Scott J. Bornstein

Scott J. Bornstein

Shareholder

Scott J. Bornstein is Co-Chair of the firm's Global Intellectual Property & Technology Practice, Chair of the firm's New York Intellectual Property & Technology Practice, Co-Chair of the firm's Global Patent Litigation Group, and serves on the firm's Executive Committee. Scott has extensive patent trial experience and has served as lead counsel in more than 100 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, financial services, food and beverage, Hatch-Waxman, materials science, medical devices, metallurgy, pharmaceutical, plastics, software and telecommunications industries. Scott has also served as Chair of the IP Section of the American Association of Pharmaceutical Scientists.

Concentrations

  • Patent litigation  
  • ANDA Hatch-Waxman litigation
  • Inter partes review (IPR) and CBM reviews
  • General IP counseling, licensing, due diligence and opinions
  • Trademark, trade dress, trade secret and copyright litigation
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Capabilities

Experience

  • Fresenius Kabi USA, LLC v. B. Braun Medical Inc.: Representation of B. Braun in connection with litigation involving 505(b)(2) application for propofol product.
  • Meda Pharmaceuticals Inc., et al v. Teva Pharmaceuticals USA, Inc.: Representation of Teva in connection with Hatch-Waxman litigation involving nasal spray DYMISTA in the District of Delaware.
  • Orexigen Therapeutics, Inc. v. Actavis Laboratories FL, Inc.: Representing Actavis/Teva in Paragraph IV challenge of Orexigen Therapeutics' patents in the District of Delaware relating to Contrave® extended-release tablets indicated for the treatment of obesity and weight management.
  • Pernix Ireland Pain Ltd and Pernix Therapeutics, LLC v. Actavis Laboratories:  Representing Actavis/Teva in Paragraph IV challenges of Pernix Ireland Pain Ltd.'s patents in the District of Delaware relating to Zohydro® extended release tablets indicated for the management of severe pain requiring daily, around the clock, long term treatment.
  • LEO Pharma A/S et al v. Actavis Laboratories UT, Inc.:Representing Actavis/Teva in Paragraph IV challenge of Leo Pharma A/S's patents in the District of Delaware relating to Picato® gel used to treat actinic keratosis on the skin.
  • Mallinckrodt LLC, et al. v. Watson Laboratories, Inc.: Representing Actavis/Teva in Paragraph IV challenge of Mallinckrodt LLC's patents in the District of New Jersey relating to Xartemis® extended-release tablets for the treatment of acute pain requiring opioid treatment and for which alternative treatment options are inadequate.
  • Aralez Pharmaceuticals Inc. et al. v. Teva Pharmaceuticals USA, Inc., et al.:Representing Teva in Paragraph IV challenge of Aralez Pharmaceutical Inc.'s patents in the Eastern District of Texas relating to Yosprala®, which is indicated for patients requiring aspirin for secondary prevention of cardiovascular and cerebrovascular events and who are at risk of developing aspirin-associated gastric ulcers.
  • Shire Development, LLC, et al. v. Watson Pharmaceuticals et al.: Representing Actavis/Teva in Paragraph IV challenge of Shire Development's patent in the Federal Circuit relating to Lialda®, indicated for induction and maintenance of remission in patients with active, mild to moderate ulcerative colitis.
  • Recro Gainesville LLC v. Actavis Laboratories FL Inc.: Representing Actavis/Teva in Paragraph IV challenge of Recro Gainesville LLC in the Federal Circuit relating to Pernix's patents on Zohydro® extended release tablets indicated for the management of severe pain requiring daily, around the clock, long term treatment.
  • Glaxo, Inc. v. Novopharm Ltd.: Participated in an effort to enforce the single most valuable patent franchise of the 1990's for a large pharmaceutical company against more than a dozen generic companies seeking ANDA approval.°
  • Hanmi Pharmaceutical Co., Ltd.: Represented Hanmi Pharmaceutical in connection with an NDA filing under 505(b)(2) for S-omeprazole and related patent due diligence.
  • Alcoa Inc./ Arconic: Serving as global IP counsel since 2006 for Alcoa Inc., the world's largest aluminum company. In that capacity, responsible for oversight of prosecution, licensing, due diligence and general IP counseling.
  • KKG, LLC v. Reynolds Consumer Products Inc., et al.: Lead counsel for 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.
  • Symbology Innovations, LLC v. General Mills, Inc.: Represented General Mills in the Eastern District Texas before the Honorable Judge Schroeder. The patents involved the use of QR codes to directly access product information on the Internet. Settled with plaintiff on terms very favorable to client.
  • Reflection Code LLC v. General Mills, Inc.: Represented General Mills in the Eastern District Texas before the Honorable Judge Gilstrap. The patents involved the use of QR codes to access a database that redirects a user to product information on the Internet. The case settled on favorable terms.
  • 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.
  • 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 lead 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.: Lead counsel for 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.
  • Tru-Balance, LLC v. Alcoa Inc.: Lead counsel for Alcoa Inc. in a patent litigation initiated by Tru-Balance in the District of Colorado. The asserted patent related to a wheel centering pin device. Recently prevailed on a motion to stay the case pending a reexamination initiated by GT and all claims of the patent were found invalid by the PTO.
  • 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.
  • CryptoPeak Solutions, LLC v. 3M Company; CryptoPeak Solutions, LLC v. Charles Schwab & Co, Inc.; CryptoPeak Solutions, LLC v. optionsXpress, Inc.: Lead counsel for 3M Company, Charles Schwab and optionsXpress in connection with a patent suit initiated by CryptoPeak Solutions, LLC in the Eastern District of Texas before Judge Schroeder. The asserted patent generally relates to securely generating public and private encryption keys in a verifiable manner.
  • Ruby Sands LLC v. Charles Schwab Corp.; Ruby Sands LLC v. Fidelity Investments : Lead counsel for Charles Schwab and Fidelity in litigations in the EDTX before Judge Gilstrap. The asserted patent related to the capture and transfer of images from one image transfer device to another.  Settled with plaintiff on terms very favorable to clients.
  • Joao Bock Transaction Systems, LLC v. Bank of Stockton, et al.: Lead counsel for Farmers and Merchants Bank in a patent litigation initiated by Joao Bock in the Central District of California. The asserted patent relates generally to apparatus and method for providing account security.
  • Joao Bock Transaction Systems, LLC v. Scottrade, Inc.: Lead counsel for Scottrade, Inc. in connection with the defense of a patent litigation initiated by Joao Bock in the Northern District of Georgia. The asserted patents generally relate to on-line secure transactions. Moved to transfer the case from Georgia to the Eastern District of Missouri.
  • LBS Innovations LLC v. American Express, et al.: Lead counsel for American Express in a multi-defendant litigation initiated by LBS Innovations in the Eastern District of Texas. The patent related generally to a wireless system for providing services to mobile computers.
  • Leon Stambler v. Amazon.com, Inc., et al.: Appointed lead counsel for defendant Office Depot in a multi-defendant case filed by Leon Stambler in the Eastern District of Texas before the Honorable Judge Folsom. The asserted patents relate to secure online payment services.
  • Leon Stambler v. Intuit Inc., et al.: Lead counsel for S1 Corporation and International Bancshares in a patent litigation in the Eastern District of Texas. The patents-in-suit generally relate to encryption technology for securing online technologies.
  • Leon Stambler v. Merrill Lynch & Co., et al.: Lead counsel for Metavante Corporation, a division of Fidelity Information Services, in connection with alleged infringement of patents relating to secure online payment services. The case was initiated by patent holding company in the Eastern District of Texas before the Honorable Judge Folsom.
  • Mesa Verde Strategies, LLC v. E*TRADE Financial Corporation, et al.: Lead counsel for Fidelity (FMR, LLC), optionsXpress, Inc. and Peregrine Financial Group in relation to allegations of infringement by a patent holding company in the Central District of California.
  • NextCard, LLC, v. American Express Company, et al.: Lead counsel for American Express in multi-defendant patent litigation in the Eastern District of Texas before Judge Ward.  NextCard asserted 4 patents generally relating to systems and methods for instant approval of credit card applications on-line.  GT secured a favorable settlement early in the discovery period.
  • Trading Technologies International, Inc. v. optionsXpress Holdings, Inc.: Appointed lead counsel for optionsXpress, a subsidiary of Charles Schwab & Co., in a patent litigation initiated by Trading Technologies in the Northern District of Illinois. The 12 asserted patents generally relate to electronic trading of commodities and securities. GT prevailed on its motion for summary judgment resulting in invalidity, unenforceability or non-infringement of 8 of the patents-in-suit.
  • 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.
  • 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: Lead counsel for 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: Lead counsel for large avionics company against five patents asserted by Honeywell relating to terrain awareness 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 unenforceable due to inequitable conduct.
  • Ambato Media, LLC v. Garmin International, Inc., et al.: 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.
  • Akamai Technologies, Inc. v. Limelight Networks, Inc.:  Representation of Limelight Networks in connection with 11 IPRs against Akamai Technologies relating to content delivery network patents.
  • Digital Audio Encoding Systems, LLC v. LG Electronics, Inc., et al.: Representing LG in a patent infringement action in the District of Delaware concerning a patent relating to the encoding of signals based on a property of receiving device.
  • Aloft Media, LLC v. Compuware Corp., et al.: Lead counsel for optionsXpress, Inc. against Aloft in a patent case in the Eastern District of Texas. The asserted patents relate to online decision-making technology.
  • Acted as lead counsel for consumer electronics developer in a patent litigation originally filed in the Southern District of New York in connection with allegations of infringement relating to digital streaming technology. Based on our motion to transfer, the case is presently pending in the Northern District of California.
  • GeoTag Inc. v. Gucci America Inc., et al.: Appointed lead counsel for defendant Skechers USA, Inc. in a multi-defendant case filed by Geotag, Inc. in the Eastern District of Texas. The asserted patent generally relates to geographically organizing information from the Internet.
  • IpLearn, LLC v. Blackboard Inc.: Appointed lead counsel for defendant Blackboard Inc. in a case filed by IpLearn, LLC in the District of Delaware. The 11 asserted patents relate generally to computer-aided group-learning methods and systems.
  • T-REX PROPERTY AB v. JCDecaux North America, Inc., et al.: Representing JCDecaux in a patent infringement action in the Eastern District of Texas initiated by Swedish entity T-Rex.  The asserted patents relate to systems and methods for displaying information on electronic display screens and T-Rex has accused JCDecaux’s digital billboards and signage of infringing these patents.
  • NetJumper Software, LLC v. Google, Inc.: Appointed lead counsel for Google in a patent litigation initiated by NetJumper in the Eastern District of Michigan. The patent relates to web browser plug-in software for navigating search engine query results.
  • Secure Axcess, LLC v. Bank of America Corp., et al.: Lead counsel for North Dallas Bank & Trust in a patent litigation initiated by Secure Axcess in the Eastern District of Texas. The asserted patent relates to a system and method for authenticating a web page.
  • Ogma, LLC v. 3M Company, et al.: Lead counsel for 3M Company in connection with a patent suit initiated by Ogma, LLC in the Eastern District of Texas relating to a patent generally relating to television display formatting technology.
  • SBJ IP Holdings 1, LLC v. Blockbuster Inc., et al.: Lead counsel for Toys "R" Us, Inc. in a patent litigation initiated by SBJ IP Holdings 1, LLC in the Eastern District of Texas before Judge Ward. The asserted patent relates to generating and displaying pre-customized web pages.
  • CareFusion 303 Inc. v. B Braun Medical Inc.: Lead trial counsel for B Braun Medical Inc. in connection with the defense of a claim for patent infringement by CareFusion 303. The asserted patents generally relate to medical valve devices. After prevailing on multiple discovery motions, we obtained substantial monetary sanctions against the plaintiff for discovery misconduct.  In a very rare ruling, the court also granted B. Braun’s motion for summary judgment on its defense of laches, reducing the potential damages at trial by approximately 90-95 percent.  And, two days before trial the Court granted B. Braun's motion to dismiss the case with prejudice as an evidentiary sanction against plaintiff and revoked the pro hac vice applications of counsel for plaintiff for a period of three years.
  • B. Braun Melsungen AG et al v. Becton, Dickinson and Company, et al.: Representation of B. Braun in a litigation involving infringement by Becton, Dickinson and Company of 10 patents generally relating to IV catheter safety systems. The case is presently pending in the District of Delaware.
  • EVM Systems, LLC v. Rex Medical, L.P., et al.: Trial counsel for Rex Medical, .LP. and Argon Medical Inc. in patent litigation initiated by a non-practicing entity called EVM Systems, a subsidiary of Acacia. Obtained a jury verdict of non-infringement. The case was tried in the Eastern District of Texas, Tyler Division before the Honorable Judge Robert W. Schroeder, III. After a five-day trial, the jury returned its non-infringement verdict in just under two hours.
  • Rydex Technologies LLC v. B. Braun Medical Inc., et al.:  Represented B. Braun Medical Inc. in multi-defendant patent lawsuit in the District of Delaware concerning U.S. Patent Re. No. 5,913,180 C1 and electronic intravenous medical pump controls.
  • Barry v. Medtronic Inc. – Lead trial counsel for Medtronic in a litigation involving surgical methods and systems for correcting severe spinal deformities in the EDTX.
  • Augustine Medical, et al. v. LMA International, et al.: As counsel, arranged for the prompt dismissal of a declaratory judgment action which challenged the validity and enforceability of a patent directed to anesthesia delivery devices.°
  • Delcath Systems, Inc.: Retained by a publicly traded medical device company to provide general IP advice. The technology involves the use of balloon catheters to isolate specific organs for the purpose of supplying concentrated doses chemotherapy agents.
  • Enzo Biochem. Inc., et al. v. Affymetrix, Inc.: Lead counsel for Enzo Biochem in connection with eight patent litigations relating to methods and devices for labeling, hybridization and detection of nucleic acids.
  • OrSense Ltd.: Representation of Israeli medical device manufacturer in connection with IP due diligence relating to device for non-invasive monitoring of blood constituents.
  • Ortho Pharmaceutical Corp. v. Miles Laboratories, Inc.: On behalf of major pharmaceutical company, prosecuted flow cytometer (blood analyzer) technology against large medical device manufacturer through trial.°
  • Pfizer Inc. v. Perrigo Co.: Participated in a patent trial on behalf of a major pharmaceutical company in the Southern District of New York. Before a nine member jury, asserted the patent for a well-known consumer product against the world's largest supplier of private label, generic goods.°
  • Princeton Biochemicals, Inc. v. Beckman Coulter, Inc.: Lead trial counsel in a ten-day jury trial, in which a patent relating to capillary electrophoresis technology was asserted against a multi-national instrument supplier.°
  • W. Zohmann v. B. Braun Melsungen AG & B. Braun Medical Inc.: After a five-day jury trial, defeated a multimillion-dollar claim for infringement of two patents directed to pencil point spinal needles on behalf of B. Braun.°

°These representations were handled by Mr. Bornstein prior to his joining Greenberg Traurig, LLP.

Recognition & Leadership

  • Listed, Managing IP Magazine's World IP Handbook and Survey, "IP Stars," 2013-2017
  • Listed,IAM Magazine, 2011-2016
    • Listed, "IAM Patent 1000," Litigation, 2012-2015 and 2017
    • Listed, "IAM Patent Litigation 250: The World's Leading Patent Litigators," 2011
  • Listed, Super Lawyers magazine, New York Metro Super Lawyers, 2010-2016
  • Listed, LMG Life Sciences, "Life Science Star," 2012-2016
  • Shortlisted, Managing IP magazine, "Outstanding IP Litigator – New York," 2013
  • Co-Chair, American Association of Pharmaceutical Scientists, IP Committee
  • 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

Credentials

Education
  • J.D., Temple University Beasley School of Law, 1995
  • B.S., Biology, Indiana University Bloomington, 1992
    • Concentrations of study in genetics and chemistry
Admissions
  • 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