Jayson Cohen is of counsel in the firm’s Intellectual Property Group. Mr. Cohen focuses his practice on litigation, arbitration, and counseling related to patents and other intellectual property.
Mr. Cohen has extensive experience in all stages of IP litigation and arbitration—from prefiling investigation, the pleading stage, and preliminary injunction practice to discovery and trial—as well as extensive experience negotiating and drafting settlements. He has represented clients in patent infringement, IP licensing, technology development, and trade-secrets disputes before numerous U.S. District Courts, the New York Supreme Court, the U.S. International Trade Commission, and the U.S. Copyright Royalty Board, as well as in ICC arbitration. He also has experience in inter partes review proceedings before the United States Patent and Trademark Office (USPTO).
Mr. Cohen’s matters have spanned a wide variety of technologies, such as:
Beyond his work in litigating IP disputes, Mr. Cohen has served as litigation counsel for transactional matters, such as acquisitions and securities offerings, and he has counseled corporate clients and hedge funds interested in understanding existing IP litigations and IP law. He has also advised clients on patent prosecution, IP protection, patent licensing programs, joint development and joint IP ownership agreements, IP rights in supply agreements, and marketing claims involving IP.
Mr. Cohen is dedicated to pro bono legal work. His experience includes: filing and prosecuting a civil-rights class-action lawsuit in Arkansas against the local “hot check” court and government, whose practices are alleged to violate the due-process and equal-protection rights of the poor under the U.S. Constitution by creating a modern-day debtors’ prison; obtaining reversal of a prior determination by the New York City Housing Authority that a homeless mother and her two young sons were ineligible for public housing; and securing a favorable damages award for a harassed tenant through an adversarial claims process and hearing associated with a RICO class-action settlement with a landlord–real estate company.
Prior to his legal career, Mr. Cohen gained extensive professional experience in numerous technology areas that he uses in his IP practice. These technology areas include electronics, optics, physics, communications, networks, cryptography, chemistry, mechanical devices, and software. He worked as a scientist at MagiQ Technologies, Inc., from 2000 to 2001, where he also acted as the liaison with outside counsel on patent and regulatory issues. From 2001 to 2004, he worked as a senior engineer at The MITRE Corporation. In addition, Mr. Cohen was a visiting scientist at New York University in 1999 and at the National Science Foundation FOCUS Center at the University of Michigan from 2004 to 2006. Mr. Cohen is also an inventor on two patents: one concerning efficient random-number generation using optical detection, and one concerning wavevector-division multiplexed optical communications and quantum cryptography.
Mr. Cohen writes regularly on IP-related topics. He authored the chapter “Settling Patent Cases” in a leading treatise on the law of settlement agreements and the settlement process, Settlement Agreements in Commercial Disputes: Negotiating, Drafting and Enforcement. He was a contributing editor of another leading treatise, Trade Secrets, for which he focused on developments in the law of misappropriation of trade secrets. Furthermore, Mr. Cohen has served on the Publications Committee of the New York Intellectual Property Law Association (NYIPLA) since 2013. For NYIPLA’s bimonthly publication, The Report (formerly Bulletin), he writes a regular feature entitled “IP Media Links.”
In 2015, Mr. Cohen was named a BTI Client Service All-Star by corporate counsel in recognition of his excellence in client service; he was one of only 354 lawyers and 25 IP lawyers named nationally. For 2012–2016, he was selected by Super Lawyers to the New York–Metro Rising Stars list for Intellectual Property Litigation.
Mr. Cohen earned a Sc.B. in electrical engineering and an A.B. in history magna cum laude from Brown University, where he was elected to Tau Beta Pi. He received his Ph.D. in applied physics from the University of Michigan, where he was a Regents Fellow and a Rackham Predoctoral Fellow. He received his J.D. magna cum laude from the University of Michigan Law School, where he served as a contributing editor of the Michigan Law Review and was elected to the Order of the Coif.
Mr. Cohen is registered to practice before the USPTO.
BlackBerry Limited v. Nokia Corporation, et al.(District of Delaware). Representing BlackBerry in patent litigation involving mobile-network infrastructure technology for mobile communications.
BASF Corporation v. Johnson Matthey Inc.(District of Delaware). Representing BASF in patent litigation involving catalyst systems for abatement of greenhouse gas emissions from diesel engines.
Round Rock Research LLC v. [Multiple Defendants](District of Delaware). Represented Fujitsu Semiconductor Ltd. as intervenor in four co-pending patent litigations involving semiconductor device structure, semiconductor device fabrication, and dynamic random access memory relating to consumer electronics. Settled on favorable terms.
Zond, Inc. v. Fujitsu Semiconductor Limited, et al.(District of Massachusetts). Represented Fujitsu Semiconductor in patent litigations and related inter partes review proceedings involving plasma processes in semiconductor device fabrication. Argued and won customer stay in district court litigation.
Global Interactive Media, Inc. v. A&E Television Networks, LLC (AETN)(Southern District of New York). Represented AETN against a nonpracticing entity accusing A&E’s online programming schedule of patent infringement. After successfully moving to transfer the case from Chicago to New York, the case settled on favorable terms.
BillingNetwork Patent, Inc. v. 2ndSite Inc. d/b/a FreshBooks(Middle District of Florida). Represented FreshBooks in patent litigation against nonpracticing entity concerning cloud-based accounting and billing services.
Helsinn Healthcare S.A., et al. v. Dr. Reddy’s Laboratories, Ltd., et al.(District of New Jersey). Represented Sandoz Inc. in patent litigations under the Hatch-Waxman Act involving formulations of the active pharmaceutical ingredient palonosetron, a treatment for emesis. Settled favorably before trial.
MediaTek Inc. v. Freescale Semiconductor, Inc.(Northern District of California). Represented Freescale Semiconductor in patent litigation involving bus architecture and arbitration in system-on-a-chip circuits and power management of processors in those circuits.
Alcorn Communications, LLC v. Marketwire, Inc.(Southern District of New York). Represented Marketwire (a/k/a Marketwired) against a nonpracticing entity in patent litigation involving Internet news releases.
Eastman Kodak Company v. Ricoh Company, Ltd.(Southern District of New York). Represented Ricoh in patent licensing dispute involving digital cameras.
Genentech, Inc. and City of Hope v. Glaxo Group Ltd., et al.(Central District of California). Represented Genentech and City of Hope against Glaxo and Human Genome Sciences in patent litigations involving the Cabilly II and III patents, and monoclonal antibody products Arzerra® (ofatumumab) and Benlysta® (belimumab). Filed the first case asserting the Cabilly III patent. The Arzerra® cases settled with Glaxo taking a license under the Cabilly II and III patents. The Benlysta® cases settled on undisclosed terms.
BASF Agro B.V., et al. v. Cheminova, Inc. and BASF Agro B.V., et al. v. Makhteshim Agan of North America, Inc., et al.(Middle District of North Carolina). Represented BASF against generic manufacturers in patent litigations involving the chemical synthesis and use of the pesticide fipronil. Cheminova agreed to remain out of the U.S. market until the expiration of a BASF manufacturing patent, and Makhteshim agreed not to use BASF’s patented manufacturing processes to make fipronil.
BASF Plant Science GmbH, et al. v. Pioneer Hi-Bred International Inc., et al.(District of Delaware). Represented BASF in patent litigations involving genetically modified crops and plant gene markers. The parties asserted patents that relate to the AHAS promoter and AHAS gene used in plant biotechnology, including Pioneer Hi-Bred/DuPont’s accused Optimum GAT corn. The cases settled favorably.
Distribution of the 2004 and 2005 Cable Royalty Funds(Copyright Royalty Board). Represented music performing rights organization ASCAP in dispute over distribution of the Section 111 cable compulsory copyright royalty fund. Second-chaired direct and rebuttal trials in support of music’s and ASCAP’s share of the royalty fund.
In the Matter of Certain Short Wavelength Semiconductor Lasers and Products Containing Same(International Trade Commission, 337-TA-627). Represented Nichia and Panasonic as respondents in patent investigation involving gallium nitride-based semiconductor lasers and Blu-ray Disc™ devices. Settled favorably as part of a global settlement of litigation.
Madison Tyler Holdings, LLC (MTH), et al. v. Zone Equity Group, LLC, et al.(New York Supreme Court). Represented MTH in theft-of-trade-secrets litigation relating to electronic securities trading.
L’Oréal S.A., et al. v. Estèe Lauder Companies, Inc., et al.(District of New Jersey). Represented Estèe Lauder in patent litigation involving cosmetic formulations. Settled after favorable Markman ruling from the bench led to undisputed non- infringement defense against patent claims drafted to cover the accused products.
In 2015, Mr. Cohen was named a BTI Client Service All-Star by corporate counsel in recognition of his excellence in client service. For 2012-2016, he was selected by Super Lawyers to the New York-Metro Rising Stars list for Intellectual Property Litigation.
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