Bio of Salem M. Katsh

Education and Professional Background

  • New York University School of Law, J.D., cum laude, 1972
    -Order of the Coif (top 10 percent)
    - Note & Comment Editor, Journal of International Law & Politics
    (1971-72)
    - American Jurisprudence Award in Civil Law

  • New York University College of Arts & Sciences, B.A., 1970
    - Founders Day Award (GPA of 3.5 or greater)
    - Theresa Farber Award
  • Hebrew University of Jerusalem, Israel, Visiting Student, 1968-69

Bar Admissions
Admitted to practice: New York State Courts; U.S. District Courts -- Southern,
Eastern, and Northern Districts of New York; U.S. Courts of Appeals - -Second,
Ninth and Federal Circuits; Supreme Court of the United States

Employment

  • Weil, Gotshal & Manges LLP (1972-97) (Partner, 1980-97)
    • Founder & Chair, Intellectual Property Group (1987-97)
  • Shearman & Sterling LLP, Partner (1997-2005)
    • Founder & Chair, Intellectual Property Group (1997-2005)
  • Kasowitz, Benson, Torres & Friedman LLP, Partner (2005-06)
    • Founder & Chair, Intellectual Property Group (2005-06)
  • Schnader, Harrison, Segal & Lewis LLP, Partner (2009-2011)
  • Katsh & Associates LLC (2011-2014)
  • KatshLaw LLC (2015-- )

Distinctions

Academic/Professional Activities

  • Adjunct Professor of Law, New York Law School (1981-82)
  • Lecturer, NYU School of Law (1985-86)
  • Planning Committee, ALI-ABA Course of Study, The Economics of Antitrust (1980)
  • Chairman, ABA Antitrust Law Section Economics Committee (1983-84)
  • Chairman, ABA Antitrust Law Section National Institutes Committee (1984-86)
  • Member, ABA Monograph Series Project (1985-87)
  • Member, Suffolk County Bar Association (2015--)
  • Founder and Co-Editor-in-Chief, Journal of Proprietary Rights (Prentice Hall Law & Business 1989-97)
  • Member, Economic Espionage Act Committee, Intellectual Property Owners Association (2001-2002)

Books & Monographs

  • Co-Author, The Limits of Corporate Power (Macmillan 1980), republished (Beard Books 2002)
  • Co-Author, Industrial Policy and the Law, Office of Technology Assessment (U.S. Congress (1981)

Speeches & Articles

  • Comment, 3 NYU J. Int’l L. & Pol. 376 (1970)
  • Note, Innovation and Confusion in Recent Determinations of the Tariff Commission
    Under the Antidumping Act
    , 4 NYU J. Int’l L. & Pol. 212 (1971)
  • Participant, The Dialogue that Happened, Proceedings of Workshop on the Private
    Costs of Regulation
    , Marketing Science Institute and the University of North
    Carolina, School of Business Administration 112 (1978)
  • The Right to Jury Trials in Antitrust Cases, A Specialized Course on: Current
    Problems in Antitrust Litigation, Co-Sponsored by ABA Antitrust Law Section and
    NYSBA Committee on Continuing Legal Education 129 (1981)
  • Speaker, What to do Before the Justice Department, the FTC, or Your Competitor
    Comes—Let’s Make a Deal
    , Antitrust: Living With Your Competition, New York
    Law School Media Law Center (1981)
  • Economic Presumptions Underlying the New Merger Guidelines, Mergers Under the
    New Government Guidelines, Law & Business, Inc./Harcourt Brace Jovanovich
    Publishers 313 (1982)
  • Statement of Salem M. Katsh, Mobil-Marathon and Similar Oil Company Mergers,
    Hearings Before the Subcomm. on Fossil and Synthetic Fuels of the House Comm.
    On Energy and Commerce
    28 (1982)
  • Organizer and Lecturer, ABA National Institute on Antitrust and Economics, 52
    Antitrust Law Journal (1983)
  • Warranty, Contract and Misrepresentation, Product Liability of Manufacturers,
    Prevention and Defense 1984, Practicing Law Institute 215 (1984)
  • Back to Basics: A Critique of the Emerging Judicial Analysis of the Outer Limits of
    Computer Program "Expression
    ," 2 Computer L. J. 1 (Dec. 1985)
  • Organizer and Lecturer, ABA National Institute on Industrial and Intellectual
    Property
    , 53 Antitrust Law Journal 479, 483, 535 (1985)
  • Collateral Restraints in Joint Ventures, 54 Antitrust Law Journal 1003, 1008 (1985)
  • The Value of Patents and other Legally Protected Commercial Rights, 53 Antitrust
    Law Journal 535 (1985)
  • Joint Ventures--Antitrust Problems & Opportunities, ABA Division for Professional
    Education 148 (1985)
  • Act Sets New Standards for Research Ventures, The New Attractions of Corporate
    Joint Ventures: Formation, Structure & Operation, Law & Business, Inc./Harcourt
    Brace Jovanovich Publishers 221 (1985)
  • Antitrust Considerations in Patent and Technology Licensing, Ninth Annual Institute
    for Corporate Counsel, Critical Issues for Corporate Counsel, Practicing Law
    Institute 455 (1986)
  • Contributor, ABA Monograph on Contribution and Claim Reduction in Antitrust
    Cases
    (1986)
  • The Scope of Software Copyright: Is “Program Design” Protectable?, COMCON86,
    IEEE Computer Society, Digest of Proceedings 30 (1986)
  • Organizer and Lecturer, ABA National Institute on The Contested Merger I, VI
    (1987)
  • New Trade Legislation Dramatically Enhances the Rights of Process Patent Owners,
    1 J. Prop. R. 3 (1988)
  • Co-Chair and Speaker, The Departing Employee: Legal and Personnel, Prentice Hall
    Law & Business 53 (1988)
  • Special Issues in Major Biotechnology Litigation, Fifth Annual Biotechnology Law
    Institute, Prentice Hall Law & Business, 172 (1989)
  • Presentations on Intellectual Property Law before Japan and Taiwanese Bar
    Associations (1989)
  • Introduction to the Licensing of Intellectual Property Rights Under the Competition
    Laws of the European Community
    , Technology Licensing and Exploitation,
    Practicing Law Institute (1990)
  • Introduction to the Licensing of Intellectual Property Rights Under the Competition
    Laws of the European Community: An Outline of Primary Sources
    , Technology
    Licensing and Litigation, Practicing Law Institute 369 (1990)
  • Section 337, New Uses for Old Tools in Patent Disputes, J. Prop. R. 32 (1992)
  • Organizer and Principal Instructor in Mock Jury Presentation, First Annual
    Intellectual Property Litigation in Technology Cases-Trial Advocacy Institute
    ,
    Prentice Hall Law & Business (1992)
  • The Kodak Decision and its Implications for the Computer Industry, in Fourteenth
    Annual Computer Law Institute, Prentice Hall Law & Business 184 (1993)
  • Organizer and Principal Instructor in Mock Jury Presentation, Second Annual
    Intellectual Property Litigation in Technology Cases-Trial Advocacy Institute
    , Aspen
    Law & Business (1993)
  • Organizer and Principal Instructor in Mock Jury Presentation, Third Annual
    Intellectual Property Litigation in Technology Cases-Trial Advocacy Institute
    ,
    Prentice Hall Law & Business (1994)
  • Salem M. Katsh, Antitrust Issues: Perspectives on Kodak and Standard Setting in the
    Computer Industry
    , 6 J. Prop. R. 2 (Apr. 1994)
  • Globally, Trade Secrets Laws are All Over the Map, 7 J. Prop. R. 11 (1995)
  • Speaker, The Investigative Services & Security Industry, Mergers and Acquisitions
    Forum
    , FULCRUM Information Services (1998)
  • Speaker, Practicing Law Institute’s Third Annual Internet Law Institute (1999)
    Resolution of Intellectual Property Disputes in the United States, Asia Law (2000);
    The White Pages Guide to Central and Eastern Europe and the CIS (2001); Shearman
    & Sterling Global Publications (2001)
  • Intellectual Property Protection for Proprietary Financial Products, Lectures to
    Senior Legal Staff at Citigroup and Morgan Stanley on the Implication of the State
    Street Decision [allowing “business method patents”], Shearman & Sterling (1999)
  • Keynote Speaker, Trade Secret/Employee Raiding/Non-Compete, Cyber Litigation
    Summit, Glasser Legal Works Seminars (2000)
  • Patents Pending, The Daily Deal 24 (2000)
  • Constitutionality of “No-Citation” Rules, 3 J. App. Prac. & Process 287 (2001)
  • Presentations to GE Senior Intellectual Property Counsel, The Inevitable Disclosure
    Doctrine
    (2001, 2202)
  • Chair and Speaker, Trade Secrets 2002: How to Protect Confidential Business &
    Technical Information
    , Practicing Law Institute 303 (2002)
  • Testimony before the Federal Trade Commission in Hearings on Competition and
    Intellectual Property Law and Policy in the Knowledge-Based Economy
    ,
    http://www.ftc.gov/opp/intellect/index.htm (2003)
  • Testimony before the Department of Justice (Antitrust Division) in Hearings on
    Competition and Intellectual Property Law and Policy in the Knowledge-Based
    Economy
    , http://www.ftc.gov/opp/intellect/index.htm (2003)
  • Co-Chair and Moderator, Patent Strategies, FindLaw Corporate Counsel Center
    (2003)
  • Counseling Start-Up Companies: Special Challenges, Law.com, CLE Center (2004)
  • Ten Years from State Street to Bilski –And No End in Sight, Intelligencer (2010)
  • Anomalies in IP and Other Commercial Agreements, Intellectual Property Licensing
    Strategies, (Aspatore Books 2010 ed.)

Practical Experience
Transactional
I have drafted and counseled with respect to hundreds of transactional deals
involving licensing, franchising, trademarks, patents and other complex IP and
related subject matters, for various major companies and institutions, including, inter
alia, Genentech, Pfizer, Morgan Stanley, First Boston, Matsushita, JVC, SMIC,
Varian Semiconductors, Watson, Schering, CitiGroup, GE, Novartis, Merrill Lynch,
Reuters, New York University, and Nortel.

I have supervised patent prosecution by the IP groups I established, with a focus on
insuring that patent applications will be comprehensible not only to the PTO and
lawyers with technical backgrounds, but also to client executives and ultimately, if it
should come to litigation, to judges and juries. I have worked on numerous matters
requiring an understanding of complex issues in electrical engineering, biotech, and
mechanical engineering.

Representative Litigations and Trials

  • Lead counsel for defendants in trade dress suit by Knoll, Inc. v. Moderno, Inc. et al.,
    11 cv. 0488 (S.D.N. Y.) (2011-2012)
  • Lead counsel in Lanham Act suit by star fashion model Hanaa Ben Abdesslem,
    Hanaa Ben Abdesslem et al. v. Look Models International, Inc., et al., C.A. 1:11-
    00198 (D. Del) (SLR) (obtained rare civil order of arrest and confinement against
    defendant Schwarz)
  • Won six-figure award in arbitration case against real estate developers. Gans et al. v.
    Raphael et al
    ., AAA 13 181 00624 09 (June 2011)
  • Lead counsel in $500M commercial arbitration (details and identity of parties are
    confidential) (2008-2010)
  • Lead counsel for Chromalloy Gas Turbine Corp., in major antitrust litigation against
    the Pratt & Whitney division of United Technologies. After a three-month trial in
    1996, the jury returned a unanimous verdict that Pratt had "willfully or flagrantly"
    attempted to monopolize the market for engine replacement parts, notwithstanding
    Pratt’s alleged patent protection. Chromalloy Gas Turbine Corp. v. United Tech.
    Corp
    ., No. 95-Cl-12541 (D. Bexar County, TX 1995) (see Wall Street Journal, Aug.
    26, 1996; id. November 26, 1996)
  • Lead Counsel representing Varian Semiconductor Equipment Associates, Inc. in a
    patent infringement action brought against Nissin Ion Equipment Co., Ltd., W.D. TX,
    04-CA-375 (ion implantation patents)
  • Lead Counsel representing Advanced Micro Devices, Inc. in a patent infringement
    suit brought by VCode Holdings, Inc. and VData LLC, D. MN, 04-4584 (example of
    litigation involving “business method” patents)
  • Co-Lead Counsel for American Axle & Manufacturing, Inc. in a patent infringement
    case brought by Dana Corp., E.D. Mich. 98-74521 (traditional patent infringementtype
    case involving axles for trucks)
  • Lead counsel for Jiangsu Sopo Corp., in a litigation commenced by BP chemicals.
    BP Chems., Ltd. v. Jiangsu Sopo Corp., Ltd., 144 F. Supp.2d 1140 (E.D. MO 2002)
    (dismissing complaint on jurisdictional grounds), rev'd, 285 F.3d 677 (8th Cir.), cert.
    denied, 537 U.S. 942 (2002) (major trade secret case alleging theft by Chinese
    company of semiconductor trade secrets from Taiwanese company)
  • Lead counsel for Pfizer Inc., in patent litigation commenced by Chiron Corp., relating
    to genetic characteristics of HCV genome and potential inhibitors of viral protease
    (C-98-2974 (N.D. CA))
  • Lead counsel for Bell Canada, in 1999/2000, in business method patent litigation
    against Centillion. Centillion Data Sys. v. Ameritech Corp., 193 F.R.D. (S.D. Ind.
    1999)
  • Lead counsel for Boostworks, in IP and contract litigation against Circadence Corp.
    Circadence Corp. v. Boostworks, Inc. 01 CV 1279 (D. Boulder CO 2001)
  • Lead counsel for Oneida, in 1999-2000 trade dress litigation against Libbey Glass:
    defeated motion for preliminary injunction; obtained partial summary judgment,
    following which case was settled. Libbey Glass, Inc. v. Oneida Ltd., 61 F. Supp.2d
    700, 720 (N.D. Ohio 1999) (Libby claimed “trade dress” in shape of its glassware)
  • Lead counsel for Oneida, in related antitrust action against Libbey in the Northern
    District of New York (Libby motion to transfer case to Ohio denied)
  • Lead counsel for University Angels, Inc., in 2000, in trade secrets suit against
    Findyourangel.com; obtained preliminary relief barring competition for extended
    period (case involved application of U.S. trade secret laws to international “.com”
    enterprise)
  • Lead counsel for A.E. Staley Mfg. Co. in its litigation with Cultor Corporation:
    defeated motion for preliminary injunction and obtained summary judgment of
    dismissal. Cultor Corp. v. A.E. Staley Mfg. Co., 1998 WL 744029 (S.D.N.Y., Oct.
    26, 1998), aff'd, 224 F.3d 1328 (Fed. Cir. 2000) (Cultor claimed Staley infringed
    patents relating to artificial sweeteners)
  • Lead counsel for General Electric Capital Corp., in 1998 business methods patent
    litigation with Meridian
  • Lead counsel for General Electric Capital Corp. (1998-1999), in connection with
    contract dispute with DirecTV and Hughes Electronics ($181M jury verdict rendered
    in 2000)
  • Lead counsel for Chromalloy (1995-97), in patent litigation brought by United
    Technologies. United Tech. Corp. v. Chromalloy Gas Turbine Corp., Civ. 95-444
    (D. Del. 1995)
  • Lead counsel in major pro bono case. In Re Alba Somoza, Impartial Hearing, No. 95-
    0172 (N.Y.C. Bd. of Ed. 1994). The settlement of this case against the New York
    City Board of Education established a landmark application and interpretation of the
    Individual Disability Education Act (“IDEA”). It secured special services allowing
    for the mainstreaming of tens of thousands of disabled students. A major motion
    picture is being made about Alba Somoza’s journey, including this lawsuit.
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  • Lead counsel for BMW, in major product liability suits (all dismissed on motion)
    (e.g., class action regarding alleged defects in cylinder heads, metallic paint)
  • Lead counsel for General Electric, in major trade secret case, involving turbine
    generator spare parts (1986-88) (broad injunction and payment of $5.2M in damages)
    (cf. Wall Street Journal, Aug. 16, 1988, at 1)
  • Lead counsel for General Electric, in trade secret and antitrust case of major
    international significance, involving industrial diamonds (1989-94). See General
    Electric Company v. Sung, 843 F. Supp. 776 (D. Mass. 1994) (following jury verdict
    after three-week trial, court issued unprecedented injunction requiring defendant to
    exit market and destroy diamond presses) (see Wall Street Journal, Feb. 28, 1990, at
    1; id. Aug. 2, 1993 at 4, id., Jan 7, 1994, at 3)
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  • Lead counsel for Reuters, in major arbitration against Cantor Fitzgerald (1995-1996)
    (Cantor allegedly violated contract regarding government securities data)
  • Lead counsel for NCR, in arbitration of contract dispute with Medical Economics
    (1985) (attempt to use copyright to secure patent-type protection for software)
  • Lead counsel for Reuters, in various contract-based litigations relating to its financial
    data systems
  • Lead counsel for BMW, in successful landmark challenge to California New Motor
    Vehicle Board. BMW of North America, Inc. v. California New Motor Vehicle Bd.,
    162 Cal. App. 3d 980, 209 Cal. Rptr. 50 (Cal. Ct. App.), petitions for rehearing
    denied
    , 1984 Cal. App. LEXIS 2843 (Cal. Ct. App. 1984)
  • Lead counsel for BMW, in case brought by dealer-franchisee. Cullen v. BMW of
    North America, Inc.
    , 691 F.2d 1097 (2d Cir. 1982) (dismissing suit)
  • Lead counsel for Genentech (1987-93), in its patent, trade secret and antitrust
    litigations with Eli Lilly and the University of California regarding recombinant
    DNA technology. Genentech Inc. v. Eli Lilly & Co., 998 F.2d 931 (Fed. Cir.),
    petition for rehearing denied, 1993 U.S. App. LEXIS 23532 (Fed. Cir.), petition for
    rehearing denied and in banc suggestion declined
    , 1993 U.S. App. LEXIS 24768
    (Fed. cir. 1993); litigation resulted in $145 million settlement in Genentech's favor
  • Co-counsel for Genentech, in FDA litigation regarding Orphan Drug Act.
    Genentech, Inc. v. Bowen, 676 F. Supp. 301 (D. D.C. 1987)
  • Various Section 337 proceedings, including representations of Hyundai Electronics
    Industries Co., and of Matsushita Electrical Industrial Co. in In the Matter of Certain
    Dynamic Access Memories, Components Thereof, and Products Containing Same
    ,
    ITC Inv. 337-TA-242 (1986)