Prior Firm Experience

Patent Litigation Matters

  • Leviton Manufacturing Co. v. Greenberg Traurig, patent malpractice lawsuit against one of the largest U.S. law firms, working with malpractice counsel, Milton obtained a highly favorable and sizable settlement. Persuasively jumping the multitude of hurdles for proving a “case-within-a-case,” against an aggressive defense by another leading trial firm, on complex allegations of misconduct over an extended period of time relating to both patent litigation and prosecution laid the foundation for settlement.
  • Several internet media clients sued for infringement by Mobile Transformation LLC, a patent troll, relating to infringing a patented system and method for displaying advertisements along with video, photo and text content. The plaintiff had previously brought some twenty suits against various media companies, many of which settled for undisclosed sums. Milton directed the research and analysis of the prior art, and presented arguments that the patent was not valid, resulting in a dismissal and settlement where the client did not pay the troll a dime.
  • E. I. DuPont de Nemours & Co. v. Millenium Chemicals Inc., negotiated a favorable settlement for defendant in patent litigation involving titanium oxide formulations.
  • General Electric Co. v. Prince, negotiated a favorable settlement for the inventor declaratory judgment-defendant in patent litigation involving MRI technology.
  • Honeywell International Inc. v. Electrolux Home Products, Inc., negotiated a favorable settlement for the plaintiff-patent owner in litigation regarding turbidity sensor technology used in home appliances.
  • Honeywell International Inc. v. Gollomp, negotiated a favorable settlement for the plaintiff-patent owner in litigation regarding ownership of intellectual property rights in air filter technology.
  • In re Relafen; In re Ciprofloxacin; In re Augmentin; In re K-Dur; In re Paxil; In re Wellbutrin; In re Tamoxifin; In re Plavix; In re Tricor, multiple antitrust litigations, as patent counsel reviewed and analyzed the work of prior patent prosecution attorneys and patent litigators in the context of allegations of fraud on the Patent Office and sham litigation.
  • Vetrerie Bruni SpA v. Shonfeld’s (USA), Inc., case involving a design patent for a decorative bottle, the patent marking statute was used to force a substantial cut in plaintiff’s settlement demand, resulting in a much more favorable settlement for the client.
  • Datastrip International Ltd. v. Symbol TechnologiesDatastrip International Ltd. v. Intacta Technologies, Case where the plaintiff-patent owner was represented in patent litigation involving two-dimensional bar-code technology.

Fashion & Luxury Goods Matters

  • Chloe v. Queen Bee, the Second Circuit made a ground-breaking decision on internet personal jurisdiction, allowing trademark owners to bring suit in a more convenient location, and not only where a counterfeiter resides.
  • Guess? v. Gold Center Jewelry, the first U.S. case to impose statutory damages for counterfeit goods under the Anti-Counterfeiting Act of 1996.
  • Gucci America v. Hall & Associates, case established that Internet Service Providers are not immune from secondary liability for trademark infringement for infringing content posted on internet websites.
  • Cartier v. Four Star Jewelry Creations, Milton established an effective means and method for plaintiffs to secure valid trade dress rights.
  • Act II Jewelry, LLC v. Zhu, $1 Million judgment was obtained and collected against an on-line counterfeiting operation. The jury found the principal’s husband to be her partner in the counterfeiting business, rendering him liable for treble damages.
  • Van Cleef & Arpels v. Heidi Klum GmbH, “Family of trade dress” theory in the client’s line of highly successful jewelry designs was asserted against a similar line marketed by the famous fashion designer Heidi Klum, resulting in a highly favorable settlement.
  • McAfee, Inc. v. Cao, counterfeiting case, in which a TRO was obtained against the New York City Police Department enjoining the return of funds seized in a raid after the criminal fine was paid by the counterfeiter. The counterfeiter soon settled the case, with the bulk of the frozen funds paid out to McAfee in settlement.
  • Gucci America, Inc. v. Costco, Inc., several incidents of infringement by the national warehouse chain, a settlement was negotiated that included entry of a permanent injunction barring sales of any goods, genuine or counterfeit, bearing the GUCCI mark for fifteen years.