Practice Description:

Alan Tenenbaum concentrates on intellectual property litigation and counseling. He has successfully represented clients in patent, trademark, unfair competition, trade secret, and commercial litigation matters throughout the United States. Representative subject matter includes chemicals and pharmaceuticals, communications-related hardware and software, e-commerce and business methods, semiconductor manufacture, consumer products, and medical devices. 

Alan regularly counsels clients in connection with dispute avoidance and resolution and in connection with evolving areas of patent law, such as business methods and patents involving pharmaceutical labeling claims.  He also represents clients in transactional matters involving intellectual property rights, and has negotiated a wide array of agreements in and out of litigation. Alan also works with clients to identify, protect and manage core technology.

Publications:

• Be Quick or You'll Lose: The New First-to-File Patent Application Rule , E-Alert, December 2012
• The New Post-Grant Patent Review: Just When You Thought You Were Out, They Pull You Back In, E-Alert, July 2012
• Author, Patent Protection 101, Medical Design Technology, October 2008.
• Author, Patents: Don't Change the Landscape Too Quickly, Bank Systems and Technology, June 27, 2008.
• Co‑Author, Prefiling Issues in Electronic & Computer Patent Law, Electronic and Computer Patent Law, 292 PLI 257, March 1990.

Presentations:

• Software Patents Debate, Hack Manhattan, January 17, 2013
• Speaker, Damage Control: Avoiding Patent Infringement and Minimizing Damages, Conference on Optimizing Patents and IP in Financial Products and Services, American Conference Institute, New York, May 2006.

Significant Matters:

• Nike, Inc. et al v. Reebok International Ltd.,1:12-cv-02275 (S.D.N.Y.). Represented Nike in lawsuit asserting claims for violations of the Lanham Act (unfair competition), misappropriation of rights of publicity, and tortious interference with business relations, resulting in a TRO and a Preliminary Injunction barring the sale of Reebok’s Tebow-NY JETS merchandise.
• Hypoxico Inc. v. Colorado Altitude Training LLC, Civil Action No. 02cv6191 (S.D.N.Y.) Jury trial on behalf of Hypoxico in patent litigation involving technology for simulating high altitude (low oxygen) environments. 
• Aventis Pharmaceuticals Inc. v. Dr. Reddy's Laboratories, Ltd., Civil Action No. 04-1075 (D.N.J.).  Bench trial on behalf of Dr. Reddy's Labs in a series of multi-party patent infringement litigations concerning pharmaceutical formulations containing fexofenadine (Allegra® and Allegra-D®). 
• Abbott Labs. v. SUN Pharmaceutical Indus., Ltd., 08-CV-10498 (E.D.MI.).  Represented Sun Pharmaceuticals in patent litigation concerning pharmaceutical formulations containing divalproex sodium (Depakote®). 
• Gammino v. Verizon Commc'ns, Inc., et. al.; and Gammino v. Cellco P'ship d/b/a Verizon Wireless, Verizon Commc'ns Inc., Vodafone Group Plc, AT&T Corp., Sprint Corp., and Davel Commc'ns, Inc., Case Nos. 03-5579; 04-4303 (E.D. Pa.)  Represented Verizon Commications, Verizon Wireless and Vodafone in patent litigation involving blocking of fraudulent telephone calls.
• Syngenta Seeds, Inc. v. Monsanto Co., Dekalb Genetics Corp., Pioneer Hi-Bred Int'l, Inc., Dow Agrosciences, LLC, Mycogen Plant Science, Inc. and Agrigenetics, Inc.  Case No. 02-1331 (D. Del.)  Jury trial on behalf of Syngenta in multi-party patent litigation involving Bt (transgenic) corn. 
• Henlopen Mfg. Co. Inc. v. Revlon Consumer Prods. Corp., Case No. CV-1673 (S.D.N.Y.) Represented Henlopen [division of Alcan] in patent litigation concerning cosmetic applicators.
• Lernout & Hauspie Speech Prods. N.V. and Lernout & Hauspie Speech Prods. USA, Inc. v. Bautil, 01 CV 10391 (D. Mass.)  Represented L&H in litigation involving machine translation technology.
• Dictaphone Corp. v. Nice Systems Ltd. & Nice Systems, Inc., No. 3:00 CV 1143 (D. Conn.)  Represented Dictaphone in patent litigation involving digital logger technology.
• Priceline v. Microsoft Corp. and Expedia, Inc., No. 3:99 CV 1991 (D. Conn.) Represented Microsoft and Expedia in patent and trade secret litigation involving business methods, e-commerce and software for "name your own price" services.
• Hewlett-Packard Co. v. Nu-kote Int'l, Inc., No. 94-90247 (N.D. Ca.)  Jury trial on behalf of HP in patent, trademark and antitrust litigation concerning inkjet printing and related technology.
• EKC Technology, Inc. v. Ashland, Inc., No. 95-0890 (N.D. Ca.)  Represented EKC in patent litigation involving chemicals used in manufacture of semiconductors.