for the financing of high value litigation and arbitration.August 16, 2017
- The American Lawyer, August 16, 2017
Third-party funder Woodsford Litigation Funding said Wednesday it has reached a $20 million agreement with law firm Lewis Baach Kaufmann Middlemiss PLLC to provide it with financing to pursue litigation and arbitration worldwide on behalf of the firm's clients.
The deal, referred to as a funding facility agreement, will allow Lewis Baach to offer clients a financing arrangement to cover matters in any jurisdiction around the world in which the firm is prepared to offer contingency fee arrangements, Woodsford said. The deal will also cover situations...
“In our experience, the resources and the resolve that Woodsford brings to the equation, combined with a strong claim, a determined client, and a formidable legal team, makes the difference between justice delivered or denied,” Liston said.Law360, August 16, 2017
"There will surely be a rash of fringe (and truly offensive) trademark filings as a result of this decision," Ron Abramson, an IP attorney with Lewis Baach, told Ars in an e-mailed comment. "However, none of them will likely ever be major brands, thus the issue should not have great practical significance."Ars Technica, June 19, 2017
The U.S. Supreme Court on Monday decided in Matal v. Tam that the federal government’s ban on offensive-trademark registrations violates the First Amendment. Here, attorneys tell Law360 why the decision is significant.
Ron Abramson, Lewis Baach PLLC. “In today’s decision, there was no dissent from any side of the spectrum. The differences in the bases for the separate opinions of the justices
were nuanced, going to whether it was necessary to address additional questions such as whether registered trademarks represent government of private speech. One group said it was private speech — and thus highly protected — and a second group said it didn’t matter because this type of censorship would be prohibited under either standard. There will surely be a rash of fringe, and truly offensive, trademark filings as a result of this decision. However, none of them will likely ever be major brands, thus the issue should not have great practical significance.”Law360, June 19, 2017
“This ruling will affect industries across the board,” said Ronald Abramson, a partner in the law firm of Lewis Baach Kaufmann Middlemiss PLLC. The decision is important not just for its economic impact, but because of its effects on patent law. “This is the first time in a long time that an authoritative court has distinguished patent rights from contract rights and said that you can’t make up your own contract rights to affect patent rights,” said Abramson. “This breathes some new life into restraints on alienation, which have been ignored by the Federal Circuit for the last 25 years. It also opens up the door to antitrust and patent misuse, [two other legal limits on patentees] which have withered under the Federal Circuit.”Intellectual Property Watch, June 8, 2017
Ron Abramson, partner at law firm Lewis Baach, said the decision represents “a complete and harsh slap down for the Federal Circuit, at long-last rejecting the Federal Circuit’s long questioned 1992 decision in Mallinckrodt v Medipart, which held that a contractual reservation of rights could overcome the rule of exhaustion by prior sale that applies to the patent property right.”
He added: “I am a bit surprised to see that the court also went eight to nothing for ‘full monte’ exhaustion—upholding not only domestic patent exhaustion as widely expected, but applying the same rule to foreign sales as well, despite the fact that foreign patents under which the latter sales occurred are entirely separate from any corresponding US patents.”IP Pro Patents, May 31, 2017
Lewis Baach’s Ron Abramson said the verdict represents a “complete and harsh slapdown” for the CAFC. “At long-last”, the court rejected the CAFC’s “long questioned 1992 decision in Mallinckrodt v Medipart, which held that a contractual reservation of rights could overcome the rule of exhaustion by prior sale that applies to the patent property right,” he explained. “The holding will loosen manufacturers’ control over ‘refillable’ products, as well as the ability to control importation of products sold abroad by threat of patent infringement.” He added, “It also removes a large cloud on commercial freedom of sale perpetuated by the Federal Circuit since its controversial Mallinckrodt decision 25 years ago.”Intellectual Property Magazine, May 31, 2017
Ron Abramson, partner at Lewis Baach, explained its meaning: “Under this ruling, the controlling statute on patent venue is the narrower provision of Section 1400(b), whose meaning is not impacted by the broader provision in the general venue provisions of 35 USC 1391(c). “There will now be fewer places to bring a patent infringement lawsuit, to be sure.”IP Pro Patents, May 23, 2017
"The federal courts are pretty jealous about their jurisdiction, and Article III standing is a brick
wall," said Ronald Abramson of Lewis Baach PLLC.Law360, April 7, 2017
However, Lewis Baach’s Ronald Abramson called the ruling ‘concerning’. "In my view, by extending copyright protection to these designs, the court has broken a key limitation on copyright protection, and this will come back to haunt the courts in very troublesome
ways, not only in the fashion industry, but in other areas, such as architecture and computer
software, where design and functionality are often intertwined and the designs can be highly 'free form'.” He added, “Businesses in those fields will now start asserting these ‘copyrights’ very aggressively, in ways that were never intended by the Copyright Act. Note also that the law also provides for design patents, a form of IP specifically created for designs of useful articles. However, design patents have a relatively short term of 15 years. Copyrights, by contrast, typically have a 100-year term. The result here is very concerning.”Intellectual Property Magazine, March 23, 2017
Ronald Abramson, an IP litigator with Lewis Baach PLLC, New York, was critical of the ruling,
saying the “Supreme Court just did what Congress would not: extend copyright protection to clothing designs.” Abramson told Bloomberg BNA in an email message that the ruling “has broken a key limitation on copyright protection, and this will come back to haunt the courts” in areas like architecture and computer software, “where design and functionality are often intertwined and the designs can be highly ‘free form.’”Bloomberg BNA, March 23, 2017
Lewis Baach's Ron Abramson said the verdict illustrates SCOTUS’ “disinclination to have ‘special rules’ for patent law that widely diverge from the resolution of analogous questions in related legal fields.” He added, “What the decision does do is cut way back on a defence that occasionally allows a patent infringement defendant to escape liability for damages. Due to the infrequency that this defence prevailed, I would say this decision will not have a monumental impact.”Intellectual Property Magazine, March 22, 2017
The impact of the decision will be limited because laches was rarely asserted in patent cases and was even more rarely successful, said Ron Abramson, a partner with Lewis Baach. "The decision was widely expected and again illustrates the Supreme Court’s disinclination to have `special rules' for patent law that widely diverge from the resolution of analogous questions in related legal fields," Abramson said in an e-mailed analysis.Forbes, March 21, 2017
Lewis Baach’s Ron Abramson said SCOTUS had “cut off” an argument that could have expand US patent jurisdiction beyond reason. “Everyone on the court agrees that there has to be more than one US component under the provision in question [to infringe]… the decision does straighten out an area where the lower court had pushed US law too far,” Abramson said.Intellectual Property Magazine, February 23, 2017
Ron Abramson, partner at Lewis Baach, agreed with Dragseth that the ruling raises questions. “I’m not sure I buy the fine points of the court’s statutory construction reasoning, and I see many open questions raised by this decision. However, the big point here is that the Supreme Court has, quite properly in my view, cut off an argument that could have expanded US patent jurisdiction beyond reason by an exporter who did nothing more with respect to the US than supply a commodity component that is later used in making some further product abroad, where only the final product would have infringed had it
been made in the US.”Life Sciences Intellectual Property Review, February 23, 2017
- The Supreme Court’s ruling yesterday in Life Technologies v Promega will curb the extraterritorial reach of US patent law, according to experts, but its failure to define “substantial portion” is another example of increasing uncertainty.
Critical of the judgement, Ron Abramson, partner at Lewis Baach, was unsure whether he “buys the fine points of the court’s statutory construction reasoning” and sees “many open questions raised by this decision.” [...]IPPRO Patents, February 23, 2017
- Law360, February 22, 2016
Publications, Presentations & Events
- Co-author, "Federal Circuit Applies a Reasonableness Standard to the Knowledge of Infringement Prong,"The Intellectual Property Strategist, July 2016
- Co-Author, "Apple's iPhone User Interface Held Functional for Trade Dress Infringement, But Not Design Patent Purposes,"The Intellectual Property Strategist, July 2015