Greenberg Traurig LLP Scott J. Bornstein Chair, New York Intellectual Property & Technology Practice; Co-Chair, Global Patent Litigation Group Experience: -Intellectual Property & Technology -Intellectual Property Litigation -Life Sciences & Medical Technology -Pharmaceutical, Medical Device & Health Care Litigation Education: -J.D., Temple University James E. Beasley School of Law, 1995 -B.S., Biology, Indiana University Bloomington, 1992 Concentrations of study in genetics and chemistry Admitted to Practice: -New York -U.S. District Court for the Eastern District of New York -U.S. District Court for the Southern District of New York -U.S. District Court for the Western District of New York -U.S. District Court for the Eastern District of Texas -U.S. Court of Appeals for the Federal Circuit -U.S. District Court for the District of Colorado Scott J. Bornstein is Chair of the firm's New York Intellectual Property & Technology Practice and Co-Chair of the firm's Global Patent Litigation Group. Scott has extensive patent trial experience and has served as lead counsel in more than 75 patent litigations. He has broad experience in patent, trademark and copyright litigation, licensing and general IP counseling for a wide variety of national and international clients. Scott also has wide-ranging experience working with clients to develop comprehensive prosecution and enforcement strategies which support their business objectives. Scott's clients are involved in a variety of technologies and industry sectors, including aerospace, automotive, avionics, biotechnology, business methods, chemical, consumer products, eCommerce, electronics, energy and filtration. He also represents clients in the financial services, food and beverage, instrumentation, materials science, medical devices, metallurgy, pharmaceutical, plastics, software and telecommunications industries. Scott is also Chair of the IP Section of the American Association of Pharmaceutical Scientists. Areas of Concentration: -Patent litigation -General IP counseling, licensing, due diligence and opinions -Trademark, trade dress, trade secret and copyright litigation Professional & Community Involvement: -Co-chair, IP Committee, American Association of Pharmaceutical Scientists -Chair, IP Section-Women's Bar Association for the State of New York -Member, American Bar Association -Member, New York Intellectual Property Law Association -Member, American Intellectual Property Law Association -Member, InMotion, Pro Bono Matters -Judge, Fifth Annual Columbia University Mock Trial Tournament, January 2008 Awards & Recognition: -Listed, Managing IP Magazine's World IP Handbook and Survey, "IP Stars," 2013 -Shortlisted, Managing IP magazine, "Outstanding IP Litigator – New York," 2013 -Selected, "Life Science Star," LMG Life Sciences, 2012-2013 -Listed, Super Lawyers magazine, New York Super Lawyers, 2010-2012 -Listed, IAM Magazine "The IAM Patent 1000," Litigation, 2012-2013 "IAM Patent Litigation 250: The World's Leading Patent Litigators,” 2011 -Listed, The Legal 500 United States, 2008-2010 Significant Representations: -Alcoa Inc.: Appointed global IP counsel for Alcoa Inc., the world's largest aluminum company. In that capacity, responsible for oversight of prosecution, licensing, due diligence and general IP counseling. -CareFusion 303 Inc. v. B Braun Medical Inc.: Representation in connection with the defense of a claim for patent infringement by CareFusion 303. The asserted patents generally relate to medical valve devices. -CyberSource Corporation v. Retail Decisions, Inc.: As substitute lead counsel, promptly prevailed on motion for summary judgment of invalidity of all asserted claims by CyberSource Corp. against Retail Decisions, Inc. based on the "machine or transformation" test in In re Bilski. The case was pending in the Northern District of California before Chief Judge Patel. After CyberSource appealed the district court's decision, the Federal Circuit affirmed and held that the claims failed the “machine-or-transformation” test and claimed an unpatentable mental process. -Every Penny Counts v. Valutec Card Solutions, LLC, et al.: Lead trial counsel for Valutec, a subsidiary of Metavante, in a litigation brought by a patent holding company in the Middle District of Florida for alleged infringement by Valutec's gift cards. Obtained a final judgment in favor of Valutec for non-infringement at the Markman hearing. Affirmed on appeal with costs awarded to Valutec. -Furnace Brook LLC v. Aéropostale, Inc., et al.: Lead counsel for Levi Strauss & Co., Dick's Sporting Goods, Inc, and Aéropostale, Inc. in a patent litigation initiated by Furnace Brook, a patent troll, in the Northern District of Illinois. The accused systems are e-commerce websites which permit online sales and marketing. On September 29, 2010, Honorable Judge Virginia M. Kendall of Northern District of Illinois granted defendants' motion for summary judgment of collateral estoppel, resulting in dismissal of the case. The decision was affirmed on appeal. -Glory Licensing LLC v. Toys "R" Us, Inc.; Glory Licensing LLC v. Sears Holding Corporation: Representation of Sears Holding Corporation and Toys "R" Us, Inc. in connection with separate actions initiated by Glory Licensing in the District of New Jersey. The patents in suit relate to collecting and extracting data from hard copy documents. Successfully invalidated all asserted claims under §101 on our motion to dismiss. -Honeywell v. Universal Avionics: Defended large avionics company against five patents asserted by Honeywell relating to terrain awareness and warning systems in the District of Delaware. Prevailed on summary judgment of invalidity and non-infringement against over 100 asserted claims. Presented oral argument on appeal before the Federal Circuit. -Network Signatures, Inc. v. General Mills, Inc.: Lead counsel for General Mills in a patent litigation in the Central District of California. The patent related generally to a method of using public and private keys to generate a cryptographic signature which can be used to authenticate information. Succeeded in rendering all asserted claims enforceable due to inequitable conduct. -Ambato Media, LLC v. Garmin International, Inc., et al.: Appointed lead counsel for defendant Garmin International, Inc. in a multi-defendant case filed by Ambato Media in the Eastern District of Texas before the Honorable Judge Rodney Gilstrap. The asserted patent related to navigation devices. After prevailing at the Markman hearing, Ambato was forced to drop its allegation of infringement against over 95% of the accused products. Consumer Products/Materials Science: -Alcoa Inc. v. Alcan Inc., et al.: In a cooperative effort with Cravath, Swaine & Moore, LLP, successfully asserted patent on behalf of Alcoa Inc. against Alcan relating to aluminum alloy used to construct the Boeing 777. -Bennett v. Alcoa Inc., et al.: Appointed lead counsel for defendants Alcoa Closure Systems International and Erie Plastics in a multi-defendant case filed by a patent holding company in the Eastern District of Texas before the Honorable Judge Ward. The asserted patents related to closure systems for beverage containers. -KKG, LLC v. Reynolds Consumer Products Inc., et al.: Represented Reynolds Consumer Products Inc. and Wal-Mart Stores, Inc. in a patent litigation in the Eastern District of Texas brought by a patent holding company in connection with Reynolds Slow Cooker Liners. After a three day trial, the jury returned a verdict of non-infringement in approximately one hour. -Leslie Zemeckis v. Sterling & Ross Publishers Inc.: Represented Sterling & Ross Publishers in connection with arbitration against Leslie Zemeckis relating to breach of contract and alleged copyright infringement. The case settled favorably after a lengthy arbitration hearing. -Metaldyne Company v. Alcoa Inc.: Lead counsel for Casting Technologies Company, a subsidiary of Alcoa Inc., in connection with a trade secret litigation in the Eastern District of Michigan involving cast aluminum components for the automotive industry. -Minkus Electronic Display Systems Inc. v. Adaptive Micro Systems LLC, et al.: Represented six defendants in a patent litigation initiated by Minkus Electronic Display Systems Inc. in the District of Delaware before Chief Judge Robinson. The complaint alleged infringement of a patent generally relating to digital display technology. -Poly-America L.P., et al. v. Presto Products Company: Retained by Presto Products to serve as lead counsel in a patent litigation in the Eastern District of Texas. The patent in dispute related to methods of manufacturing "wave cut" plastic bags. -Reynolds Consumer Products v. LPS Industries, Inc.: Appointed counsel for Reynolds Packaging Company in a "rocket docket" litigation in the Eastern District of Virginia in a case involving infringement by PackMate of patents and trademarks relating to the Handi-Vac vacuum sealing system for recloseable plastic bags. -Selecto, Inc. v. Everpure, LLC and Pentair Filtration, Inc.: Represented Pentair Corporation in connection with a patent litigation in the Central District of California involving infringement by Selecto of a patent relating to modular water filtration devices. The case settled on favorable terms immediately after we obtained a favorable Markman ruling. -Taranis IP LLC v. Garmin International, Inc., et al.: Lead counsel for Garmin International in a patent litigation initiated by Taranis IP in the Northern District of Illinois. The asserted patent generally relates to synthetic vision systems for vehicles.
