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Mr. Handal focuses his practice on intellectual property trial work, licensing, and related corporate matters, as well as the enforcement and procurement of IP rights in the U.S., Europe and Asia. With over 30 years of experience, Mr. Handal has served as lead counsel in over 180 intellectual property lawsuits including jury trials, bench trials and overseas litigation, and has obtained or enforced over 700 patents. He represents multinational corporations and individuals across diverse technologies and industries, including pharmaceuticals, business methods, medical devices, software, electronics, molecular biology, biomedical systems, holography, apparel and retail.
Mr. Handal's experience includes writing and prosecuting an information technology patent portfolio licensed in 2006 to Microsoft for an upfront royalty of $32 million. Recent projects include a patent infringement action in the area of electronic instrumentation and counsel to a plaintiff in a Hatch-Waxman related unfair competition action.
Prior to joining Brown Rudnick, Mr. Handal was a partner at Kirkpatrick & Lockhart Nicholson Graham LLP. In 1976, he was a founding partner of Handal & Morofsky, a New York-based IP litigation boutique, where he was lead counsel in over 20 published intellectual property decisions. Additionally, Mr. Handal served as an Examiner in the USPTO, where he ruled on patent applications in the areas of communications electronics and color television.
At Polytechnic University, Mr. Handal was a NASA-funded Research Associate. He conceived and implemented the first computer system utilizing a digital algorithm to achieve bandwidth compression. In 1969, he authored the earliest scientific paper on that now-ubiquitous technology. His patents on computer animation have been successfully asserted against and/or licensed to a number of major Hollywood studios.
Representative Cases (as Lead Counsel)
o Chosun International, Inc v. Chrisha Creations, Ltd. (2nd Cir., 2005) - Asserted copyright for costumes and succeeded in obtaining decision explicitly recognizing clothing as subject matter which may be protected by copyright law, overruling a longstanding tenet of the copyright law.
o Conair Corporation v. Eurasia Concepts, Inc. (DC Conn, 2004) - Obtained injunction enforcing pioneering hair straightener patent involving rearrangement of disulfide bonds in human hair keratin using an equilibrium reaction.
o ProFitness Physical Therapy Center v. Pro-Fit Orthopedic and Sports Physical Therapy P.C., 314 F. 3d 62, 65 USPQ2d 1195 (2nd Cir., 2004) - Obtained for our client an order enjoining trademark infringement after a decision introducing the legal theory of progressive encroachment to Second Circuit law.
o Celebration International, Inc. v. Chosun International, Inc., 234 F.Supp.2d 905, 2003 Copr.L.Dec. P 28, 562, 65 USPQ 2d 1504 (SD Ind., 2002) - Defended copyright infringement claim respecting Halloween costumes.
o Chorus Corporation v. Riber S.A. (DC NJ, 2000) - Successfully defended patent infringement claim on behalf of manufacturer of ultrahigh vacuum semiconductor fabrication equipment.
o Neiman Marcus Group, Inc. v. Philippe Charriol International, Ltd., 56 USPQ2d 1975 (DC SNY, 2000) - Obtained a summary judgment in a declaratory judgment defense of a retailer in a jewelry design trade dress case.
o Hermes International v. Lederer de Paris Fifth Avenue, Inc., 50 F.Supp.2d 212, 50 USPQ2d 1257 (DC SNY, 1999) - Defended retailers against alleged infringement of trade dress in handbags, obtaining favorable decision on summary judgment.
o Seche v. Tevco (DC CD Cal, 1995) - Defended SNPE subsidiary against alleged infringement of patent on quick drying nail enamels, obtaining for client royalty free license and major purchase by patent holder of product from defendant client.
o Hoechst v. Foster-Miller (PTO Bd Int, 1995) - Represented junior party respecting inventorship of process for manufacture of high strength liquid crystal polymer materials.
o Times Newspapers, Ltd. v. Times Pub. Co., 1993 WL 120614, 25 USPQ2d 1835, 21 Media L. Rep. 1065 (MD Fla., 1993) - Successfully asserted London paper's "The Times" trademark against newspaper in Tampa.
o William Wrigley, Jr. Co. v. Waters, (DC SNY) 5 USPQ2d 1741 (Dec. 16, 1987), affd. 890 F.2d 594, 13 USPQ 2d 1125 (2nd Cir., 1989) - Enforced obligations against patent agent in successful nine week bench trial.
o Score, Inc. v. Cap Cities/ABC, Inc., 724 F. Supp. 194, 13 USPQ 2d 1230 (DC SNY, 1989) - Successfully asserted trade dress rights in television program.
o JVC v. RCA (DC SNY, 1983) - Represented JVC in contest respecting inventorship of videodisc resulting in termination of RCA videodisc business.
o Instruments SA v. American Holographic, Inc. (DC Del, 1979) - Enforced pioneer holographic optical element patents against infringer.
o BLI v. Heritage Quilts (DC SNY, 1978) - Successfully asserted trade dress rights in clothing in ground-breaking fashion industry case.
Speaking Engagements
o Frequent panelist at the NYIPLA and seminar lecturer at Georgetown University Law Center
Community Involvement
o Board member of the American Classical Orchestra
Bar Admissions & Memberships
o Admitted: New York Bar, Connecticut Bar, United States Patent and Trademark Office
o Admitted: U.S. Supreme Court, Court of Appeals for the Federal Circuit, U.S. Court of Appeals Second Circuit, U.S. Court of Appeals Fourth Circuit, U.S. Court of Appeals Ninth Circuit, Southern District of New York, Eastern District of New York, Northern District of New York, District of Connecticut, Eastern District of Texas |
