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Updated: July 9th, 2023 | Greenwich | Lawyer List S | Withers Bergman LLP |
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Address: 1700 East Putnam Avenue, Suite 400, greenwich, CT, 06870
Law Firm: Withers Bergman LLP
Phone: 203 302 4069
Fax:
Email:
Website: http://www.withersworldwide.com/
| Title | Of Counsel |
| First Year of Call | |
| Areas of Practice | |
| Description | Stephen heads up the US intellectual property and technology team.He focuses on intellectual property enforcement and defense, including court and administrative action – patent office proceedings (ex parte patent reexaminations, inter partes patent review, trademark oppositions) and ITC . Steven is also experienced in procurement, licensing, due diligence and counseling, involving diverse intellectual property issues including advertising compliance, anti-counterfeiting, copyrights, domain names, grey goods, patents (utility and design), privacy and data protection, trade dress, trade secrets and trademarks.His litigation and administrative challenge practice has been diverse, running the gamut of technologies involving biotechnology, chemical, electrical, fashion, Hatch-Waxman, mechanical device, medical device and software matters. Steven also carries with him in-house experience, having been the Chief Intellectual Property Counsel for a joint venture ($1.5 billion in sales) between two large pharmaceutical companies.In addition to Connecticut, New York and California, Steve is admitted to practice before the United States Supreme Court, US Court of Appeals, Federal Circuit and several US District Courts (Connecticut, Southern and Eastern Districts of New York, and DC Circuit). DatesJoined2015Partner2015 Talks˜Key Patent and IP Issues in M&A Transactions’, Continuing Legal Education course to members of Association of the Corporate Counsel-San Diego chapter, San Diego, CA, February 18, 2016˜Of Prior Art and Double Patenting: Exploring the Dichotomy Between the Federal Circuit and PTO on Obvious Findings and the Potential Impact of the Goodlatte Bill on Double-Patenting Type Obviousness’, ACI ‘s Eighth Annual Paragraph IV Disputes, New York, April 2014˜Patent Law for Non-Patent Lawyers’, New York City Bar, New York, December 2013˜Non-Practicing Entities,’ CTIC Patent Reform Conference Patent Reform: Theoretical Propositions and Factual Foundations, University of Pennsylvania Law School, Philadelphia, December 2013.˜Examining New Rulings in Inducement of Infringement and Divided Infringement and Their Application to Method Claims in Hatch-Waxman Litigation’, ACI ‘s Seventh Annual Paragraph IV Disputes, New York, May 2013˜The New Reexamination Procedures in the United States’, Intellectual Property Rights Conference, Bangalore, India, January 2013˜ Inequitable Conduct Post-Therasense and How It Impacts Life Cycle Planning’, 13th Annual Maximizing Pharmaceutical Patent Life Cycles Event, New York, October 2012˜Patent v. Antitrust Law in the 21st Century’, New York City Bar, New York, June 2012˜New Standards in Inequitable Conduct Post-Therasense: Ethical Considerations for Paragraph IV Cases’, ACI ‘s Sixth Annual Paragraph IV Disputes, New York, April 2012˜Damages and Injunctions: Exploring the Consequences and Conundrums of Launching at Risk’, ACI ‘s Fifth Anniversary Edition Paragraph IV Disputes, New York, May 2011˜Factoring Recent Local Patent Rule Changes, Jurisdictional Considerations and Patent Reform Legislation into Your Litigation Strategy’, ACI ‘s Third Annual Paragraph IV Disputes, New York, April 2009˜Constructing, Adjusting, and Executing a Pharmaceutical Patent Life Cycle Management Plan’, 9th Annual Maximizing Pharmaceutical Patent Life Cycles Conference, New York, October 2008˜KSR and Obviousness’, 8th Annual Maximizing Pharmaceutical Patent Life Cycles conference, New York, October 2007˜How to Align Your Pharma Patent Portfolio with Recent Supreme Court decisions and the New USPTO Regulations’, The Center for Business Intelligence webinar series, New York, October 2007˜Expert Insights on Hatch-Waxman Litigation Strategies for Brand Names and Generics’, ACI Paragraph IV Disputes, April 2007Track recordSteve is probably best known for acting as lead counsel in the representation of Dr Tafas in the suit of Tafas v. Dudas, in which a successful challenge was brought against certain regulations to change continuation and claim practice in the United States. The regulations were understood through the patent field to have widespread effects on patent practice, and to increase costs substantially for the maintenance of patent portfolios. For his actions in the case, he was awarded the Case of the Year (2009) by a number of organizations including Managing Intellectual Property. His client, Dr Tafas, won the prestigious Jefferson Medal by the New Jersey Intellectual Property Association, becoming one of the few non-lawyers to ever receive the award. Publications˜Got IP? Get out. For investors thinking of selling, acting in the next few days is critical,’ IPW atchdog – December 22, 2017, co-author ˜Thinking of selling your intellectual property? A few days could make a world of difference to your bottom line,’ Withers Article – December 6,2017, co-author˜The New Patent Extortionist’, Inside Counse l- November 5, 2015˜Financial and Emotional Costs Are Considerably Less When IP Planning Is a Part of the Earlier Developmental Stages’, Inside Counsel – September 2, 2015˜A Big Change in the ANDA Litigation Paradigm’, Lex Machina’s Legal Analytics – September 2014˜Identifying the Real Patent Extortionists: A Review of the Extortionist Demand Letter’, IPW atchdog.com – April 2014˜The Small Practicing Entity Bears the Brunt of USPTO IPR Challenge Procedures’, IPW atchdog.com – December 2013˜What New Patent Legislation Portends for the Small Entity Patent Filer’, IPW atchdog.com – December 2013˜Part 2 – The AIA : A Boon for David or Goliath?’ IPW atchdog.com – August 2013˜Part 1 – The AIA : A Boon for David of Goliath?’ IPW atchdog.com – August 2013˜Part 5 – A Fractured Fairy Tale: Patent Troll Epilogue’, IPW atchdog.com – August 2013˜Part 4 – A Fractured Fairy Tale: More Patent Troll Myths’, IPW atchdog.com – August 2013˜Part 3- A Fractured Fairy Tale: More Patent Troll Myths’, IPW atchdog.com – July 2013˜Part 2 – A Fractured Fairy Tale: Probing 10 Patent Troll Myths’, IPW atchdog.com – July 2013˜Part 1 – A Fractured Fairy Tale: Separating Fact & Fiction on Patent Trolls’, IPW atchdog.com – July 2013˜Winning the Battle But Losing the War: Does Ease in Obtaining Declaratory Judgment Jurisdiction After Hewlett-Packard Company v. Acceleron, LLC Benefit Anyone?’ The Metropolitan Corporate Counsel – February 2010˜The Tafas Lawsuit: Stopping the USPTO ‘s Burdensome Rules’, The Metropolitan Corporate Counsel – June 2008 |
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