An intellectual property (IP) lawyer, Tom has represented some of the world's premier multinational corporations on both the offensive and defensive sides of trademark, patent, and copyright law disputes. He represents and counsels technology clients in a wide range of IP matters, including pre-suit diligence, fact and expert discovery, motion practice, depositions, and at trial. He has shepherded the negotiation of numerous agreements and transactions relating to all forms of IP.
His practice experience includes:
- Representing clients in federal courts across the country, including California, Delaware, Texas, and Nevada
- Cases involving advanced technologies, including 3G/4G communications, database management systems, semiconductor technology, and consumer products
- Advising defense-related companies on navigating export controls
- Serving defense contractors and sub-contractors, including in the areas of military equipment (land, air, sea, and cyber), as well as the fast-developing regulatory framework for artificial intelligence
- Advising clients on registering with the Directorate of Defense Trade Controls, developing compliance programs, and negotiating agreements between prime and sub-contractors
During law school, Tom served as Brooklyn Law School's Trade Secrets Institute fellow and also worked at the Berkman Klein Center for Internet & Society at Harvard University, where he championed the rights of Cambridge-area start-ups.
Education
J.D., Brooklyn Law School
B.S., College of New Jersey
Professional Associations
- MYLE Legal Outreach, Debate Coach
- Immigration Court Observation Project (ICOP)
Honors
- Best Lawyers: Ones to Watch, 2022, 2024
- Journal of Law & Policy, Executive Article Editor
- Trade Secrets Institute, Fellow
Representative Matters
- Megan Lee Studio, LLC v. TieGuys.com, Inc. et al
- AGIS Software Development, LLC v. Apple Inc., No. 2:17-cv-513 (E.D. Texas)
- Led damages-related fact discovery and motion practice; developed damages theories
- Prepared Apple's damages expert for deposition and trial
- Developed strategy for expert discovery; prepared outlines and control documents for expert depositions
- Drafted Daubert, summary judgment, and in limine motions
- Prepared cross-examination materials for trial; developed juror questionnaire
- VoIP-Pal.com, Inc. v. Apple Inc., No. 3:18-cv-6216 (N.D. California)
- Drafted motion to transfer and motion to dismiss under §101
- Handled negotiation of joint defense agreement; led weekly joint defense group calls
- Intellectual Ventures II LLC v. FedEx Corp., et al., No. 2:16-cv-980 (E.D. Texas)
- Managed day-to-day damages-related fact discovery
- Successfully excluded the affirmative opinions of FedEx's damages expert
- Prepared IV's damages expert for trial, including mock cross-examination
- Led nightly "meet and confers" during trial
- Sound View Innovations, LLC v. Facebook, Inc., No. 1:16-cv-116 (D. Delaware)
- Performed pre-suit diligence on portfolio of 10,000+ patents; identified viable reads and assessed patentability
- Executed confirmatory assignments to remedy chain-of-title defects
- Negotiated protective order and electronically stored information (ESI) order
- Oversaw day-to-day discovery for four patents relating to login authentication and dynamic user interface
- Drafted written discovery, motions to compel, contentions, and claim construction arguments
- Advocated for (and drafted) successful motion to reconsider relating to adverse means-plus-function construction
- Led subsequent effort to re-open and expedite discovery
- Arista Networks, Inc. v Cisco Systems, Inc., No. 5:16-cv-923 (N.D. California)
- Drafted Cisco's motion to dismiss/stay antitrust litigation relating to ethernet switching technology
- Assisted lead attorney in preparation for hearing on motion to stay
- Intellectual Ventures I, LLC v. Toshiba Corp., et al., No. 1:13-cv-453 (D. Delaware)
- Took two prior art depositions relating to USB technology
- Cox Commc'ns Inc., et al. v. Sprint Commc'ns Co. L.P., et al., No. 1:12-cv-487 (D. Delaware)
- Coordinated effort to intervene as non-party on behalf of Cisco Systems, Inc
- Drafted motion for final judgment; assisted lead attorney in preparation for related hearing