Joel E. Lutzker

Mr. Lutzker counsels clients in patent, trademark, copyright, unfair competition and trade secret litigation, transactions, counseling and prosecution matters. His practice's technical emphasis is on electromechanical systems, medical equipment, semiconductors, computer hardware, telecommunications and consumer electronics.  He has successfully litigated and tried patent, trademark, unfair competition and trade secret cases in district and appellate courts involving such diverse technical fields as harddisk drives, dynamic random access memories, facsimile machines, VCR’s, medical devices and thermoplastic resins.

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

• New York
• Connecticut
• 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

• Court of Appeals Says Rambus Did Not Deceive Standard Setting Organization, asialaw, June 1, 2008
• US Supreme Court Limits Attacks on Arbitration Awards, AsiaLaw, May 1, 2008
• Patent Pools, New York Law Journal, April 21, 2008
• Reasonable Royalties During Pendecy of Stayed Injunction May Exceed Pre-injunction Rate, AsiaLaw, April 1, 2008
• US Courts Increase Use of Compulsory Patent Licenses, AsiaLaw, March 1, 2008
• Court Finds Famous Foreign Trademarks Protectable, AsiaLaw, February 1, 2008
• US Supreme Court to Clarify Patent Exhaustion Doctrine, AsiaLaw, January 1, 2008
• Business Method Patents Curtailed By Court, AsiaLaw, November 1, 2007
• 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)

Fashion & Apparel Law Blog Articles

• "Patent Your Patent Leather: Patent Protection for the Fashion Industry", January 28, 2008

Intellectual Property Law Blog Articles

• "Supreme Court Strengthens Patent Exhaustion Doctrine", June 10, 2008
• "United States Supreme Court to Clarify Patent Exhaustion Doctrine", December 13, 2007

Books

• International Trade Commission, Section 337 Investigations, Joel Lutzker and Leonard Sorgi, 2008

Speeches

• "How an Arbitration Panel Decides on the Validity of Intellectual Property", Third Annual Conference on International Arbitration and Mediation, Fordham Law School, June 16-17, 2008
• "Intellectual Property Due Diligence", Sheppard Mullin Shanghai Office, May 13, 2008
• "How Should Chinese Corporations Positively Respond to the Litigation Under Section 337", Third Annual Conference on Corporate Intellectual Property in China 2008, Shenzhen, China, May 9, 2008
• "Software Piracy in China: Strategies for Prevention and Enforcement of Your Rights", LexisNexis "Piracy Counterfeiting" conference, Shanghai, October 25, 2007
• "Handling IP disputes before the United States International Trade Comission", The Second Annual Conference on Dispute Avoidance and Resolution, The Regent Shanghai, China, August 30,2007
• “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