Daniel  J. Melman whiteplains

Daniel J. Melman

Member

Overview

Daniel Melman is an experienced intellectual property litigation and trial attorney, with a focus on patents, trade secrets, and other complex matters across various technologies and industries. He concentrates his practice on the protection and enforcement of intellectual property assets and defending clients against claims of infringement.

Daniel has taken lead roles in all aspects and phases of litigation, trials, and appeals in federal courts throughout the United States, in the United States Patent Office, and in the International Trade Commission as well as coordinating multinational parallel litigation proceedings. Daniel is registered to practice before the United States Patent and Trademark Office. Daniel also contributes his time towards pro bono activities and organizations including the Volunteer Lawyers for the Arts. In addition, he has served as a guest lecturer on IP rights for innovators and entrepreneurs.  

Prior to attending law school, Daniel worked as an engineer at a Fortune 1000 hi-tech company in Long Island, New York.

Representative Matters

  • Echologics, LLC v. Aquarius Spectrum Ltd., 1:20-cv-04956-LMM (N.D. Ga.) (Water monitoring and leak detection technology). Lead counsel representing defendant in an action involving claims of patent infringement.
  • High Sec Labs Ltd. v. iPGARD, Inc. et al., 2:20-cv-01797-MMD-NJK (D. Nev.) (Cybersecurity and computer peripheral sharing technology). Lead counsel representing plaintiff patentee in an action for patent infringement and antitrust violation counterclaims. Case settled on favorable terms.
  • Apple Inc. v. Blix, Inc. PTAB – IPR2020-01635 (Email management and security technology). Represented patentee in Inter Partes Review. Petition fully dismissed on the merits.
  • Field v. The Hamptons International Film Festival, Inc., 2:20-cv-4546 (E.D.N.Y.) (Copyrighted photography) (pro bono). Lead counsel. Represented freelance photographer in an action for copyright infringement. Case settled on favorable terms.
  • Syte – Visual Conception Ltd. v. Bed Bath & Beyond, Inc., 2:20-04071-BRM-ESK (D.N.J. 2020); Syte v. Home Depot U.S.A., Inc., 1:20-CV-00909-LMM (N.D. Ga.) (Computer visual search and AI neural network technology). Lead counsel. Represented plaintiff patentee in multiple parallel litigations for patent infringement. All cases settled on favorable terms.
  • In the Matter of Certain Blood Separation and Cell Separation Devices, Inv. 337-TA-1147 (ITC 2019) (blood separation devices and platelet-rich plasma technology). Lead counsel. Represented Respondents Estar Technologies, Ltd. and Eclipse MedCorp, LLC in an International Trade Commission investigation involving claims of patent infringement. Complainant withdrew its complaint – resulting in a termination of the investigation – following the Commission’s Investigative Staff’s prehearing brief agreeing with Respondents’ positions that the asserted patent was invalid and not infringed and that the Complainant lacked a domestic industry.
  • Broker Genius Inc. v. Seat Scouts LLC et al., 1:17-cv-08627 (S.D.N.Y. 2017) (Software as a Service, SaaS, technology). Co-lead counsel. Represented plaintiff in an action for breach of contract and unfair competition. Following entry of a preliminary injunction and a finding of contempt and award of attorney’s fees against the defendants, obtained a jury verdict on all counts, awarding $4.5M, and entry of a permanent injunction. Final judgment and permanent injunction fully affirmed on appeal to the Second Circuit.
  • Broker Genius Inc. v. Zalta et al., 1:17-cv-02099-SHS (S.D.N.Y. 2017) (Software as a Service, SaaS, technology). Lead counsel. Represented plaintiff in an action for trade secrets misappropriation, copyright infringement, breach of contract, and unfair competition. Case settled favorably after entry of judgment and entry of a permanent injunction against the defendants.
  • Research Corporation Technologies, Inc. v. Eli Lilly and Company, 4:16-cv-00191-TUC-FRZ (D. Az. 2016) (pending) (Recombinant enzyme technology in the manufacture of Insulin drugs). Representing the plaintiff in an action for breach of the license agreement and unjust enrichment.
  • Mute First Ring Ltd. v. LG Electronics, Inc. et al., Case No. 1:18-cv—00725 (S.D.N.Y. 2018) (Android OS functionality). Co-lead counsel. Represented plaintiff patent owner in an action for patent infringement.  Case settled on favorable terms.
  • Tjat Systems v. Expedia, Inc., Case No. 1:16-cv-00581 (D. Del. 2016) (pending) (E-commerce and internet server technology). Co-lead counsel. Representing the plaintiff patent owner in an action for patent infringement. Successfully defeated the motion to dismiss on 101 grounds. (Case is currently on appeal to the Federal Circuit.)
  • RegenLab USA LLC v. Estar Technologies Ltd., Case No. 1:16-cv-8771 (S.D.N.Y. 2016) (pending); RegenLab USA LLC v. Raj Kanodia, M.D. et al., Case No. 1:17-cv-03845 (S.D.N.Y. 2017) (pending) (blood separation devices and platelet-rich plasma technology). Lead counsel. Representing multiple defendants (foreign manufacturer, distributors, and physician end-users) in parallel litigations involving defending claims of patent infringement and assertion of antitrust counterclaims. Obtained dismissal of a foreign manufacturer for lack of personal jurisdiction; suit against physicians was voluntarily dismissed
  • Karmon v. Miambe Ltd., Case No. 1:16-cv-01643-DLC (S.D.N.Y. 2015) (dental implant devices) Lead counsel. Represented plaintiff in patent infringement suit. Case settled on favorable terms.
  • On Track Innovations Ltd. v. T-Mobile USA, Inc., Case No. 1:12-cv-2224 (S.D.N.Y. 2012) (near field communication and mobile devices) Represented plaintiff in patent infringement suit. Case settled favorably following successful Markman decision and summary judgment ruling of infringement.
  • Realtime Data LLC v. Morgan Stanley, Case No. 1:11cv6696 (S.D.N.Y. 2012) (financial data compression) Represented plaintiff in patent infringement suit. Case settled on favorable terms.
  • LG Electronics v. Iridian, Case No. 2:04cv391 (D.N.J. 2007) (biometrics) Represented defendant in suit involving claims and counterclaims of patent and copyright infringement, trade secret misappropriation, breach of contract, and antitrust violations. Case settled on favorable terms.
  • Donnelly v. Reitter & Schefenacker, Case No. 1:00cv751 (W.D. Mich. 2002) (electro-mechanical automotive devices) Represented plaintiff in patent infringement suit. Case settled favorably following successful Markman decision.
  • Litton v. Pirelli, Case No. 00-cv-10584 (C.D. Cal. 2008) (fibre optic amplifiers) Represented defendant in patent infringement suit. Case settled on favorable terms prior to trial.
  • Yeda Research and Development Company v. ImClone, Case No. 1:03cv8484, 443 F.Supp.2d 570 (S.D.N.Y. 2006) (anti-cancer therapy) Represented plaintiff, the technology transfer company of the Weizmann Institute of Science, in an action to correct the inventorship of a patent covering the use of ImClone’s blockbuster monoclonal antibody Erbitux® (cetuximab). Case settled favorably following the trial and a decision on the merits in favor of Weizmann.
  • In the Matter of Certain Wireless Communications Equipment and Articles Therein, Inv. No. 337-TA-866 (ITC 2013) (LTE wireless communication systems) Represented Respondents Ericsson Inc. and Telefonaktiebolaget LM Ericsson in ITC investigation involving claims of patent infringement. Case settled favorably following an evidentiary hearing.
  • In the Matter of Certain Computer Products, Computer Components and Products Containing Same, Inv. No. 337-TA-628 (ITC 2011) (wireless routers and computer power management) Represented Complainant IBM in ITC investigation involving claims of patent infringement. Case settled favorably following an evidentiary hearing.
  • Israel Bio-Engineering v. Amgen et al., Case No. 2:02cv6860 (C.D. Cal. 2002) (autoimmune disease therapeutics) Represented Defendant Yeda Research and Development Company in patent infringement suit. Obtained summary judgment dismissing all claims; affirmed on appeal to the Federal Circuit.
  • IPR2015-01317 (USPTO 2015): Detachably Integrated Battery Charger for Mobile Cell Phones and Like Devices. The represented petitioner in Inter Partes Review. IPR and related district court cases settled on favorable terms.
  • Tjat Systems v. Expedia, Inc., Case No. 1:16-cv-00581 (D. Del. 2016) (E-commerce and internet server technology). Lead counsel. Represented plaintiff patentee in an action for patent infringement. Successfully defeated a motion to dismiss on Section 101 grounds.
  • RegenLab USA LLC v. Estar Technologies Ltd., Case No. 1:16-cv-8771 (S.D.N.Y. 2016); RegenLab USA LLC v. Raj Kanodia, M.D. et al., Case No. 1:17-cv-03845 (S.D.N.Y. 2017) (Blood separation devices and platelet-rich plasma technology). Lead counsel. Represented multiple defendants (foreign manufacturer, distributors, and physician end-users) in parallel litigations involving claims of patent infringement and antitrust counterclaims. Obtained dismissal of a foreign manufacturer for lack of personal jurisdiction. All cases voluntarily dismissed.

Professional Affiliations

  • New York Intellectual Property Law Association (NYIPLA)
  • American Intellectual Property Law Association (AIPLA)

Community Involvement

  • Volunteer Lawyers for the Arts

News and Insights

Publications

  • “PTAB Concludes That RPX’S Failure to Name Its Client as a Real Party in Interest Nixes IPRs,” Lexology, October 2020.
  • “Federal Circuit: Common Sense May Substitute For Elements Not In The Prior Art,” Lexology, July 2020.
  • “Safeguarding Trade Secrets With A Newly Remote Workforce,” Law360, March 2020.
  • “Federal Circuit Raises Evidentiary Obstacles For Patentees,” Law 360, February 2020.
  • “Significant Patent Damages Cases Will Lead To More Rigorous Damages Proof,” The New York Intellectual Property Law Association Bulletin, April/May 2011.
  • “United States Supreme Court Takes a Second Look at Patent Exhaustion, But Is It Déjà Vu Again?” International Asset Management (IAM) Magazine, 2010.
  • “Patentable Subject Matter in the US: Past, Present, and Future,” International Asset Management (IAM) Magazine, May 2009.
  • “Post Markman: Claim Construction Trends,” 7 J. L. & Tech. 34, Spring 2001.
  • “Patently Wrong: A Critical Analysis of Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank,” 74 St. John’s L. Rev. 875, 2000.

News Releases

Speaking Engagements

  • “Intellectual Property Fundamentals for I.T. Professionals,” New York Metro Chapter Association for Computing Machinery, July 2021.
  • “Intellectual Property for Innovators and Entrepreneurs,” Guest Lecturer, St. John’s University Collins College of Professional Studies, November 2021.
  • “ITC Litigation and Enforcement: Trends and Challenges Explored,” The Knowledge Group, April 2021.
  • “Forward-Looking Tips to Avoid Spoliation Sanctions,” West LegalEdcenter, February 2021.
  • “Innovation and IP – Protecting Trade Secrets,” – 5th Annual IIPLA Virtual IP Summit, October 2020.
  • “U.S. Trade Secret Laws – What Technology Companies Should Know,” Tel Aviv, Israel, May 2018.
  • “David v. Goliath: Greed or Fair Play? The Evolving Market of U.S. Patent Enforcement and Monetization” – AIPPI Israel Conference, The 3rd International Convention of the Economy of Innovation, Tel-Aviv, Israel, May 2018.