Aleksander J. Goranin

Partner

  • Aleksander J. Goranin
  • Phone: +1 215 979 1868
    Fax: +1 215 754 4683

    Aleksander J. Goranin - LinkedIn Import to Address Book

  • Duane Morris LLP
    30 South 17th Street
    Philadelphia, PA 19103-4196
    USA

Aleksander J. Goranin is a trial lawyer specializing in high-stakes intellectual property and technology-driven cases in the software, medical device, and life sciences industries. Mr. Goranin regularly represents one of the world’s largest enterprise software companies in patent, copyright, software licensing, and intellectual property disputes, both in the courtroom and at the negotiating table. He recently secured complete victories at the summary judgment stage in two cases seeking tens of millions in damages for alleged copyright and trademark infringement. Over the past several years, Mr. Goranin also co-led the successful defense of a start-up medical device manufacturer in hard-fought, bet-the-company patent and trade secret litigation; co-led a five-patent infringement investigation before the International Trade Commission on behalf of a global software company against a competing software platform; and negotiated the redesign of a hotel brand of a top hospitality company to resolve trade dress litigation.

In addition to trial work, Mr. Goranin also regularly advises start-up and established technology clients with data-centric business models on issues concerning proper data acquisition, data use, data ownership, software and data licensing, and potential Computer Fraud and Abuse Act implications. Mr. Goranin also created and taught the Trade Secret Law course at Villanova University School of Law.

Respected legal guide Chambers USA has recognized Mr. Goranin for the past five years, describing him as “adept in representing companies in high-value IP litigation concerning major scientific and technical devices” and noting his “expertise in noncompete and trade secrets issues.” Chambers USA client sources called Mr. Goranin "a fabulous lawyer and a really smart guy." Mr. Goranin is also consistently ranked as a top patent and intellectual property litigator in Pennsylvania by the Best Lawyers and SuperLawyers publications.

Before entering private practice, Mr. Goranin was as a law clerk to then-Chief Judge Edward R. Becker of the United States Court of Appeals for the Third Circuit. Mr. Goranin earned his law degree in 2000 from the University of Virginia School of Law, where he served on the Virginia Law Review and was elected to the Order of the Coif, and obtained his undergraduate degree, summa cum laude, from the University of Maryland. He is admitted to practice in Pennsylvania, New Jersey, and the District of Columbia.

Areas of Practice

  • Patent Litigation
  • Trade Secret Litigation
  • Copyright Litigation
  • Trademark, Trade Dress, and Unfair Competition Litigation

  • Computer Fraud & Abuse Act Litigation

  • Intellectual Property
  • Licensing

Representative Matters

  • Obtained summary judgment on behalf of internationally recognized card payment and financial services company dismissing multimillion dollar claim for software copyright infringement. See Micro Focus (US), Inc. et al. v. American Express Company,1:15-cv-07438-PGG, Docket # 119, Southern District of New York, Sept. 30, 2017.
  • Currently representing the Commonwealth of Pennsylvania, Department of Labor and Industry in breach of contract and fraud case against International Business Machines Corp. over failed enterprise software system implementation.
  • Co-led successful defense of a biomedical device start-up company in parallel bet-the-company patent and trade secret litigation in the District of New Jersey and New Jersey Superior Court.
  • Co-led successful defense of pharmaceutical consulting company in an $18 million dollar trade secret and copyright case concerning incentive compensation reports used in the pharmaceutical industry, pending in the Eastern District of Pennsylvania.
  • Successfully defended leading enterprise software company and its decision-support software in a $40 million case involving a patent to object-oriented programming and relational database technology, in the Southern District of New York. Following a favorable claim construction, the district court entered summary judgment of non-infringement, and the Federal Circuit affirmed on appeal. See Microsoft Corp. v. DataTern, Inc., 1:11-cv-02365-KBF, Docket # 70, Southern District of New York, Mar. 5, 2012; SAP AG and Microsoft Corp. v. DataTern, Inc., 755 F.3d 899 (Fed. Cir. 2014).
  • Successfully represented commercial insurance broker in a six-year copyright infringement case against a competitor, ultimately resulting in a $18.9 million jury verdict, affirmed through two appeals to the U.S. Court of Appeals for the Third Circuit. See The Graham Company v. Thomas P. Haughey and USI MidAtlantic, Inc, 568 F.3d 425 (3d Cir. 2009) and 646 F.3d 138 (3d Cir. 2011).
  • Successfully negotiated settlement and redesign of a hotel brand in a trade dress dispute over hotel lobby décor and design.
  • Defended leading enterprise software company in a five-patent case concerning machine learning and artificial intelligence technology, filed in the Eastern District of Tennessee. Case successfully settled at an early stage.
  • Co-led a five-patent investigation initiated by Microsoft against Barnes & Noble and its Nook e-reader software platform before the U.S. International Trade Commission, resulting in successful settlement after a one-week bench trial. In the Matter of Certain Handheld Electronic Computing Devices, Related Software, and Components Thereof, Inv. No. 337-TA-769 (2011-2012).
  • Defended leading enterprise software company in a four-patent case concerning software development platforms and decision-support software, filed in the Eastern District of Texas. Case successfully settled at an early stage.
  • Successfully defended world-leading computer networking company in a patent infringement case concerning server caching technology, pending in the District of Delaware. Secured early dismissal with prejudice of all claims, with no monies paid to plaintiff.
  • Successfully defended leading enterprise software company in a copyright infringement dispute involving multimillion claims over the use of sales training materials, in the Eastern District of Pennsylvania. Case settled at the end of discovery on favorable terms.
  • Successfully represented well-known online business directory on appeal of a copyright infringement verdict to the Eleventh Circuit, in which the appeals court favorably clarified the framework for calculating statutory damages under the Copyright Act. See Yellow Pages Photos, Inc. v. Ziplocal LP and Yellow Pages Group, LLC,795 F.3d 1255 (11th Cir. 2015).
  • Represented leading beverage can manufacturer on multiple successful appeals to the Federal Circuit in cases involving patents on beverage container technology. See Crown Packaging v. Rexam Beverage Can, 559 F.3d 1308 (Fed. Cir. 2009); Crown Packaging v. Ball Metal Beverage, 635 F.3d 1373 (Fed. Cir. 2011).
  • Defended medical device company and tissue bank in a patent dispute over biologic tissues containing viable stem cells and osteoprogenitor cells; the case settled on favorable terms. NuVasive, Inc. and Osiris Therapeutics, Inc. v. Orthofix International N.V., et al. and Musculoskeletal Transplant Foundation, Civ. No. 10-01995 (2010-2011), District of New Jersey.
  • Defended medical device company Synthes in a patent infringement dispute involving polyethylene-titanium surgical implants; the case settled on favorable terms. Porex Surgical, Inc. and Porex Corporation v. Synthes USA Sales, LLC and Synthes, Inc., Civ. No. 10-00023 (2010), Northern District of Georgia.
  • Represented biotechnology company Centocor in a patent infringement and licensing dispute involving recombinant monoclonal antibody technology. Centocor Ortho Biotech, Inc. v. Genentech, Inc. and City of Hope National Medical Center, Civ. No. 08-03573 (2008-2009), Central District of California.
  • Successfully defended medical device company Cordis Corporation in an arbitration involving a doctor’s claims to intellectual property rights over cardiovascular medical device technology. Dr. Juan Carlos Parodi v. Cordis Corporation, No. 50 133 T 00108 06 (2007-2009), AAA International Centre for Dispute Resolution.
  • Advised multiple start-ups on data acquisition, data usage, and Computer Fraud and Abuse Act issues.

Admissions

  • Pennsylvania
  • New Jersey
  • District of Columbia
  • Supreme Court of the United States
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Third Circuit
  • U.S. District Court for the District of Columbia
  • U.S. District Court for the District of New Jersey
  • U.S. District Court for the Eastern District of Pennsylvania
  • U.S. District Court for the Eastern District of Texas

Education

  • University of Virginia School of Law, J.D., 2000
    - Managing Board, Virginia Law Review
    - Order of the Coif
  • University of Maryland, B.A., summa cum laude, 1997

Experience

  • Duane Morris LLP
    - Partner, 2013-present
  • Woodcock Washburn LLP
    - Partner 2006-2013
  • Hangley Aronchick Segal Pudlin & Schiller
    - Associate, 2004-2006
  • Williams & Connolly
    - Associate, 2001-2004
  • U.S. Court of Appeals for the Third Circuit
    - Judicial Clerk to the Honorable Edward R. Becker, 2000-2001

Professional Activities

  • Adjunct Lecturer in Law, Villanova University School of Law - Trade Secrets Law
  • American Intellectual Property Law Association
    - Trade Secrets Subcommittee

Honors and Awards

  • Named an Influencer of Law by Philadelphia Inquirer

  • Listed in Philadelphia Business Journal Best of the Bar: Top Lawyers in Philadelphia - IP Litigation

  • Listed in Best Lawyers Greater Philadelphia

  • Listed in Chambers USA: America's Leading Lawyers for Business
  • Listed in U.S. News/Best Lawyers "The Best Lawyers in America"
  • Named a Pennsylvania Super Lawyer for Intellectual Property Litigation
  • Listed in the IAM Patent 1000 – The World's Leading Patent Practitioners for Patent Litigation

Civic and Charitable Activities

  • Palumbo Youth Soccer Club
    - Treasurer & Board Member

  • Philadelphia Volunteer Lawyers for the Arts
    - Volunteer

Selected Publications

  • Author, "Intellectual Property Claims" chapter in An Introduction to Health Law Litigation Based on Contract and Government Claims, American Bar Association 2016
  • Author, "Words Matter: IP Licensing in Changed Circumstances," IPLaw360, June 4, 2010
  • Co-author, "Phillips v. AWH: The Federal Circuit's Missed Opportunity," The Legal Intelligencer, September 14, 2005

Selected Speaking Engagements

  • “Leveraging Analytics in Litigation,” The Legal Intelligencer In-House Counsel CLE Seminar 2018, Philadelphia, June 27, 2018

  • "How Best to Use (or Defend Against) Patent Office Trials in Connection with Ongoing Litigation," Pennsylvania Bar Institute 10th Annual Intellectual Property Institute, Philadelphia, April 26, 2016
  • "Interrelationships Between Intellectual Property Doctrines," Rutgers Law School — Camden, November 2015
  • "Bio Bilski: The SDNY's ACLU v. Myriad Genetics Decision," presentation and paper to the 26th Annual Joint Patent Practice Seminar, New York City, April 29, 2010