Allan A. Kassenoff

Allan A. Kassenoff

Shareholder

Allan Kassenoff is an experienced patent litigator with over 18 years of experience. He has participated in three patent trials, including two of which Allan ran on a day-to-day basis and took key witnesses at trial. In addition to his trial work, Allan manages his case load on both a day-to-day basis as well as devising big-picture strategy. He has taken dozens of depositions and argued motions and conducted Markman hearings in federal courts throughout the country. Allan's experience spans a wide range of technologies and industry sectors, including financial services, aerospace, automotive, avionics, biotechnology, chemical, consumer products, electronics and pharmaceutical.

Concentrations

  • Patent litigation
  • Pharmaceutical, biotechnology, and chemical intellectual property law

Capabilities

Experience

  • Barry v. Medtronic Inc.:  Representation of Medtronic in a litigation involving surgical methods and systems for correcting severe spinal deformities. The case is presently pending in the EDTX. Successfully moved to disqualify lead counsel for plaintiff based on likelihood that they would necessarily be witnesses on issues of inequitable conduct at trial. 
  • 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.
  • DietGoal Innovations LLC v. General Mills Sales, Inc.:  Represented General Mills in a patent infringement action concerning a patent related to diet planning.  Successfully transferred the case from the Eastern District of Texas to the Eastern District of Virginia.
  • IpLearn, LLC v. Blackboard Inc.: Represented Blackboard in a patent case involving on-line educational software.
  • CyberSource v. Retail Decisions: Represented Retail Decisions, a UK-based financial services company, in a patent litigation before Chief Judge Patel in the Northern District of California against CyberSource. The asserted patent relates to methods of detecting fraud in on-line credit card transactions. Prevailed on motion for summary judgment of invalidity of all asserted claims based on the "machine or transformation" test enunciated In re Bilski. 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.
  • Leon Stambler v. BankUnited, Inc. and BankUnited, National Association: Represented BankUnited in a patent litigation action in the Southern District of Florida concerning encryption technology used in the banking industry. The plaintiff dismissed the case with prejudice with no payments being made. 
  • Honeywell International Inc. v. Furuno Electric Co. Ltd., et al.: Represented Navico in a multi-patent case brought by Honeywell in the District Court of Minnesota.  
  • Joao Bock Transaction Systems, LLC v. Bank of Stockton, et al.: Represented Farmers and Merchants Bank of Long Beach in a patent case involving account limitations placed on on-line banking transaction.
  • Secure Axcess, LLC v. Bank of America Corp., et al.: Represented North Dallas Bank and Trust in a patent case involving a picture authentication system for on-line banking.
  • Parallel Iron v. TeleNav, Inc.: Lead counsel for TeleNav, a leading provider of location-based services (LBS) for smartphones, in a patent case in the District Court of Delaware involving data storage via high throughput storage devices.
  • Network Signatures, Inc. v. General Mills, Inc.: Represented 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.
  • 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. Invalidated all asserted claims under §101 on motion to dismiss.
  • Ambato Media, LLC v. Garmin International, Inc., et al.: Represented Garmin International, Inc. in a multi-defendant case filed by Ambato Media in the Eastern District of Texas before the Honorable Judge Ward. The asserted patent relates 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.
  • Taranis IP LLC v. Garmin International, Inc., et al.: Represented 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.
  • Joao Bock Transaction Systems, LLC v. Scottrade, Inc.: Represented 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. Successfully moved to transfer the case from Georgia to the Eastern District of Missouri.
  • Tru-Balance, LLC v. Alcoa Inc.: Representing 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. 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.
  • SBJ IP Holdings 1, LLC v. Blockbuster Inc., et al.: Represented 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.
  • Minkus Electronic Display Systems Inc. v. Adaptive Micro Systems LLC, et al.: Representation of 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.
  • Leon Stambler v. Amazon.com, Inc., et al.: Represented 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.: Represented 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.: Represented Metavante Corporation, a division of Fidelity Information Services, in connection with alleged infringement of patents relating to secure online payment services.
  • 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.
  • Selecto, Inc. v. Everpure, LLC and Pentair Filtration, Inc.: Represented of Pentair Corporation in connection with a litigation in the Central District of California involving infringement by Selecto of a patent relating to modular water filtration devices.
  • Poly-America L.P. v. Presto Products Co.: Representing Presto, a subsidiary of Alcoa, in a patent litigation pending in the Eastern District of Texas relating to methods of manufacturing "wave cut" plastic trash bags.
  • Every Penny Counts, Inc. v. Valutec Card Solutions, LLC et al.: Defending Valutec against allegations of infringement of a patent relating to prepaid gift cards. Obtained a final judgment in favor of Valutec for non-infringement at the Markman hearing.
  • Honeywell v. Universal Avionics: Defending Universal Avionics against Honeywell's assertion of five patents relating to terrain awareness and warning systems used in aircraft.
  • Universal Avionics v. Optima Technology Group et al.: Representing Universal Avionics in a declaratory judgment action asserting invalidity and non-infringement of two aviation technology patents, together with various state law claims.
  • Alcoa Inc. v. The PackMate Co. et al.: Brought action on behalf of Alcoa in the Eastern District of Virginia for infringement by PackMate of patents, trademarks and copyrights relating to Alcoa's Handi-Vac® vacuum-sealing system.
  • Enzo v. Amersham Biosciences, Inc. et al.: Representing Enzo in multiple patent litigations relating to methods and devices for labeling, hybridization and detection of nucleic acids used in the detection of disease.
  • Alcoa Inc. v. Alcan: Asserted patent on behalf of Alcoa relating to the aluminum alloy used to construct the Boeing 777. Alcoa accepted Alcan's offer of judgment to cease selling and offering for sale the infringing alloy.
  • Illinois Tool Works Inc. v. Alcoa Inc. & Reynolds Consumer Products, Inc.: Represented Alcoa and Reynolds in defense of claims for patent and trademark infringement relating to plastic bag technology. Resulted in cross-license agreement favorable to our clients.
  • Hanmi Pharmaceutical Co., Ltd.: Representation of Hanmi Pharmaceutical in connection with an NDA filing under 505(b)(2) for S-omeprazole and related patent due diligence.
  • The Rockefeller University & Chiron Corp. v. Centocor, Inc. & Abbott Laboratories: Represented Rockefeller University and Chiron (which was acquired by Novartis) in an action alleging patent infringement of antibody products REMICADE® and HUMIRA®. The litigation resulted in settlements in which each defendant took a royalty-bearing license to our clients' patents.°
  • Pfizer v. Dr. Reddys' Laboratories: Brought patent infringement action on behalf of Pfizer based on Dr. Reddys' filing of a "paper" NDA concerning Pfizer's NORVASC® heart medicine. Resulted in a precedent-setting Federal Circuit decision in favor of Pfizer interpreting the scope of protection during a patent term restoration period.°
  • Union Carbide Corp. v. Shell Oil Co.: Represented Union Carbide in a three-week jury trial concerning three patents claiming ethylene oxide catalysts.°
  • Chiron Corp. v. Roxane Laboratories, Inc.: Brought patent infringement action on behalf of Chiron based on Roxane's filing of an ANDA concerning Chiron's tobramycin TOBI® product. Resulted in Roxane withdrawing its ANDA.°

°Some of the above representations were handled by Mr. Kassenoff 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, "IAM Patent 1000," Litigation, 2012-2017

Credentials

Education
  • J.D., University of Pennsylvania Law School, 1998
    • Articles Editor, Journal of International Economic Law
  • B.S., Chemical Engineering, School of Engineering & Applied Science, Columbia University, 1995
Admissions
  • New York
  • New Jersey
  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Southern District of New York
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the District of Colorado
  • U.S. District Court for the Eastern District of Texas