Mediator Resume

Over 35 years of complex intellectual property litigation experience. Most recently, litigated a large FRAND case, for 3 ½ years, involving complex questions of U.S. and French law related to the quantum of a FRAND royalty and interpretation of ETSI’s policies related to FRAND, including: what is a FRAND license rate for tens of millions of worldwide unit sales of wireless communications devices; what licenses and devices are comparable; apportioning the value of a worldwide patent portfolio. Litigated patent validity, infringement and enforceability and related issues such as trade secrets and unfair competition. Litigated copyright, trademark and contract cases related to computer software and multinational corporate acquisitions.

Pearl Cohen Zedek Latzer LLP - Partner Adjunct Professor of Law, Elisabeth Haub School of Law, Pace University Arbitrator, Mediator and Expert at the Unified Patent Court's (UPC) Patent, Arbitration and Mediation Centre (Ljubljana, Slovenia, and Lisbon, Portugal)

Intellectual property litigator, arbitrator and mediator.

Partner, Pearl Cohen Zedek Latzer LLP, 2005 - Present; Adjunct Professor of Law, Elisabeth Haub School of Law, Pace University; Counsel, IP Value, 2002 - 2005; Partner, Brown Raysman, 2001 - 2002; Of Counsel, Morgan & Finnegan, 1997 - 2001; Counsel, Cobrin, Gittes, 1995 - 1997; Associate, Fish & Neave, 1987 - 1995; Joseph R. Loring & Associates, 1981 - 1983; Lecturer, Tufts University (IP Law), 2014 - 2018.

Over 35 years of experience in large, complex intellectual property litigation such as complicated, high-stakes intellectual property cases, including claims for infringement of multiple patents, software copyrights, trademarks, unfair competition and trade secrets claims. The exposure in these cases typically exceeded $100 million. Cases litigated have involved: • sophisticated econometric damage models; • lost profits and copyright profits; • reasonable royalties; • international parties and cross-boarder transactions; • standard essential patents ("SEP"), FRAND (RAND) royalty calculations; • ETSI rules (under French law); • patent infringement, invalidity, unenforceability; • on-line advertising; and • quantifying breach of contract damages. Both Court ordered and private mediations related to complex international breach of contract claims, employment and intellectual property. Lead counsel in dozens of complex intellectual property matters in district courts, appeal courts, and the ITC. Expert on damages litigation and determining the validity of economists’ damages analyses. Markman, Daubert and summary judgment motions/hearings related to a wide array of technologies, many for multinational companies, including: • Ford Motor Company (automobile electronic engine controls (cars, trucks, motor vehicles)); • Procter & Gamble (computer software); • Varian Associates (Fourier Transform NMR instruments (scientific instruments); • Fujitsu (cell phones and other technology); • C.R. Bard (medical devices); • W.L. Gore (variety of GoreTex products (vein, grafts, medical devices)); • Bombardier, Inc. (33 patents related to personal watercraft (vehicles)); • Boehringer Ingelheim Corp. (Oxycontin litigation (pharmaceuticals)); • Coulter (monoclonal antibodies and flow cytometers (scientific instruments)); • Given Imaging (endoscopic imaging capsules, optics and software (medical devices)); • wireless machine-to-machine (M2M) communicators; • medical devices, including holmium lasers, femur supports, RF (radio frequency) devices and intra-aortic balloon catheters; • forward collision and lane-departure warning systems (computer vision, automotive, cars, software); • surgical simulators (haptics) • ink jet printers; • VOIP, voice over IP; • Telit, M2M (FRAND royalties, patent unenforceability, infringement , invalidity, wireless communications, error checking and correction, encryption); • Procter & Gamble (feminine care); • agricultural products, seed and plants; and • software patents, concerning oil exploration, e-commerce, on-line advertising, visual search and other technologies. Most cases included contractual and licensing disputes, several disputes included terms of use issues in software licenses, EULA disputes, and trade secret misappropriation. Other case types: • computer modeling • mechanical engineering • construction issues • acoustics • electrochromic devices • Chemical Vapor Deposition (CVD) • software security • automotive, e.g., pollution control, and electrochromic mirrors • cameras, optics A member of the trial team in the historic Polaroid v. Kodak eight-month damages trial in which Polaroid won just under one billion dollars in damages. Worked with a Nobel-Prize winning economist on damages models and econometric analyses. Employed by Joseph R Loring, & Assoc.: Worked with well-known architects on various high-profile construction projects; performed computerized energy analysis, including modeling the World Trade Center; IBM headquarters in Armonk, NY; various laboratory facilities; HVAC design, wrote computer programs for elevator analysis and plumbing design. Wrote computer simulations for card games that simulated millions of hands. Awards: IAM Patent 1000, New York Super Lawyer 2013-present, Martindale Hubbell AV Rating (the highest).

Over two dozen arbitrations and mediations related to intellectual property, employment, contractual and statutory disputes, including consumer goods and services. • Multi-day arbitration concern patent infringement and breach of contracts • Mediation between international companies related to trademark infringement and breach of contract. • Copyright infringement assertion related to online advertising. • Settled via mediation a complex international breach of contract dispute related to the acquisition of multinational auto-parts businesses, including intellectual property issues. • Complex multi-jurisdictional patent dispute related to computer software, financial transactions, point of sales (POS) terminals, with interrelated issues concerning infringement, validity and indemnity. • Multi-patent dispute, related to U.S. and foreign patents, concerning infringement, interpretation of claim terms, validity, and contractual issues • International Trade Commission - RF medical devices • Eastern District of Virginia - cell phone filters and wireless communications technology • District of Indiana - cassette mechanisms • North District Illinois - medical devices • Northern District Ohio - medical simulators • Northern District of California - medical devices • Massachusetts - laser medical devices • New York - computer software • New York personal services contract for custom-made furniture consumer products • Southern District of New York - employment discrimination • Eastern District New York - contract/trademark for consumer products

Litigation related to patent infringement concerning agreements related to financial transaction processing hardware and software.

As a mediator (and litigator) I approach these conflicts with the view that both parties face considerable uncertainty. If a case has progresses to litigation, neither side has a "slam dunk" argument. The only thing that is predictable is that both parties will pay legal fees, in some cases significant fees, if the case is not settled. That said, my role as a mediator is to point out the strengths and weaknesses of each party's case, confidentially, or in a group discussion (as the parties prefer) and based on that to drive the parties to an efficient resolution. With over 35 years of complex litigation experience, I have come across most legal arguments, and have a good sense of which ones will succeed, which will fail and which could go either way. Based on a thorough analysis of the competing arguments, I will estimate what the probabilities of success are for each of the arguments presented. The overall philosophy is to talk to the parties (not necessarily their lawyers) directly and candidly assess the value of the case. Oftentimes, advocates will paint too rosy a picture and build up the client's expectations. As an advocate, I have viewed mediation/settlement discussions as the only opportunity I have to speak directly to the opposing party without his lawyer acting as a filter. This may be the first time the party hears the defects of his case. My role as a mediator is to view the arguments objectively and to convince the parties that the outcome either is uncertain (the most likely scenario), or one party has a significantly better chance of prevailing, and more times than not continued litigation is just not worth it. I will also seek creative solutions that the parties may not have considered. I have considerable experience working with exceptional economists (in one case, an economist who went on to win the Noble Prize), including econometricians, licensing and damages expert and will use that knowledge to “cut-through” the parties’ posturing on damages to arrive at a realistic value for the case. I have succeeded in Daubert motions excluding damages experts, and know the weak points in damages analyses.

Fordham University School of Law (JD-1987); Columbia University (MS, Mechanical Engineering-1984); Tufts University (BS, Mechanical Engineering-1981).

Admitted to the Bar: New York (1988); U.S. District Court: Southern and Eastern Districts of New York (1988); U.S. Court of Appeals: Second Circuit (1996); Federal Circuit (1990); U.S. Patent & Trademark Office; U.S. Supreme Court (1992); and various admissions pro hac vice.

NYS Bar, and various other federal courts.

PUBLICATIONS: Papers: A Look At Fed. Circ. Induced Infringement Ruling In NuVasive, David Loewenstein and Clyde Shuman, Law360 (2016), Patent Litigation in the Eastern District of Texas: Is the Party Over?, David Loewenstein & Douglas Gilbert, IP LAW 360, Jan. 13, 2009. Pitfalls in Indemnification Provisions in Intellectual Property Agreements, LES NOUVELLES, JOURNAL OF THE LICENSING EXECUTIVES SOCIETY (Sept. 2002). Authored chapter, Patent Opinions, INTELLECTUAL PROPERTY ASSETS IN MERGERS AND ACQUISITIONS (2002). The Federal Circuit’s En Banc Decision in Johnson & Johnston, Inc. v. R.E. Services, Inc., N.Y. LAW JOURNAL, June 4, 2002. Recent Federal Circuit Decisions Focus on Defenses, NATIONAL LAW JOURNAL, Apr. 15, 2002. A Critical Analysis of the Bard v. M3 Systems Decision, INTERNATIONAL LEGAL STRATEGY (May 2002). Dangers in Joint Patent Ownership, LES NOUVELLES, JOURNAL OF THE LICENSING EXECUTIVES SOCIETY, Vol. XXXII No. 1 (Mar. 1998). Co-author, Venue Selection for Patent Infringement Actions in the United States, INTERNATIONAL LEGAL STRATEGIES, Vol. VI-12 (1997). Patent Damages, Paper prepared for Herbert F. Schwartz, Esq. and presented at the ABA Intellectual Property Law Section Meeting (Aug. 1993). Patentee U.S. Patent Nos: 7,341,254, 7,258,342.

Hourly Rate: $650.00 Daily Rate: Not provided Study Rate: $650.00/hr Cancellation: Not provided Cancellation Period: Not provided Comment: Compensation rates, established by the AAA, are set forth in the applicable Consumer Mediation Procedures.

English; French; German

United States of America

New York, New York