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Peter J. Toren
Peter J. Toren has successfully represented clients for over 20 years in intellectual property and commercial litigation matters throughout the United States at both the trial and appellate levels.
Mr. Toren’s practice has a strong focus on patent, trademark, copyright, and trade secret cases as well as other complex commercial disputes. His representations often involve complex technologies, including computer software and hardware, light emitting diodes, bio-technology, semiconductor manufacturing and fabrication, optics and medical devices as well as business methods. He also has successfully obtained and defended motions for preliminary injunctions and summary judgment motions involving the Patent Act, Copyright Act, Lanham Act, Digital Millennium Copyright Act and Computer Fraud and Abuse Act.
He has argued numerous times before the Second, Fifth, Ninth and Federal Circuits involving patent, copyright, and trademark law.
Mr. Toren has also handled a number of internal investigations involving the Economic Espionage Act as well as other federal criminal laws on behalf of large corporations.
Mr. Toren regularly represents clients in negotiations concerning complex intellectual property licensing and technology transfer agreements.
He is the author of Intellectual Property & Computer Crimes (Law Journal Press), which has been updated twice a year since first being published in 2003, and has been described as a “must have desk reference.” He is also a winner of the 2010 Burton Award for excellence in legal writing for The Intersection of Intellectual Property and Bankruptcy Law (BNA). Mr. Toren is also the author of over 70 legal articles covering a wide range of topics and has given over 100 speeches and talks on a variety of IP subjects to groups both inside and outside the United States.
Mr. Toren served as a federal prosecutor with the Computer Crime & Intellectual Property Section of the United States Department of Justice where he handled a number of high profile cases involving criminal copyright, trademark and trade secret matters, including one of the first cases ever prosecuted under the Economic Espionage Act.
Representative matters include:
- Served as lead counsel In Re: Rembrandt Technologies LP Patent Litigation for co-defendant Adelphia Communications in the District of Delaware. After originally seeking damages of over $120 million for patent infringement, plaintiff entered into consent of non-infringement.
- Served as co-lead appellate counsel in Goss International Corporation v. Man Roland Druckmaschinen Aktiengesellschaft, for defendant Tokyo Kekai Seisagusho (TKS). The Eighth Circuit overturned the district court’s issuance of an anti-suit injunction barring TKS from pursuing remedies in Japan against Goss International.
- Served as lead counsel for defendant WebExchange, Inc., in a declaratory judgment action brought by Microsoft asserting that WebExchange’s patents were invalid and unenforeceable. The Northern District of California granted Webexchange’s motion to dismiss.
- Served as co-lead counsel in United States v. Bukai, et al., involving trafficking in counterfeit goods. Defendants pleaded guilty and were sentenced to a far less term than originally sought by the government.
- Served as lead counsel for plaintiff Eppendorf in Eppendorf GmbH v. Ritter GmbH. After a three-week trial, a jury in the Southern District of Mississippi awarded Eppendorf almost $2 million in damages for trade dress infringement.
- Served as lead counsel for Professor Gertrude Neumark Rothschild and Columbia University in patent infringement actions against Toyoda Gosei, Phillips Lumileds and Cree, Inc. The actions involved Professor Neumark’s patents for a process for the manufacture of light emitting diodes. The cases settled favorably after a lengthy Markman hearing.
- Served as lead counsel for plaintiff Physicians Interactive in an action in the Eastern District of Virginia involving copyright infringement and violations of the Computer Fraud & Abuse Act. After granting Physician Interactive’s motion for a preliminary injunction, the case settled on favorable terms.
- Served as lead counsel for defendant Roessel Cine Photo Tech, Inc. in a patent infringement action in the Central District of California by Panavision and Australian wildlife photographer James Frazier. Plaintiffs alleged that defendant had infringed Frazier’s patent for the design of a commercial motion picture camera lens. After trial, the Court determined that Frazier had committed inequitable conduct on the Patent and Trademark Office, that the patent in-suit was invalid and awarded defendant over $1.5 million in attorneys fees. The trial was featured in "The Winning Ways of Six IP Trial Teams," IP Law and Business, Aug. 2003).
Mr. Toren also has an active pro bono practice. He currently represents an inmate on death row in Alabama and argued before the Alabama Court of Criminal Appeals in connection with that matter. He has also represented a number of artists in connection with intellectual property disputes and represented a party in the Google book settlement.
Mr. Toren was previously a partner in the New York office of Sidley Austin, and Kasowitz, Benson, Torres & Friedman.