Jeremy P. Oczek
Jeremy is an intellectual property and technology attorney whose practice is focused on complex intellectual property litigation, counseling, strategic advice, and portfolio development. He works with technology clients worldwide.
Prior to joining Bond, Jeremy spent over a decade practicing law in Massachusetts and had been a Partner at the international law firm Proskauer Rose LLP in its Boston office.
Intellectual Property Litigation: Jeremy has an accomplished track record and substantial experience in litigating high-stakes intellectual property disputes, including patent, trademark, copyright, and trade secret matters. Over the course of his career, Jeremy has litigated over sixty intellectual property cases in federal courts throughout the country, including venues in Delaware, Illinois, Florida, Massachusetts, New York, and Texas, and has significant trial and appellate experience. He has represented numerous major corporations in intellectual property lawsuits, including Analog Devices, Church & Dwight, Facebook, General Media Communications (owner of PENTHOUSE® brands), ImClone Systems, Philips Lighting, and Transamerica Life Insurance.
Intellectual Property Counseling: A registered patent attorney, Jeremy has extensive experience in securing, protecting, and managing patents and trademarks in the United States and internationally. He represents some of the most-recognized companies in world, including a multinational technology pioneer of many of the world’s ground-breaking innovations. He also represents start-ups and midsize companies driving innovation in molecular diagnostics, nanotechnology, and other vital technologies. He assists clients with matters before the U.S. Patent & Trademark Office and also works with clients on patentability and product clearance studies, freedom to operate evaluations, trademark and branding clearance, licensing, and corporate transactions involving intellectual property.
Technology Experience: Jeremy has advised clients in a broad range of technologies, including computers, software, networking, telecommunications, e-commerce and internet-based systems, industrial equipment, manufacturing processes, biotechnology, life sciences, medical devices, and consumer products.
National Recognition: Jeremy has received an AV Preeminent Peer Review Rating from Martindale-Hubbell. He has also been recognized by The Best Lawyers in America® 2018 in Patent Litigation and as a Super Lawyer in IP Litigation by Upstate New York Super Lawyers (2016-2017). Jeremy is frequently invited by the national and international media to offer commentary on IP issues in publications such as The National Law Journal, Law360, The Metropolitan Corporate Counsel, Life Sciences IP Review, and World IP Review.
Board Service and Community Involvement: Jeremy serves on the Editorial Board for the American Intellectual Property Law Association (AIPLA) Quarterly Journal. He also serves as a Board Member of Kleinhans Music Hall, InfoTech WNY, and the Friends of Reinstein Woods.
“Jeremy Oczek and his team at Bond have been key business partners for WAND. Through our entire experience with their firm they have been aggressive, professional, knowledgeable, and fair. I'd highly recommend their services to anyone who is seeking a firm that isn't afraid to fight for what is right.”
- Dave Perrill, President, WAND Corporation
Honors and Affiliations
- Listed in:
- The Best Lawyers in America® 2018, Litigation - Patent
- Martindale-Hubbell®, AV Preeminent Peer Review Rating
- New York Law Journal, 2015 Rising Stars
- New York Super Lawyers 2017®, Intellectual Property Litigation
- American Intellectual Property Law Association
- Erie Country Bar Association
Trials and Dispositive Judgments:
Ikan International Corporation v. Philips Lighting North America Corporation et al. (S.D. Tex.) – Represented Philips Lighting as lead counsel in the defense of a declaratory judgment action relating to Philips Lighting’s pioneering LED technologies. Obtained dismissal of the action and final judgment on behalf of Philips Lighting.
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 Significant 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.
Activelight, Inc. v. Cosi, Inc.; Activelight, Inc. v. White Castle Management Co.; WAND Corporation v. Activelight, Inc. (D. Del.) – Represented WAND and its customers Cosi and White Castle as lead counsel in three patent cases against Activelight (formerly known as Activision TV, Inc.) involving digital menu technology. After we discovered key prior art, the case was successfully settled.
Ameranth, Inc. v. PAR Technology Corporation (E.D. Tex.) – Represented PAR, a leading provider of technology solutions for hospitality companies, in the defense of a patent infringement action relating to information management and communications systems. The case was successfully settled shortly before trial.
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.
Breathe Yoga & Juice Bar, Inc. v. Bartolotta (N.D.N.Y.); Breathe Yoga & Juice Bar, Inc. v. Perno (W.D.N.Y.) – Represented Breathe Yoga as lead counsel in two federal trademark infringement actions. Both cases were successfully settled with consent orders and permanent injunctions after the lawsuits were filed.
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.
D B Industries, LLC, d/b/a Capital Safety USA v. Buckingham Manufacturing Co., Inc. – Represented Buckingham in the defense of two patents relating to pole climbing fall prevention assemblies and suspension trauma relief strap assemblies. The case was successfully settled.
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.
Jaccard Corporation v. WINCO Industries Company et al. (W.D.N.Y.) – Represented Jaccard as lead counsel in a trade dress infringement action. The case was successfully settled after the lawsuit was filed.
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. The case was successfully settled.
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. The case was successfully settled.
Philips Lighting North America Corporation et al. v. GVA Lighting, Inc. (D. Mass.) – Represented Philips Lighting as lead counsel in a patent infringement action relating to Philips Lighting’s pioneering LED technologies. The case was successfully settled after the lawsuit was filed.
PPS Data, LLC. v. athenahealth, Inc. (M.D. Fla.) – Represented athenhealth in a patent case involving alleged infringement with respect to electronic claims processing systems. After motion practice on the substantive merits, the case was stayed in view of a reexamination proceeding, which was ultimately successful.
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. The case was successfully settled.
ShopNTown, LLC v. Landmark Media Enterprises, LLC (E.D. Va.) – Represented ShopNTown in a patent infringement action relating to web site architecture and functionality. The case was successfully settled.
Total Containment Systems, LP v. Central Painting Inc. et al. (E.D. Wis.) – Represented TCS in a patent infringement action involving bridge platform systems against one of its competitors and a contributory infringer. The case was successfully settled after the lawsuit was filed.
Ultralife Corporation v. Targus Group International, Inc. et al. (W.D.N.Y.) – Represented Ultralife as lead counsel in a trademark infringement action. The case was successfully settled after the lawsuit was filed.
Union of Orthodox Jewish Congregations of America v. Once Again Nut Butter Collective Inc. (S.D.N.Y.) – Defended Once Again Nut Butter, a manufacturer of organic and natural nut butters, in a trademark infringement action and assisted with successfully settling the case.
- IP Strategy Summit, How the Changes to the Pleadings Standard Are Affecting Patent Litigation, 10/27/16
- Distinguished Biology Alumni Panel, State University of New York College at Geneseo, 10/17/14
- Annual Meeting of the Association of Towns of the State of New York, Intellectual Property Issues for Municipalities, 2/17/14
- Bond, Schoeneck & King's In-House Counsel CLE Series: The Top 10 Things Every Company Should Do to Protect Its IP, 10/16/13
- The Knowledge Congress, Defending Yourself Against Online Patent Trolls, Webinar, 6/28/13
- Quoted in "Ownership and control of websites vary," Buffalo Business First, 3/4/16
- Quoted in "‘Disparaging’ trademarks take new direction," Buffalo Law Journal, 1/25/16
- Quoted in "Business-friendly automatic assignment provisions challenged," Buffalo Law Journal, 1/25/16
- Quoted in "Photonics could bring IP work to area," The Daily Record, 11/2/2015
- Quoted in "PTAB changes: levelling the playing field," World Intellectual Property Review, 10/1/15
- Quoted in "Facebook and Google demand review of Apple v Samsung ruling," World Intellectual Property Review, 7/21/15
- Quoted in "Patent trolls mushroom, squashing them proves tough," Rochester Business Journal, 6/12/15
- Quoted in "Lawyer drops defamation claim against EFF patent blog," World Intellectual Property Review, 6/8/15
- Author, "Common Law vs. Federal Trademark Registration," Bond IP & Technology Newsletter, Fall 2014
- Quoted in "Software patents called into question," Buffalo Law Journal, 8/12/14
- Quoted in "What’s what in intellectual property," Buffalo Law Journal, 8/11/14
- Author, "Strategies to Battle NPEs: Lessons from the Front Lines," Bond IP & Technology Newsletter, Spring 2014
- Quoted in "Social Media After Death," 13WHAM ABC Rochester, 2/23/14
- Quoted in "Man Fighting to Access Late Wife's Facebook," 13WHAM ABC Rochester, 2/24/14
- Quoted in "FDA approval adds new life to Copaxone," Life Sciences Intellectual Property Review, 1/29/14
- Quoted in "'Arrest threat' for US patent company in China," World Intellectual Property Review, 12/18/13
- Quoted in "Teva to lose grip on Copaxone next year," Life Sciences Intellectual Property Review, 11/20/13
- Quoted in "Samsung under fire over alleged Apple secrets leak," World IP Review, 10/7/13
- Author, "Patent Exhaustion: Bowman v. Monsanto (Supreme Court 2013)," Bond IP & Technology Newsletter, Summer 2013
- Quoted in "Samsung says Ericsson unfairly seeks ‘billions more’ in licensing fees," World IP Review, 8/29/13
- Quoted in "US court rules Teva patent invalid," Life Sciences IP Review, 7/30/13
- Quoted in "Wi-Lan loses patent suit in under an hour," World IP Review, 7/18/13
- Quoted in "UCB challenges Teva generic drug application," Life Sciences IP Review, 7/3/13
- Quoted in "AbbVie triumphs in Humira case," Life Sciences IP Review, 7/2/13
- Quoted in "Lawyers Weigh In On Obama ‘Patent Troll’ Initiatives," Law360, 6/6/13
- Author, "Patent Filing Strategies Under the AIA," Bond IP & Technology Newsletter, Spring 2013
- Author, "Rethinking Defense in ‘Patent Troll’ Cases," Corporate Counsel, 3/27/13
- Author, "Supreme Court shaping IP law," Buffalo Law Journal, 3/11/13
- Author, "Q4, discussing upcoming U.S. patent law changes," Rochester Business Journal, 3/8/13
- 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, 3/12/12
- Quoted in "High Court Says Willful Blindness Is Evidence of Knowledge in Induced Patent Infringement, BNA's Patent," Trademark & Copyright Journal, 82 PTCJ 137, 6/3/11
- Quoted in "Actual Knowledge Necessary For Inducement: High Court," Law360, 5/31/11
- Interviewed in "Patent Law Reform: Adjusting to a New World of First-To-File and More," The Metropolitan Corporate Counsel, 4/3/11
- Quoted in "In High Court Patent Fight, Tech and Auto Companies Lobbied White House to Stay Out of Case," The National Law Journal, 3/1/11
- Quoted in "False Marking Constitutionality Debate to Rage On," Law360, 2/24/11
- Quoted in "Supreme Court Weighs Induced Infringement Test," Law360, 2/23/11