professionalIMG

Timur E. Slonim

Special Counsel vCard


Education

  • Benjamin N. Cardozo School of Law (JD, magna cum laude, 1999)
  • University of Wisconsin (BS, Computer Science, with honors, 1996)

Bar Admissions

  • New York
  • United States Patent and Trademark Office

Languages

  • Russian

Timur focuses his practice primarily on intellectual property litigation at trial and appellate levels. Timur advises clients on strategy for monetization of patent portfolios through licensing, sale, collaboration, or litigation. Timur has handled technologies ranging from excimer laser catheters to VoIP networking, and from customer relationship management software to anti-cancer drugs. His trademark cases included cancellations, oppositions, infringement, and dilution matters for famous marks.

He also represents clients in general litigation matters, including breach of fiduciary duty, breach of contract / license agreement, Communications Decency Act and DMCA immunity, and professional malpractice matters.

On the transactional side, Timur advises clients in structuring and negotiating a wide variety of technology transactions, including patent, trademark, and copyright licenses, software licenses, sponsored research agreements, and materials transfer agreements. He is experienced in performing intellectual property audits and due diligence for high-tech and life sciences companies and investors in connection with various commercial transactions.

As a registered patent attorney, Timur has drafted and prosecuted patents in software, database management, telephony, radiation scanning, magnetic resonance imaging, and mechanical arts.

Prior to joining Mintz Levin, Timur was an associate at another prominent law firm.

Representative Matters

Patent Matters

  • CreateAds v. Squarespace (D. Del.) Ongoing defense of a web hosting company against an infringement charge based on website creation templates. Filed a pre-discovery summary judgment motion of invalidity for unpatentable subject matter based on the Supreme Court’s CLS Bank decision. Conducted invalidity search which found a reference relied upon in a recently filed inter partes review.

  • Sage Electrochromics, Inc. v. View, Inc. (N.D. Cal.) Ongoing defense of a foreign manufacturer of equipment for making electrochromic glass against allegations of infringement of an automated control systems patent.

  • Horizon Pharma AG v. Watson Labs., Inc. - Florida (D.N.J.) Ongoing prosecution of a Hatch-Waxman case against an ANDA filed by generic manufacturer of Rayos®, a prednisone delayed-release tablets used as anti-inflammatory and immunosuppressant agent.

  • Dr. Rentrop v. Spectranetics Corp. (S.D.N.Y. / Fed. Cir.) Jury verdict of patent infringement and damages in a case involving excimer laser catheters. Judgment was affirmed on appeal. After successfully defending the patents-in-suit in a reexamination, licensed them at double the jury royalty rate.
  • Celgene Corp. v. Cyclacel Pharmaceuticals Inc. (D. Del.) Successfully settled a patent infringement case involving the anti-cancer drug IstodaxR, for treatment of cutaneous T-cell lymphoma, after extensive discovery by selling the patents-in-suit to the infringer.
  • New York University v. SSA Global, Interfor, E.piphany Inc. (S.D.N.Y.) Successfully licensed the patent-in-suit, relating to customer relationship management software, to defendants after extensive discovery, including source code review.
  • Enzo Biochem, Inc. v. Orchid Bioscience, Inc. (S.D.N.Y.) Successfully settled a patent infringement suit involving nucleotide labeling technology after obtaining a favorable claim construction and dismissal of non-patent claims on summary judgment.
  • Krauser v. BioHorizons Inc. (S.D. Fla.) Obtained pre-discovery dismissal of putative joint inventorship claims for dental implants patents and summary judgment of no breach of prior settlement and license agreement and an award of attorney's fees.
  • Nellson Nutraceutical, Inc. v. Elan Nutrition, LLC (D. Vt.) Successfully settled a case involving infringement of a patent for protein bars against a major competitor after extensive discovery, motion practice, and complicated ownership transfer negotiations under the jurisdiction of a bankruptcy court.

  • Presidio Components, Inc. v. American Technical Ceramics Corp. (S.D. Cal.) Defended a manufacturer of multi-layer ceramic capacitors in the district court, the Federal Circuit, and PTO’s reexamination.

  • QPSX Devs. 5 Pty Ltd. v. Juniper Networks, Inc. (E.D. Tex.) Defended a telecommunications equipment manufacturer against allegations of patent infringement.

  • Sanitec Indus., Inc. v. Micro-Waste Corp. (Fed. Cir.) Successfully defended on appeal a judgment of patent infringement and lack of invalidity regarding sanitation technology.

  • PSN Illinois, LLC v. Ivoclar Vivadent, Inc. (Fed. Cir.) Successfully obtained an appellate affirmance of a summary judgment of non-infringement involving dental veneers.

  • Foundry Networks, Inc. v. Nortel Networks Inc. (N.D. Cal.) Successfully defended and settled a patent infringement case involving computer networking after a jury trial of a companion offensive case.
  • Axcess Int’l Inc. v. Savi Technology, Inc. (N.D. Tex.) Defended a patent infringement case regarding RFID equipment including extensive discovery. An ex parte reexamination rejected as invalid all claims of the patent-in-suit.
  • Millenium LP v. A2iA Corp. (S.D.N.Y.) Successfully settled a patent infringement case involving optical character recognition technology for defendant at the pre-discovery stage.
  • Jarrow Formulas, Inc v. Centre D'Experimentation Pycnogenol Sarl, Horphag Research Ltd (D. Conn.) Won motion to dismiss a patent invalidity suit for lack of jurisdiction.

Trademark & Copyright Matters

  • Horphag Research Mgt., S.A. v. Garcia (9th Cir.) Successfully obtained appellate affirmance of trademark dilution judgment of a famous trademark Pycnogenol® for dietary supplements.
  • Isotonic OPC Antioxidants, Inc. v. Horphag Research Mgt., S.A. (P.T.O. T.T.A.B.) Successfully defended cancellation proceeding alleging genericness of a famous trademark Pycnogenol® for dietary supplements.
  • Horphag Research Mgt., S.A. v. Toyo Shinyaku Co., Ltd. (P.T.O. T.T.A.B.)
    Successfully opposed registration of a competitor’s trademark for dietary supplements based on judgments in prior successful oppositions.
  • Mercury Security Corp. v. Lenel Systems Int’l, Inc. (S.D.N.Y.) Successfully settled copyright infringement and breach of license agreement action relating to access control for software source code.
  • Cipriani Group Inc. v. Cipriani Inc. (S.D.N.Y.) Successfully asserted famous restaurateur’s trademark against an identical mark used by a retail jewelry store and obtained complete cessation of competing use and rebranding of the jewelry store.
  • Frank Lloyd Wright Foundation v. Cellini Fine Jewelry (S.D.N.Y.) Successfully settled a copyright and trademark infringement action for a defendant fine jeweler.
  • Louis Vuitton Malletier v. Dooney & Bourke, Inc. (S.D.N.Y) Represented Louis Vuitton in a trademark infringement lawsuit involving Vuitton’s colorful and hot-selling Murakami handbags.

Commercial Litigation Matters

  • Matveev v. Thor United Corp. (S.D.N.Y.) Successfully settled a fraud, breach of fiduciary duties, and breach of contract action against an investment advisor.
  • In Re Application Pursuant To 28 U.S.C. § 1782 Of Northwest Organics LP (S.D.N.Y.) Successfully narrowed a third-party subpoena issued to a website hosting company in aid of a Canadian defamation litigation after motion practice.
  • Remsha v. Institute for Russian Research (N.Y. Sup. Ct.) Successfully negotiated dismissal of a website hosting company under Communications Decency Act immunity and defended against third-party subpoena issued to it in a defamation case.
  • G.D. Searle & Co., Inc. v. Pennie & Edmonds LLP (N.Y. Sup. Ct.) In a companion case to the University of Rochester v. Pfizer alleging that Pfizer’s billion-dollar drug Celebrex infringed method of treatment patent, which was held invalid on summary judgment, successfully settled a conflict of interest and breach of fiduciary duty case against a prominent intellectual property firm, which was found to have violated a NY Disciplinary Rule. Through extensive discovery and motion practice, including a finding of waiver of attorney-client privilege by the university, obtained damaging documents and testimony.
  • Official Committee of Unsecured Creditors of Color Tile, Inc. v. Investcorp S.A., (S.D.N.Y.) On the eve of trial, successfully settled an adversary action based on allegations of undercapitalization and fraudulent transfers against a foreign investment fund, in which Osama bin Laden’s brother was a director and which was a majority owner of a failed home supply store chain.

Recognitions & Awards

  • Phi Kappa Phi Honor Society
  • Golden Key Honor Society