Robert Isackson

Partner

Practicing for over thirty years, Rob Isackson is an accomplished, front-line IP litigator, counselor, and advisor fluent in all aspects of intellectual property: patents, trade secrets, trademarks, copyrights and designs. With a primary focus on IP litigation at the trial level, particularly patent and trade secret disputes and commercial disputes over technology issues, Rob’s IP practice includes appellate litigation as well as providing strategic counseling, advice and opinions on strength of IP rights, freedom to operate and litigation risks, patent and trademark prosecution, portfolio assessments, trade secret audits, negotiation and drafting of IP transactions and agreements, and M&A IP due diligence.

Rob is a first chair litigator, with nine patent trials – four as first chair (three jury and one bench), one as second chair (jury), and four as part of the trial team (jury); and two international arbitration trials – one as first chair and the other as second chair – concerning commercial disputes over technology transfer and cooperation agreements. He also has been the trial team lead counsel in over forty patent, nine trade secret, three trademark and two copyright cases filed in district courts in more than twenty states. Rob also has hundreds of U.S. patent applications that he has filed and prosecuted to issuance.

Rob’s clients range from Fortune 100 companies to startups, and he has worked in a wide variety of industries and technologies, including computer hardware and software, consumer electronics, agricultural biotechnology, pharmaceuticals, medical diagnostic instrumentation and reagents, nutraceuticals, invasive, non-invasive, and minimally invasive medical devices, business methods, semiconductors, silicone and plastic materials, luggage, and consumer products.

Rob’s approach to client service is to work with the business team to identify the problem in the business context. Then, using his diverse experience to bring a fresh perspective, he seeks to identify the key issues and develop creative solutions and cost-effective strategies that align with the business objective and allow the client to move its business forward.

Outside of his practice, Mr. Isackson is actively involved in pro bono work, in which he represents the Hispanic Scholarship Fund, an organization dedicated to helping students of Hispanic heritage to obtain a college degree. He has also represented TigerCandy Arts, Inc., a micro-company that designs and custom-builds therapeutic hand sock puppets; and the SET Foundation, dedicated to bringing industry and economic improvement to rural America. Rob is a former board member of The Community Chest of Englewood, Englewood Cliffs, and Tenafly, New Jersey. He is also a current board member of the New York Intellectual Property Law Association and is active in bar association work in trade secrets, amicus briefs, pending IP legislation, and he speaks regularly on IP issues at continuing legal education seminars.

Education

• University of Michigan Law School, J.D., 1973

• University of Michigan College of Engineering, BSE (Electrical), magna cum laude, 1978

Representative Matters

Patent Litigation

• High Point Design LLC v. Buyer's Direct, Inc. (S.D.N.Y.; Fed. Cir.) Co-lead counsel in an action for design patent and trade dress infringement to help re-strategize the use after prior counsel's grant of summary judgment was reversed on appeal. Identified new dispositive issues, revised prior arguments, and obtained new summary judgments of patent invalidity and non-infringement and dismissal of the trade dress claim. Dismissal of the case was confirmed on appeal.

• Monsanto Company v. Mycogen Corporation (S.D. Cal.) Lead trial counsel in a five-day trial de novo in a patent interference case. Obtained a judgment sustaining Mycogen's patent rights as the first to invent a particular isolated Bt toxin gene.

• Syngenta Seeds v. Dow AgroSciences, Monsanto and Pioneer Hi-Bred Int'l (D. Del.) Obtained a complete defense verdict in a patent infringement jury trial case involving insect resistant transgenic corn. Two patents were dismissed as not infringed and the third patent was found invalid by the jury on multiple grounds. Affirmed on appeal.

• Secured Mail Systems v. Microdynamics Corporation (C.D. Cal., transferred to N.D. Ill.) Lead trial counsel for Microdynamics defending a patent infringement case involving postal bar code technology to expedite mail processing at lower cost. The California court consolidated several co-pending cases with more than 17 defendants. Successfully engineered a motion to sever the claims against Microdynamics and transfer them to N.D. Ill., leaving the defendants from two other cases behind in California. The case against Microdynamics thereafter promptly settled on confidential terms.

• CSG Systems v. TOA Technologies (E.D. Tex., transferred to N.D. Ohio). Lead trial counsel defending TOA in a patent infringement action on cloud-based mobile workforce management technology. Through early discovery, CSG was persuaded to drop one of its two asserted patents. After TOA moved to transfer the case to Ohio, the Texas court held an evidentiary hearing and denied TOA's motion. TOA then sought and obtained a writ of mandamus from the Federal Circuit ordering the case transferred to N.D. Ohio. Shortly after the transfer, the case settled on confidential terms.

• Biax Corp. v. Intel Corp. (E.D. Tex.) Represented Intel in a four patent infringement action concerning various microprocessor parallel processing technologies involving Intel's Pentium® 4, Xeon®, Itanium® and Itanium® 2 microprocessors. After winning several critical pretrial motions, including a court order that certain documents BIAX had withheld had to be produced, and just 30 minutes before the opening statements were scheduled to begin in a two-week jury trial, the case was settled.

• StreamServe v. Exstream Software and Hewlett-Packard (D. Del.) StreamServe, a Swedish company, pioneered and patented software for transforming input data streams having diverse formats into output data having a uniform file format for publishing. Served as lead trial counsel for StreamServe in a patent action against Exstream and HP on StreamServe's foundational patent. After fact discovery closed, and during expert discovery, the case was settled on confidential terms.

• Johnson & Johnston Associates Inc. v. R.E. Service, Inc. (N.D. Cal.) Lead trial counsel in a two-week jury trial, obtaining a jury verdict of willful infringement of a patent concerning copper foil laminate technology used in manufacturing multilayer printed circuit boards, a $4.3 million judgment (treble damages, attorney fees and costs), and a permanent injunction. Prior to trial, the court granted summary judgment striking RES's patent invalidity defenses and dismissing as not infringed the four RES patents asserted.

• Medtronic Inc. v. Synthélabo, Ela Médical and L'Oréal (D. Minn.) Led the patent team opposing twelve asserted U.S. patents. Settled after a favorable German court infringement ruling in a counter patent suit brought on an Ela patent against Medtronic in Germany.

• Veritec v. I.D. Matrix (M.D. Fla.) Lead trial counsel for RVSI/CiMatrix (f.k.a. International Data Matrix, Inc.) in a case involving cross-claims of patent infringement, misappropriation of trade secrets and unfair competition over the rights to the Data Matrix two-dimensional bar code. Quickly developed invalidity and unenforceability defenses to Veritec's patent, and filed summary judgment motions that led to stipulated dismissal of all claims and a favorable settlement.

Trade Secret and Technology Litigation

• Alenia Aermacchi v. Rohr Inc. (American Arbitration Association) Led the IP team in arbitration over contract and IP disputes related to advanced composite material aircraft components. Settled on favorable terms prior to hearing.

• Platt v. Bayer Corp. (C.D. Cal.) Alleged misappropriation of trade secrets and breach of fiduciary duty regarding Bayer's Aleve Cold & Sinus® product. Obtained voluntary dismissal of trade secret claims and, following key deposition, a settlement on favorable terms.

Trademark Litigation

• Delta Funding, Inc. v. Delta Air Lines (S.D.N.Y) Represented Delta Air Lines, Inc. in a cybersquatting case over rights to the URL www.delta.com. Case settled on favorable terms during expert discovery.

• Represented Federation Internationale de l'Automobile (FIA) in connection with its efforts to protest its Formula 4 marks in light of FIA's announcement that it will commence a FIA sanctioned Formula 4 Championship Series for the United States in 2016. FIA's rights were protected without need for litigation.