Nolan M. Goldberg is a Senior Counsel in the Litigation Department and a member of the Patent Law Group, resident in the New York office. As an intellectual property litigator, his practice focuses on patent, trademark, and trade secret litigation and counseling.
Nolan's work has included patent and trade secret litigations and negotiations concerning optical cross-connects; voice-over Internet protocol ("VoIP"); bar code scanners; computer networking; financial business methods and software, including securities settlement, fail management and trade execution and reporting software; data storage; handheld computers; least-cost routing; pharmaceuticals; cardiac electro-stimulatory devices and prosthetics. Nolan also has experience prosecuting patent applications before the U.S. Patent and Trademark Office in encryption, CMOS, HDTV, virtual private networks ("VPN"), e-commerce, XML/XSL, financial instruments, semiconductor electronics, medical device technology, inventory control and analysis, cellular communications, Check 21 and business methods. Nolan also has conducted numerous freedom-to-operate searches, written opinions, and counseled clients in the areas of bar code scanners, imaging, book publishing, computer networking, business methods, Power Over Ethernet ("PoE"), and digital content distribution. He has assisted in evaluating patents for inclusion in patent pools involving large consumer electronics and entertainment companies concerning CD and DVD technology.
As a founding member of the Litigation Department’s Electronic Discovery Task Force, Nolan is often called upon to develop e-discovery strategies to be used in all types of litigations, with a particular focus on selecting appropriate tools, developing proportionate discovery plans, cross border electronic discovery, managing the overall burden and cost of the electronic discovery process, and obtaining often overlooked electronic evidence, including computer forensics. Nolan also assists clients to develop and implement information management programs to reduce expense and risk, meet compliance obligations, and tame e-discovery burdens.
Through active participation in industry events, such as Interop, the CloudLaw Summit (London), Cloud Connect, Enterprise 2.0, O’Reilly’s Strata, and the Computer Security Institute’s (CSI’s) Annual and SX conferences, Nolan stays on the cutting edge of key developments in IP and technology, such as those raised by emerging cloud computing, borderless computing, and Big Data technologies, leverages relationships in these networks on behalf of our clients, and provides a variety of value-added service. Nolan has authored numerous articles and given numerous presentations on emerging issues and trends in both technology and law, and has often been called upon to comment on various media outlets including Business Week, IPlaw360, IT Business Edge, CIO.com, Forbes, and The National Law Journal.
Nolan is also the primary author of the e-discovery section of the International Institute for Conflict Prevention and Resolution’s model economical litigation agreement, colloquially known as the “Litigation Prenup.”
Prior to practicing law, Nolan was a computer specialist at Underwriters Laboratories (UL).
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Nolan's representative litigation matters include:
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Papyrus Technology Corporation v. New York Stock Exchange LLC (S.D.N.Y.) Co-defended the New York Stock Exchange in a patent infringement action asserted by Papyrus Technology Corporation. A Markman hearing was conducted in December of 2007, which resulted in a favorable Markman ruling in September of 2008. Subsequently obtained summary judgment of invalidity of the last two patents remaining before the district court in the aftermath of the Markman ruling, which was affirmed by the Federal Circuit.
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Realtime Data LLC D/B/A/ IXO v. CME Group et al. (E.D. Tex.) Representing NYSE Euronext, NYSE Arca, Inc., NYSE Amex, LLC, Securities Industry Automation Corporation, and the Options Price Reporting Authority in three related patent infringement suits pending in the Eastern District of Texas, which are directed to data compression.
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Vraston v. Depositary Trust & Clearing Corporation (S.D.N.Y.) Represented Depositary Trust & Clearing Corp. in a patent infringement lawsuit related to Exchange Traded Funds. The matter was dismissed for failure to state a claim following the Supreme Court’s affirmance of the Bilksi decision.
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BIAX Corp. v. Analog Devices, Inc. (E.D. Tex.) Represented Analog Devices, a world leader in high-performance signal processing solutions, in the defense of a five-patent litigation relating to parallel processing in computers. 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. Following arbitration of the remaining patent, the arbitrator ruled in our client’s favor, finding no infringement and awarded attorneys’ fees to our client.
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Abbott Laboratories v. ImClone Systems, Inc. (D. MA) 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 settled successfully shortly before hearings on motions for summary judgment.
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Ossur North America, et al. v. Freedom Innovations, et al. (C.D. Cal.) Obtained a favorable settlement in representing Ossur North America, et al., a leading manufacturer of prosthetic devices, in separately filed patent infringement and unfair competition actions respecting prosthetic feet
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Datalogic Scanning, Inc. v. Metrologic Instruments, Inc. (D. Ore.) Representing Datalogic Scanning, Inc., one of two leading manufacturers of bar code scanners of the type commonly seen at checkouts, in a patent infringement action and a trade secret action, each filed against Metrologic, Inc. in Eugene, Oregon
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Rates Technology Inc. et al. v. Mitel Networks (E.D.N.Y.) Successfully represented Mitel Networks, a provider of Internet Protocol telecommunications systems, in this patent infringement action - the case was settled
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Rates Technology, Inc. v. Shoretel, Inc. (N.D. Cal.) Successfully represented Shoretel, Inc., a provider of Internet Protocol telecommunications systems, in this patent infringement case, which was settled
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