PRACTICE AREAS


Brian Rothery has litigated federal patent and trademark and state unfair competition and business tort claims for plaintiffs and defendants involving medical devices, dietary supplements, automotive components, consumer products, electromechanical devices, semiconductors, robotic devices, bicycles, vending machines, window coverings and product packaging.

As a litigator, Mr. Rothery has participated in all aspects of discovery, pretrial preparations and submissions, and trial. He has acted as trial counsel before federal trial and appellate courts throughout the United States, including the district courts for New York, Virginia, Delaware, Texas, Illinois, Minnesota, Michigan, Pennsylvania, Florida, Massachusetts, Indiana, Tennessee and California. Mr. Rothery also has been involved with three cases before the Court of Appeals for the Federal Circuit, two resulting in favorable reversals of lower court decisions and one resulting in a favorable settlement.

In addition to his litigation experience, Mr. Rothery also performs substantial counseling on intellectual property matters, including advising clients on the development and management of international and domestic intellectual property portfolios involving patents, trademarks and trade secrets to protect the client's research and development activities, commercial products and marketing strategies. Mr. Rothery has participated in patent reexaminations and lectured before the American Society of Mechanical Engineers (ASME) on patent portfolio development.

Mr. Rothery further advises on freedom-to-operate issues (including validity and noninfringement opinions), patent due diligence investigations and competitor patent portfolio analysis. His due diligence evaluations include analysis of products and patent portfolios for clients interested in acquiring, merging with, or obtaining an equity position in a company, including start-up companies. Mr. Rothery's work in this area has been performed on behalf of large multinational companies as well as venture capital funds, particularly in the medical device field.

Prior to joining Stroock in 2007, Mr. Rothery was partner and co-chair of the mechanical technologies/medical device group at Jones Day. Before Jones Day, he was a partner with Pennie & Edmonds from 2000 through 2003, and an associate from 1990 through 1999.

REPRESENTATIVE MATTERS

  • JDS Therapeutics and Nutrition 21 LLC et al v. Pfizer et al. – Represented JDS and Nutrition 21 in a patent infringement action on nutritional supplements; case settled.
  • JDS Therapeutics and Nutrition 21 LLC et al v. Church & Dwight – Represented JDS and Nutrition 21 in a patent infringement action on nutritional supplements; case settled.
  • Concepts in Health Inc. v. Contract Pharmacal Corp. – Represented Contract Pharmacal in a patent infringement action on dietary supplements; case settled.
  • Synthes (USA) v. Smith & Nephew, Inc. – Represented Synthes in patent infringement action on bone plates for fracture fixation.
  • Smith & Nephew, Inc. v. Synthes-Stratec, Inc. and Synthes (USA) – Represented Synthes in patent infringement action on intramedullary rods for treatment of femoral fractures, case bifurcated, bench trial on liability, case settled favorably following Federal Circuit hearing.
  • Smith & Nephew, Inc v. Synthes-Stratec, Inc. and Synthes (USA) – Represented Synthes in appeal of district court decision, case settled favorably following Federal Circuit hearing.
  • Litex Inc. v. Delphi Automotive Systems Inc. – Represented Litex in patent infringement action on nonthermal plasma reactor for exhaust treatment; case settled after presentation of Litex's case.
  • Teleflex Inc. v. KSR International Inc. – Represented KSR in patent infringement action in district court on electronically controlled, adjustable pedals; district court granted KSR motion for summary judgment of invalidity.
  • Automotive Technologies International v. BMW, et al. – Represented DENSO International in patent infringement action on side impact air bag sensor; client settled.
  • Niles Audio Corporation v. Components Specialty Inc. – Represented Components Specialty in trade dress action on outdoor speaker design; case settled with no payment.
  • BIC Corporation v. Golden Applexx, et al. – Represented BIC in a patent infringement action on lighters; defendants consented to injunction and payments.
  • Hunter Douglas Inc. v. Comfortex Inc. – Represented Hunter Douglas in a patent infringement action on window coverings; favorable jury verdict.
  • BIC Corporation v. First Prominence, et al. – Represented BIC in a patent infringement action on lighters; obtained $17 million default judgment.
  • Berol Corporation, et al. v. BIC Corporation. – Represented BIC in patent infringement action on correction fluid applicators; case settled with cross-licenses.
  • Harmonic Design Inc. v. Hunter Douglas. – Represented Hunter Douglas in a patent infringement action on motorized window coverings; reversed lower court decision in Federal Circuit and case settled.
  • Jack A. Ekchian v. Home Depot, et al. – Represented Jack Ekchian in a patent infringement action on electronic inclinometers; reversed lower court decision in Federal Circuit; obtained patent out of reexamination; case settled with multiple defendants.

HONORS & AWARDS

Mr. Rothery has been listed in Super Lawyers for his work in intellectual property litigation and intellectual property.

MEMBERSHIPS

  • Co-Chair, Patent Law and Practice Committee, New York Intellectual Property Law Association

ADMITTED TO PRACTICE

New York, 1991

U.S. District Court, Southern District of New York, 1994; U.S. District Court, Eastern District of New York, 1994; U.S. Court of Appeals, Federal Circuit, 1994


PATENT ADMISSIONS

U.S. Patent and Trademark Office, 1992

EDUCATION

J.D., cum laude, Pace University School of Law, 1990; Moot Court Board

B.S., Mech. Eng., State University of New York, Buffalo , 1987

PUBLICATIONS

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