People: Steven E. Lipman, Senior Counsel

Steven E. Lipman

Senior Counsel

Boston
Direct: (617) 946-4945
0

Mr. Lipman is Of Counsel in the Boston Office of Seyfarth Shaw LLP.  He has devoted his practice to IP litigation and related client counseling and opinion work.  Prior to joining the firm, Mr. Lipman practiced at firms in Boston, New York and Washington, D.C.  He also served the United States Patent and Trademark Office in the Offices of the Commissioner, the Assistant Commissioner for Patents, and the Solicitor, and as a Primary Patent Examiner.

Mr. Lipman has more than 25 years of experience in private practice as an IP litigator and has worked on over 90 different litigations in 21 states in his career.  While his litigation experience is primarily utility-patent-based, he has also litigated issues relating to design patents, trademarks, copyrights, trade secrets, unfair competition, antitrust and contracts.  These litigations have spanned almost all technical and scientific disciplines, and include significant expertise in Hatch-Waxman and pharmaceuticals.  On the international front, Steve has been trial counsel in 11 instituted and 10 non-instituted U.S. International Trade Commission Section 337 investigations and has extensive experience with clients from Japan and Europe.

Mr. Lipman’s clients are both domestic and foreign and include major pharmaceutical companies, leading software developers, medical device companies and global manufacturers.  He has appeared before the Court of Appeals for the Federal Circuit and the Federal District Courts as counsel for the PTO and for numerous private clients in patent, trademark, copyright, international trade, and other litigations; and has represented both complainants and respondents before the U.S. International Trade Commission.

Mr. Lipman was named a pre-eminent practitioner in the legal field in the 2009 Guide to the World’s Leading Patent Law Practitioners.

Mr. Lipman has spoken and authored numerous articles on intellectual property and attorney conduct matters and is involved in many civic and bar association activities.  He is a founding member and former president of the International Trade Commission Trial Lawyers Association; and a former chairman of the Patent Law Committee of the D.C. Bar Section on Patents, Trademarks and Copyrights; and a current member of the Hon. William C. Conner Inn of Court.

Mr. Lipman is Of Counsel in the Boston Office of Seyfarth Shaw LLP.  He has devoted his practice to IP litigation and related client counseling and opinion work.  Prior to joining the firm, Mr. Lipman practiced at firms in Boston, New York and Washington, D.C.  He also served the United States Patent and Trademark Office in the Offices of the Commissioner, the Assistant Commissioner for Patents, and the Solicitor, and as a Primary Patent Examiner.

Mr. Lipman has more than 25 years of experience in private practice as an IP litigator and has worked on over 90 different litigations in 21 states in his career.  While his litigation experience is primarily utility-patent-based, he has also litigated issues relating to design patents, trademarks, copyrights, trade secrets, unfair competition, antitrust and contracts.  These litigations have spanned almost all technical and scientific disciplines, and include significant expertise in Hatch-Waxman and pharmaceuticals.  On the international front, Steve has been trial counsel in 11 instituted and 10 non-instituted U.S. International Trade Commission Section 337 investigations and has extensive experience with clients from Japan and Europe.

Mr. Lipman’s clients are both domestic and foreign and include major pharmaceutical companies, leading software developers, medical device companies and global manufacturers.  He has appeared before the Court of Appeals for the Federal Circuit and the Federal District Courts as counsel for the PTO and for numerous private clients in patent, trademark, copyright, international trade, and other litigations; and has represented both complainants and respondents before the U.S. International Trade Commission.

Mr. Lipman was named a pre-eminent practitioner in the legal field in the 2009 Guide to the World’s Leading Patent Law Practitioners.

Mr. Lipman has spoken and authored numerous articles on intellectual property and attorney conduct matters and is involved in many civic and bar association activities.  He is a founding member and former president of the International Trade Commission Trial Lawyers Association; and a former chairman of the Patent Law Committee of the D.C. Bar Section on Patents, Trademarks and Copyrights; and a current member of the Hon. William C. Conner Inn of Court.

Education

  • J.D., Catholic University of America, Columbus School of Law
  • B.S., Rutgers University
    Engineering

Admissions

  • Virginia
  • New York
  • District of Columbia

Courts

  • U.S. District Court Eastern District of New York
  • U.S. District Court Southern District of New York
  • U.S. Court of Appeals Federal Circuit
  • U.S. Court of Appeals Fourth Circuit
  • U.S. Court of Appeals District of Columbia Circuit

Affiliations

  • International Trade Commission Trial Lawyers Association (Member)
  • American Intellectual Property Law Association (Member)
  • New York Patent Law Association (Member)
  • Federal Circuit Bar Association (Member)
  • William C. Conner Inns of Court Foundation (Master)

Representative Engagements

  • Webstone (MA) for isolation valves
  • Yxlon GmbH (Germany) for machine vision software and systems
  • TOTO Ltd. (Japan) for toilets
  • Glenmark Pharmaceuticals (India) for generic versions of Zetia® and Clarinex®
  • Sharp Corp. (Japan) for compression software and alphabetic character recognition software
  • Silipos, Inc. (NY) for prosthetic liners and foot protectors
    Novozymes (Denmark) for enzymes used in fuel ethanol and bread products
  • Topps (NY) for sports trading cards
  • Novo Nordisk (Denmark) for human growth hormone and Type 2 diabetes
  • Heineken (NY) for keg-shaped beer cans
  • France Telecom (France) for software authentication
  • Salomon (France) for in-line skates, bicycle racing wheels, snowboard boots, and waterproof zippers
  • Bottero (Italy) for computer-based electronic controls
  • Canal Plus (France) for multi-layer encryption
  • Sollac and Ugine (France) (now Arcelor Mittal) for aluminum coated stainless steel
  • Standard Register (OH) for multi-part mailers
  • Catalina Marketing (DE) for touch-screen software
  • Jergens Co. for the “Biore Nose Strip”
  • Neles­Jamesbury, Inc. (MA) for rotary control valves
  • Toray Industries (Japan) for advanced composite materials
  • Bose Corp. (MA) for active noise reducing headsets
  • Genentech (CAl) for human growth hormone
  • Aikawa (Japan) for pulp filtration plates
  • American Standard (NY) for the AmeriCast trademark
  • Pulse Electronics (MD) for a train brake pressure system and end-of-train indicator
  • Braun (former Gillette subsidiary) for hand-held blenders
  • Continental Plastics (WVA) for thermoplastic containers
  • Tandon Corp. (CA) for disk drives
  • Printronix Corp. (CA) for printers
  • Rohm & Haas (DE) for ultrafiltration membranes
  • Ashlow Ltd. (Great Britain) for controlled cooling of steel rod

Presentations

  • “Fundamentals of Patent Prosecution 2008: A Boot Camp for Claim Drafting & Amendment Writing,” PLI Patent Seminar 2008 (New York, N.Y.) (June 19, 2008)
  • “Inherent Anticipation and Declaratory Judgment Actions,” Moot District Court Presentation Involving Both Issues, AIPLA Annual Meeting, Washington, D.C. (October 19, 2007)
  • “Patent Reexamination Fundamentals,” Parallel Patent Litigation and Reexamination Proceedings: Keeping Your Case on Track, PLI Patent Enforcement Seminar (New York, N.Y.) (August 3, 2007; June 13, 2006)
  • “Practice before the U.S. International Trade Commission,” ABA Section of Intellectual Property Law, Arlington, VA (April 6, 2006)
  • "Patent Litigation: Managing Documents, Meetings, and Communications," PLI Biotechnology & Pharmaceutical Law 2004 (Biotechnology Patents & Business Strategies), New York, N.Y. (October 13, 2004)
  • "On Sale Bar and Other Bars to Patentability,” 15th Annual Fall CLE Weekend Seminar, IP Section of Virginia State Bar, Wintergreen, VA (September 12- 13, 2003)
  • “Notice to Infringers, Pre-Litigation Options, Responding to a Notice of Infringement,  Pleadings,” ABA Section Of Intellectual Property Law, San Diego, CA (June 17, 2003)
  • "The Pre-Litigation Investigation," Spring Stated Meeting of the American Intellectual Property Law Association, NY, NY (April 19, 2002)
  • “Litigating In The U.S. - Module No. 19.4,” ETH Swiss Federal Institute Of Technology, Zurich, Switzerland (February 22, 2002; February 23, 2001)
  • “How To Comply And Deal With The PTO’s Code Of Professional Responsibility  And PTO Disciplinary Proceedings,” The Intellectual Property Law Lecture Of The Virginia State Bar, George Mason University, Arlington, VA (May 2, 2000)

Publications

  • “Electronic Discovery’ in the United States: A Guide for U.S. Litigation and Other Investigations,” Hatsumei (The Invention), Vol. 102, No. 10 p. 43-50 (October 2005) (Co-Author)
  • "Remedies Available Before The U.S. International Trade Commission To Defend  Against Imported Counterfeit Goods," Oceana Publications, Inc. (1995)(Co-­Author)