Jeremy P. Oczek
Jeremy P. Oczek is an Intellectual Property and Technology attorney at Bond, Schoeneck & King. His practice is focused on intellectual property law, including complex intellectual property litigation, portfolio development, counseling and strategic advice, working with technology clients nationwide.
Mr. Oczek has an accomplished track record and substantial experience in litigating high-stakes intellectual property disputes, including patent, trademark, trade secret and copyright matters. He has successfully assisted his clients in enforcing their intellectual property, and has helped his clients defeat multi-million dollar claims of alleged infringement. Mr. Oczek has represented numerous well-known companies in intellectual property litigation, including Analog Devices, Church & Dwight, Facebook, General Media Communications (owner of Penthouse brands), ImClone, Ivoclar, MKS Instruments and Transamerica Life Insurance. He has litigated cases in federal courts around the country, and has significant trial and appellate experience.
Mr. Oczek also provides strategic counseling on the development and maintenance of patent and trademark portfolios. A registered patent attorney, he assists clients with matters before the U.S. Patent & Trademark Office, including patent reexaminations and other proceedings. Mr. Oczek works with clients on patentability and product clearance studies, freedom to operate evaluations, patent infringement and validity analyses, trademark and branding clearance, licensing matters and corporate transactions involving intellectual property. He also advises companies on identifying and maximizing the corporate value of their intellectual property assets.
Mr. Oczek has worked with clients in a broad range of technology areas, including computers and software, networking and telecommunications, e-commerce and internet-based technologies, industrial equipment and manufacturing processes, biotechnology and life sciences and medical devices.
Mr. Oczek has been looked upon by the national media to offer commentary on intellectual property issues in publications such as The National Law Journal, BNA's Patent, Trademark & Copyright Journal, The Metropolitan Corporate Counsel, and Law360. In 2010, he had the distinction of being named a Super Lawyers Rising Star in the area of intellectual property litigation while practicing in Massachusetts.
BIAX Corp. v. Analog Devices, Inc. (E.D. Tex.) -- Represented Analog Devices in the defense of a five-patent litigation relating to computer architecture and parallel processing. After jury selection, the plaintiff dropped its demand and agreed to settle the case for a token payment and to arbitrate one of the patents if it survived reexamination at the Patent Office. After the arbitration hearing, the arbitrator ruled in favor of Analog finding no infringement and awarded attorneys' fees to Analog.
Hypertherm, Inc. v. American Torch Tip Co. (D.N.H.) -- Represented Hypertherm in a six-patent litigation relating to plasma torch technology against one of its competitors. Obtained summary judgment of infringement in Hypertherm's favor on numerous parts manufactured and sold by the defendant, summary judgment in Hypertherm's favor on several of defendant's alleged defenses, and disqualification and exclusion of defendant's technical expert witness. After obtaining these major court victories, along with other victories in the case, the case was successfully settled shortly before trial.
PSN Illinois, Inc. v. Ivoclar Vivadent, Inc. (N.D. Ill., Fed. Cir.) -- Represented Ivoclar, a worldwide leading manufacturer of dental material systems, in obtaining summary judgment of non-infringement in a patent case in which the plaintiff was seeking tens of millions dollars in damages. This significant victory was affirmed by the U.S. Court of Appeals for the Federal Circuit.
MKS Instruments, Inc. v. Advanced Energy Corp. (D. Del.) -- Represented MKS, a global provider of instruments, systems and process control solutions, in its assertion of five patents relating to plasma processing equipment for use in the semiconductor industry. After a four-day trial, the jury returned a verdict of infringement in favor of MKS on all patents asserted at trial.
Lincoln National Life Insurance Co. v. Transamerica Life Insurance Co. et al. (N.D. Iowa, N.D. Ind., Fed. Cir.) -- Represented Transamerica in defending against three patents in three separate cases relating to the administration of insurance annuity products. Retained after an adverse jury verdict, assisted team in obtaining reversal of $13 million judgment on appeal at the U.S. Court of Appeals for the Federal Circuit.
Other Notable Cases:
Abbott Laboratories v. ImClone Systems, Inc. (D. Mass.) -- Represented ImClone in a patent infringement action directed to technology allegedly used to produce Erbitux. The asserted patent was directed to the insertion of a vector into a cell to enhance production of an antibody of interest. The case was successfully settled shortly before hearings on motions for summary judgment.
Analog Devices, Inc. v. Silicon Laboratories, Inc. (D. Mass.) -- Represented Analog Devices in patent and copyright case involving digital isolators. After the close of discovery, obtained summary judgment against Silicon Labs' counterclaim of unfair competition (Mass. Chapter 93A). The case was successfully settled shortly before trial.
Billingnetwork Patent, Inc. v. athenahealth, Inc. (M.D. Fla.) -- Represented athenahealth, a leading provider of web-based services to physician practices, in this patent infringement action which settled.
C2 Communications Technologies, Inc. v. Qwest Communications Corp., Global Crossing Telecommunications, Inc., and Level 3 Communications, LLC (E.D. Tex) -- Represented telecommunications companies Global Crossing, Qwest, and Level 3 in the defense of a patent infringement action relating to voice over IP (VoIP) switching technology. The case settled during trial on favorable terms.
ConnectU LLC et al. v. Facebook, Inc. et al. (D. Mass.) -- Represented Facebook and numerous individuals as local counsel in a high-profile dispute associated with the founding of Facebook.
Enterasys Networks, Inc. v. Foundry Networks, LLC et al. (D. Mass.) -- Represented Foundry in the defense of six patents relating to routing and networking technologies.
Fanning v. Goodin (D. Mass.) -- In a pro bono case, represented Daniel Goodin, a former reporter for the Industry Standard, in a defamation suit brought by John Fanning, uncle of Shawn Fanning, the founder of Napster. After Goodin won sanctions against the plaintiff, the case was dismissed by the plaintiff.
General Media Communications, Inc. v. Felt Enterprises, Inc. (D. Mass.) -- Represented General Media in its assertion of its famous PENTHOUSE® trademarks against a Boston nightclub. The case ended with a consent judgment entered against the defendant.
Heathcote Holdings Corp v. Church & Dwight Co., Inc. (E.D. Tex.) -- Represented Church & Dwight in an alleged false marking case involving household consumer products.
Inverness Medical Innovations et al. v. Church & Dwight Co., Inc. (D. Mass.) -- Represented Church & Dwight in a patent infringement action involving features of immunoassays having digital readouts, as allegedly used in pregnancy tests.
JuxtaComm-Texas Software, LLC v. Axway, Inc. et al. (E.D. Tex.) -- Represented Progress Software in the defense of a patent infringement action relating to technology allegedly used to exchange data between distributed computer systems.
LifeWatch Services, Inc. v. Braemar, Inc. et al. (N.D. Ill.) -- Represented LifeWatch in a patent infringement action relating to cardiac arrhythmia monitoring devices and technology.
Massachusetts Eye and Ear Infirmary v. QLT, Inc. (D. Mass.) -- Represented MEEI in a complex intellectual property dispute relating to treatment for age-related macular degeneration (AMD).
Network Gateway Solutions LLC v. Adtran Inc. et al. (D. Del.) -- Represented Sonus Networks in the defense of a patent infringement action relating to network switching technology.
ScanSoft, Inc. v. ART Advanced Recognition Technologies, Inc. (D. Mass.) -- Represented ART in the defense of a patent infringement action relating to speech recognition technology.
ShopNTown, LLC v. Landmark Media Enterprises, LLC (E.D. Va.) -- Represented ShopNTown in a patent infringement action relating to web site architecture and functionality.
Honors and Affiliations
- Massachusetts Super Lawyers Rising Star, Intellectual Property Litigation, 2010
- Author, “Rethinking Defense in ‘Patent Troll’ Cases,” Corporate Counsel, Mar. 27, 2013
- Author, "Supreme Court shaping IP law,” Buffalo Law Journal, Mar. 11, 2013
- Author, “Q4,” discussing upcoming U.S. patent law changes, Rochester Business Journal, Mar. 8, 2013
- Author, "Supreme Court Decisions Will Have Major IP Impact in 2013,” Bond IP & Technology Newsletter, Winter 2013
- Author, "The Supreme Court's Mayo v. Prometheus Decision and the Future of Diagnostic Patents," Bond IP & Technology Newsletter, Spring 2012
- Co-author, "Best Practices to Implement in View of the America Invents Act," Bond IP & Technology Newsletter, Winter 2012
- Author, "Companies clue in to patent law reform," Buffalo Law Journal, Mar. 12, 2012
- Quoted in "High Court Says Willful Blindness Is Evidence of Knowledge in Induced Patent Infringement," BNA's Patent, Trademark & Copyright Journal, 82 PTCJ 137, Jun. 3, 2011
- Quoted in "Actual Knowledge Necessary For Inducement: High Court," Law360, May 31, 2011
- Interviewed in "Patent Law Reform: Adjusting to a New World of First-To-File and More," The Metropolitan Corporate Counsel, Apr. 3, 2011
- Quoted in "In High Court Patent Fight, Tech and Auto Companies Lobbied White House to Stay Out of Case," The National Law Journal, Mar. 1, 2011
- Quoted in "False Marking Constitutionality Debate to Rage On," Law360, Feb. 24, 2011
- Quoted in "Supreme Court Weighs Induced Infringement Test," Law360, Feb. 23, 2011
- Co-author, "First Markman, Now Festo: A Simplified Approach to Patent Litigation Trials," Sedona Conference Journal, Vol. 4, 2003
- Author, "In the Aftermath of the 'Terminator' Technology Controversy: Intellectual Property Protections for Genetically Engineered Seeds and the Rights to Save and Replant Seed," 41 B.C. L. REV. 627, 2000