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Justin A. MacLean

Justin A. MacLean is a shareholder in the Intellectual Property & Technology Practice of the firm's New York office. His areas of concentration include patent, trademark, copyright and trade secret litigation. Justin has been involved in all stages of litigation from pre-litigation diligence and enforcement and preliminary injunction proceedings through discovery (including electronic discovery), summary judgment, trial, and appeal as well as in inter partes review proceedings before the Patent Trial and Appeal Board. Justin has represented companies across a variety of industries and technologies both in enforcing their intellectual property rights and defending against claims of infringement.

In addition, Justin has wide-ranging experience in the areas of copyright prosecution, enforcement and counseling. He has filed copyright applications and designed copyright registration programs for clients in the apparel, software, consumer goods, and other diverse industries. A former examiner with the United States Copyright Office, he has advised clients from small, non-profit book publishers to leading digital music companies on issues such as copyright clearance, fair use, infringement avoidance, and licensing issues. Justin has also counseled writers, performing artists, publishers, and their heirs and representatives in connection with the assertion of statutory termination rights under the Copyright Act.

Concentrations

  • Patent litigation
  • ANDA Hatch-Waxman litigation
  • Inter partes review proceedings
  • Trademark and copyright issues

Capabilities

Experience

Patent Litigation and Related Matters

  • 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.
  • Uniloc 2017 LLC v. Samsung Electronics America, Inc., et al.: Representing Samsung in 3 patent cases alleging infringement of patents concerning TV receivers, wireless communication networks, and anti-theft protection for mobile phones and other devices.
  • LEO Pharma A/S et al. v. Actavis Laboratories UT, Inc.: Represented Actavis/Teva in Paragraph IV challenge of LEO Pharma A/S’s patents in the District of Delaware relating to Picato® gel indicated for the treatment of actinic keratosis.
  • Garmin Switzerland GmbH, et al. v. Navico, Inc.: Represented leading marine electronics company in patent and trademark infringement action brought by competitor in the District of Kansas. The patents related to marine route navigation technology.
  • I.SV.EL. Societa Italiana per lo Sviluppo Dell’Elettronica S.P.A. v. Rakuten Kobo Inc. et al.: Member of litigation team that represented leading e-retailer in patent infringement action brought in the District of Delaware. The asserted patents generally relate to the use of user characteristics and preference data to populate user profiles and provide content.
  • E. Technology v. Samsung Electronics America, Inc.: Represented Samsung Telecommunications America, LLC and Samsung Electronics America, Inc. in patent litigation brought by non-practicing entity in the Western District of Tennessee. Also member of team representing the same defendants in inter partes review of plaintiff’s patent. The asserted patent generally relates to data management and retrieval over a network. The asserted patent was invalidated by the Patent Trial and Appeal Board, and that decision was upheld by the Federal Circuit.
  • Blazer v. eBay, Inc.; USB Technologies, LLC v. eBay Inc., et al.; Carson Optical, Inc. v. eBay Inc.: Represented eBay Inc. in various patent infringement actions involving allegedly infringing products listed by users of eBay’s website. In one such action, summary judgment was granted for eBay on claims of direct infringement, contributory infringement, and inducement.
  • Meda Pharmaceuticals Inc., et al. v. Teva Pharmaceuticals USA, Inc.: Represented Teva Pharmaceuticals in connection with Hatch-Waxman litigation involving nasal spray DYMISTA in the District of Delaware.
  • Crye Precision, LLC, et al. v. Duro Textiles, LLC; Crye Precision, LLC, et al. v. Bennettsville Printing; Navajo Air, LLC v. Crye Precision, LLC, et al.: Represented Crye Precision LLC and Lineweight, LLC, in breach of contract actions against former licensees involving acclaimed camouflage pattern design and technology.
  • SkillSurvey, Inc. v. Checkster LLC: Represented SkillSurvey, Inc. in patent infringement action filed against competitor. The asserted patent relates to methods and systems for collecting and analyzing information from references identified by job candidates.
  • Blue Spike, LLC v. 3M Cogent, Inc.: Represented 3M Cogent, Inc. in patent litigation filed by non-practicing entity. The asserted patents generally relate to digital content recognition technology.
  • Nextec Applications v. United States, et al.: Member of litigation team that represented an integrated textile company as a third-party defendant in patent litigation brought against the United States in the Court of Federal Claims and parallel inter partes review initiated at the Patent Office. The asserted patents generally relate to methods for treating fabrics. Resulted in dismissal of the plaintiff’s claims with prejudice.
  • Delavau LLC v. J.M. Huber Corp., et al.: Represented leading pharmaceutical ingredient manufacturer in enforcement of patent rights against competitor. The asserted patents generally relate to methods for manufacturing calcium carbonate granulation.
  • Rydex Technologies LLC v. B. Braun Medical Inc., et al.: Represented B. Braun Medical Inc. in a multi-defendant patent lawsuit in the District of Delaware.  The asserted patent generally relates to wireless intravenous medical pump controls.
  • CareFusion 303 Inc. v. B. Braun Medical Inc.: Represented 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.  Resulted in a grant of summary judgment on B. Braun’s affirmative defense of laches, and dismissal of the case with prejudice as an evidentiary sanction against plaintiff.
  • Enzo Biochem Inc., et al. v. Affymetrix, Inc.: Represented Enzo Biochem, Inc. and Enzo Life Sciences, Inc., in connection with seven patent and breach-of-contract litigations involving nucleic acid labeling and detection technology.
  • Selecto, Inc. v. Everpure, LLC et al.: Member of litigation team representing Pentair Filtration, Inc. and Everpure, LLC in connection with multiple patent litigations involving water filtration technology. Resulted in confidential settlement.
  • CyberSource Corporation v. Retail Decisions, Inc.: Member of litigation team that defended Retail Decisions, Inc. in an action for alleged infringement of a patent for methods of detecting credit card fraud. Resulted in a grant of summary judgment of invalidity, which was subsequently affirmed by the Federal Circuit.

Trademark, Copyright, and Trade Secret Litigation

  • The Sanborn Library LLC v. ERIS Information Inc. et al.: Representing provider of environmental risk information products and services in copyright infringement action involving alleged infringement of copyrights in fire insurance maps.
  • Ponderosa Twins Plus One, et al. v. iHeartMedia, Inc.. et al.: Representing leading digital music service providers in putative class-action litigations involving alleged infringement of common law copyrights in pre-1972 sound recordings.
  • Represent a variety of Internet media companies in copyright infringement actions brought by clients of notorious “copyright troll,” Richard Liebowitz.
  • Elementis Holdings Limited v. Platform Specialty Products Corp.: Representing specialty chemicals company in defense of lawsuit for alleged trademark infringement. Successfully defeated Plaintiff’s motion for a preliminary injunction.
  • Graham v. Prince et al.; McNatt v. Prince et al.: Member of litigation team representing acclaimed modern artist in actions for alleged infringement of photographs.
  • Represented leading digital music service providers in actions for alleged copyright infringement filed by independent music publisher. All resulted in confidential settlements.
  • 3M Company, et al. v. ACS Industries, Inc.: Represented 3M Company and 3M Innovative Properties Company in action for misappropriation of trade secrets, unfair competition and tortious interference against a competitor.
  • Consumerinfo.com, Inc. v. Chang et al.: Represented Adaptive Marketing LLC in U.S. District Courts in Los Angeles and Connecticut related to claims for trademark, copyright and trade dress infringement, cybersquatting, trademark dilution and unfair competition brought by and against a major competitor regarding Internet paid search marketing and various related domain names used by the parties in the credit reporting and monitoring market.
  • Intern, Office of the General Counsel, United States Copyright Office, 2008
  • Copyright Examiner, United States Copyright Office, 2002-2005

Recognition & Leadership

  • Listed, Super Lawyers magazine, New York Super Lawyers, "Rising Stars," 2013-2019
  • Member, American Bar Association
  • Member, New York State Bar Association

Credentials

Education
  • J.D., University of Michigan Law School, 2008
    • Associate editor, Michigan Law Review
    • Asian Pacific American Law Students Association
  • M.M., Johns Hopkins University, 2002
  • B.M., with highest honors, University of Michigan, 1999
Admissions
  • New York
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Second Circuit
  • U.S. Court of Federal Claims
  • 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 Eastern District of Texas