Joel E. Lutzker

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Overview
Memberships
Articles
Speeches

Mr. Lutzker represents clients in patent, trademark, copyright, unfair competition and trade secret litigation, transactions, counseling and prosecution matters. With a background in Physics, his practice's technical emphasis includes semiconductor devices, computer hardware, telecommunications and consumer electronics. Mr. Lutzker's experience has had particular focus in the representation of Asian based clients in United States litigation both in Federal Court and before the United States International Trade Commission ("ITC") under Section 337 of the Tariff Act. He has handled ITC patent actions concerning Dynamic Random Access Memories, Single In-Line Memory Modules, DC Brushless Motors and Video Cassette Recorders among other technologies. He is also a frequent speaker, both in the United States and abroad, on the unique litigation challenges facing respondents in the ITC and tactics for successful resolution of ITC litigation.

Representative cases:

Represented electronics manufacturer in defense of ITC investigation involving DRAM patents. Successfully settled after trial.
Represented television manufacturer in defense of ITC investigation involving VCR patents. Successfully settled.
Represented electronics manufacturer in defense of ITC investigation involving Single In-line Memory Modules. Successfully settled.
Represented medical equipment manufacturer in prosecution of ITC investigation involving radioulucent hospital beds. Successfully settled after trial.
Represented automotive accessories manufacturer in design patent, trade dress and copyright litigation. Obtain successful jury verdict.
Represented television manufacturer in defense of patent litigation involving V-chip technology. Successfully settled after summary judgment motion.
Represented computer hardware manufacturer in defense of patent litigation involving keyboard technology. Successfully obtained dismissal.
Represented modem manufacturer in defense of copyright infringement litigation. Successfully settled.
Represented office equipment supplier in defense of false advertising litigation. Successfully settled.
Represented television manufacturer in defense of patent litigation involving camcorder patents. Successfully settled after summary judgment.
Represented book publisher in prosecution of copyright infringement claim against book compiler. Successfully settled after summary judgment.
Represented office equipment manufacturer in prosecution of patent infringement litigation involving toner technology. Successfully settled after summary judgment.
Represented toy manufacturer in defense of trade dress infringement litigation. Successfully settled after appeal.
Represented consumer products company in defense of trade dress infringement litigation. Successfully settled.

Reported decisions: Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996); Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984.); LG Electronics, Inc. v. Bizcom Electronics, Inc., 453 F.3d 1364 (Fed Cir. 2006); Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed Cir. 1995); Canterbury Belts Ltd. v. Lane Walker Rudkin, Ltd., 869 F.2d 34 (2d Cir. 1995); American Greetings Corp. v. Dan-Dee Imports, Inc., 807 F.2d 1136 (3d Cir. 1986); Humanetics, Inc. v. Kerwit Medical Products, Inc., 709 F.2d 942 (5^th Cir. 1983); Western Geophysical Co. of America, Inc. v. Bolt Associates, Inc., 584 F.2d 1164 (2d Cir. 1978); Seiko Epson Corp. v. Glory South Software Mfg., Inc., 2007 WL 219944 (D.Or. 2007); Seiko Epson Corp. v. Glory South Software Mfg., 2007 WL 282145 (D.Or. 2007.); Minebea Co., Ltd. v. Papst, 444 F.Supp.2d 68 (D.D.C. 2006); Minebea Co., Ltd. v. Papst, 2005 WL 1711117 (D.D.C. 2005); Minebea Co., Ltd. v. Papst, 231 F.R.D. 3 (D.D.C. 2005); Minebea v. Pabst, 231 F.R.D. 1 (D.D.C. 2005); Minebea Co., Ltd. v. Papst, 377 F.Supp.2d 34 (D.D.C. 2005); Minebea Co., Ltd. v. Papsi, 374 F.Supp.2d 231 (D.D.C. 2005); Minebea Co., Ltd. v. Papst, 374 F.Supp.2d 202 (D.D.C. 2005); Minebea Co., Ltd. v. Papst, 229 F.R.D. 1 (D.D.C. 2005); Minebea Co., Ltd. v. Papst, 370 F.Supp.2d 297 (D.D.C. 2005); Minebea Co., Ltd. v. Papst, 370 F.Supp.2d 302 ( D.D.C. 2005); Minebea Co., Ltd. v. Papst, 228 F.R.D. 34 (D.D.C. 2005); Minebea Co., Ltd v. Papst, 2005 WL 2106569 (D.D.C. 2005); Minebea Co., Ltd v. Papst, 2005 WL 2106565 (D.D.C. 2005); Minebea Co., Ltd. v. Papst, 355 F.Supp.2d 526 (D.D.C. 2005.); Minebea Co., Ltd. v. Papst, 355 F.Supp.2d 518 (D.D.C. 2005); Minebea Co., Ltd v. Papst, 2005 WL 2106566, (D.D.C. 2005); Minebea Co., Ltd. v. Papst, 221 F.R.D. 11 (D.D.C. 2004); R & M Jewelry, LLC v. Michael Anthony Jewelers, Inc., 221 F.R.D. 398 (S.D.N.Y. 2004); Minebea Co., Ltd v. Papst, 2004 WL 3507907 (D.D.C. 2004); Minebea Co., Ltd v. Papst, 2004 WL 3507908 (D.D.C. 2004); Minebea Co., Ltd v. Papst, 2003 WL 24147447 (D.D.C. 2003); Minebea Co., Ltd v. Papst, 2003 WL 24147448 (D.D.C. 2003); Minebea Co., Ltd. v. Papst, 229 F.Supp.2d 1, (D.D.C. 2002); Orion Elec. Co., Ltd. v. Funai Elec. Co., Ltd., 2001 WL 1506009, (S.D.N.Y. 2001); Comair Rotron, Inc. v. Nippon Densan Corp., 154 F.Supp.2d 326 (D.Conn. 2001); Minebea Co., Ltd. v. Papst, 13 F.Supp.2d 35 (D.D.C. 1998); Wang Laboratories, Inc. v. Mitsubishi Electronics America, Inc., 1995 WL 491434 (C.D.Cal. 1995); Wang Laboratories, Inc. v. Mitsubushi Electronics America, Inc., 1994 WL 782386 (C.D.Cal. 1994); Wang Laboratories, Inc. v. Mitsubishi Electronics America, Inc., 1994 WL 782694 (C.D.Cal. 1994); Wang Laboratories, Inc. v. Mitsubishi Electronics America, Inc., 1994 WL 471438 (C.D.Cal. 1994); Wang Laboratories, Inc. v. Mitsubishi Electronics America, Inc., 1994 WL 471414 (C.D.Cal. 1994); Wang Laboratories, Inc. v. Mitsubishi Electronics America, Inc., 1993 WL 645942 (C.D.Cal. 1993); Wang Laboratories, Inc. v. Mitsubishi Electronics America, Inc., 1993 WL 645938, (C.D.Cal. 1993); Wang Laboratories, Inc. v. Mitsubishi Electronics America, Inc., 860 F.Supp. 1448 (C.D.Cal. 1993); Application of Minebea Co., Ltd., 143 F.R.D. 494 (S.D.N.Y. 1992); Dushkin Pub. Group, Inc. v. Kinko's Service Corp., 136 F.R.D. 334 (D.D.C. 1991); Augat, Inc. v. John Mezzalingua Associates, Inc., 642 F.Supp. 506 (N.D.N.Y. 1986); American Greetings Corp. v. Dan-Dee Imports, Inc., 619 F.Supp. 1204 (D.N.J. 1985).

Education

J.D., New York University, School of Law, 1975
B.A. in Physics, New York University College of Arts and Sciences, 1972, cum laude

Admissions

U.S. Patent and Trademark Office

Memberships

American Bar Association
New York State Bar Association
Licensing Executives Society
New York Intellectual Property Law Association
ITC Trial Lawyers Association
American Intellectual Property Law Association

Articles

Sheppard Poaches Schulte Roth's IP Head, IP Law360, October 22, 2007

“Intellectual Property Practice and Strategies,” Read Logic The Intellectual Property Leadership Conference, 2006
“Standard of Patentability in the USA Faces Critical Test,” Asialaw, October 2006
“Test Case on Fraudulent Accounting Data in Lawsuits,” Asialaw, September 2006
“Patentability of Product-by Process Patents,” Asialaw, July/August 2006
“Prosecution History Estoppel Under U.S. Law,” China Intellectual Property, June 2006
“Supreme Court Eliminates Automatic Injunctions on Patent Infringement,” Asialaw, June 2006
“The Presumption of Patent Market Power in Antitrust Cases,” Asialaw, April 2006
“Clarifying the Inequitable Conduct Standard,” Asialaw, March 2006
U.S. Supreme Court May Limit Injunctions in Patent Cases, Asialaw, February 2006
“Boost to Patent Protection for Business Methods,” Asialaw, December 2005/January 2006
“No US Copyright in Parts Numbering System,” Asialaw, February 2005
“Engineering and the Digital Millennium,” Asialaw, December 2004/January 2005
“KP Permanent Make-Up, Inc. V. Lasting Impression I, Inc.: Supreme Court
Resolves Circuit Split On Fair Use Defendant’s Burden,” SRZ Client ALERT, Dec. 16, 2004 (co-author)
“Easing Electronic Discovery Burdens,” Asialaw, November 2004
“Court Changes Willful Infringement Standards,” Asialaw, October 2004
“An Intellectual Property Asset Primer In Light Of The Sarbanes-Oxley Act Of 2002,” SRZ Intellectual Property Developments, Fall 2004 (co-author)
“Federal Circuit Changes Willful Infringement Standards,” SRZ Intellectual Property Developments, Fall 2004
“Highest Patent Court Poised To Clarify Claim Interpretation Rulings,” SRZ Intellectual Property Developments, Fall 2004
Patent Court to Clarify Claim Interpretation Rulings,” Asialaw, September 2004
“Supreme Court Tames Punitive Damages Awards,” Asialaw, August 2004
“ITC Investigations of Asian Companies,” Asialaw, June/July 2004
“Patent Cases and the Prosecution Laches Defence,” Asialaw, May 2004 (co-author)
“Business Method Patents: The US Leads the Way,” Asialaw, April 2004
“Business Methods Patents: The New Reality,” SRZ Intellectual Property Developments, Spring 2004 (co-author)
“Patents on Wall Street: Banks and Brokers are Building Safes Around Their Methods of Doing Business,” IP Worldwide, December 2002 (co-author)
“Festo Redux: A Practitioner’s Guide,” New York State Bar Association Intellectual Property Newsletter, July 29, 2002
“.us Domain Name Now Available,” SRZ Client ALERT, March 2002 (co-author)
“How to Manage and Protect Your Intellectual Property: Intellectual Property Misuse,” Presented at Gorham Conferences, PMAs & Spare Parts Conference, March 2002 (co-author)
“Playing The .Name Game,” SRZ Client ALERT, November 2001 (co-author)
“The Impact of Festo on Patent Practice,” Presented at the New York State Bar Association Intellectual Property Law Meeting, Oct. 13, 2001 (co-author)
“Internet Land Rush: Stake Your Claim to .biz and .info Domain Names,” SRZ Client ALERT, June 2001 (co-author)

Speeches

“Recognizing and Settling Intellectual Property Disputes through Sound and Smart Solutions,” LexisNexis “Dispute Avoidance and Resolution 2006” conference in Beijing, Aug. 30, 2006
“License Negotiation in Japan and China,” May 10, 2006
“Intellectual Property in Mergers and Acquisitions,” LexisNexis’ Corporate Intellectual Property in China 2006 conference in Shanghai, April 21, 2006
“Patents: Opportunities And Dangers For Private Investment Funds,” SRZ 15th Annual Private Investment Funds Seminar, Jan. 19, 2006
“2nd Annual China Semiconductor Conference,” Qualvalue Corporation, 2006
“Connecting to Licensees in the U.S., Europe and Japan,” Licensing Executive Society/Association of University Technology Manager, May 9, 2006
“Cross-Border IP Litigation,” Canadian Institute, Feb. 4, 2005
“Maximizing Returns on Your Intellectual Property Portfolio,” The Wall Street Transcript, Jan. 27-28, 2005
“Valuing Intellectual Property: Opportunities and Challenges,” Schulte Roth & Zabel LLP, Jan. 26, 2005
“Ethical Issues in Trademark Searching,” New York State Bar Association Intellectual Property Law Section Fall Meeting, Oct. 7-10, 2004
“Patents and Standard Setting: Practices and Pitfalls,” Licensing Executives Society, May 13, 2004
“Intellectual Property and Information Technology for Investment Funds,” Schulte Roth & Zabel LLP, June 18, 2003
“Wall Street and the Business Method Patent,” Licensing Executives Society 2001 Annual Meeting, Sept. 25, 2002
“How to Manage and Protect Your Intellectual Property,” Industry Conference sponsored by Gorham Conferences, March 14, 2002
“The Current Thinking in Deal Making Strategy, Implementation and Management,” Licensing Executives Society Annual Meeting, Oct. 30, 2001
Licensing Executives Society annual meetings on IP security interests and patent damages, business method patents and industry standards
American Bar Association annual meeting on patent infringement proceedings before the United States International Trade Commission
New York Intellectual Property Law Association’s CLE conference on trade dress and design patent protection
New York State Bar Association’s CLE conference on Festo case

Events

Third Annual Conference on International Arbitration and Mediation, June 16, 2008