Brian D. Siff

Partner

  • Brian D. Siff
  • Phone: +1 212 692 1055
    Fax: +1 212 208 2430

    Import to Address Book

  • Duane Morris LLP
    1540 Broadway
    New York, NY 10036-4086
    USA

Brian D. Siff is a litigator and legal counselor who guides clients through matters involving patent, trademark, trade dress, trade secret, copyright and unfair competition law . He is regarded as a well-established and trusted adviser with a comprehensive understanding of the legal, technical and commercial elements of his clients' enterprises. He has extensive experience representing companies for matters in the consumer goods (toy, sports/health/fitness, housewares, apparel), cannabis, Internet/e-commerce, artificial intelligence (AI), telecommunications, auction, medical devices, automotive, finance and banking industries.

I.     A Broad Spectrum of Experience

Mr. Siff is called upon as a recognized authority in intellectual property litigation matters. He represents companies in head-to-head competitor patent litigation as well as joint defense group (JDG) patent actions against non-practicing entities (NPEs), also known as "patent trolls." He is also fluent in patent review processes under the America Invents Act, including inter partes review, covered business method review, and post-grant review proceedings. Mr. Siff also represents numerous companies involving trademark and copyright enforcement and litigation. Mr. Siff further develops management strategies for large U.S. and European companies that wish to reduce the prospect of patent, trademark or copyright infringement issues. In addition, Mr. Siff manages portfolios of patents and trademarks, advises on all aspects of patent and trademark prosecution, and builds strategies for maximizing the value of his client’s intellectual property.  

II.    A Client-Focused Practice

Mr. Siff maintains a consistent awareness of the internal and external factors that affect the companies he represents and advises. He accomplishes this by maintaining a comprehensive understanding of his clients' business needs and implementing strategies that are tailored to achieve his clients' goals. He then manages all of the clients' matters in a way that is most effective and economical for the big picture.

III.   A Trusted Adviser

As a direct result of the trust and satisfaction of one of his longstanding clients, Mr. Siff was named to the BTI Client Service All-Star Team in 2013. He takes the role of trusted adviser very seriously and ensures his clients feel recognized and secure. His hands-on approach to litigation and counseling mirror his devotion to his clients, and his thorough legal and technical knowledge provides him with a comprehensive understanding of the issues his clients face.

Representative Matters

    Patent Litigation

  • Sisvel International S.A. v. Consolidated Communications Enterprise Services, Inc., Civil Action No. 1:19-cv-00331-LPS-CJB (D. Del. 2019). Defended Consolidated Communications in an infringement action involving standards-essential patents related to digital subscriber line (DSL) technology for providing broadband access to data networks, such as the Internet.
  • Zen Design Group Ltd. V. Scholastic Inc., Case No. 2:16-cv-12936-RHC-EAS (E.D. Mich. 2016). Defended Scholastic in a patent infringement action involving ultra-violet pen-lights utilizing invisible ink that fluoresces under ultra-violet light.
  • Spirit Monkey, LLC v. Scholastic Book Fairs, Inc. and Scholastic Inc., Cause No. 5:17-cv-1066 (W.D. Tex. 2017). Defended Scholastic and Scholastic Book Fairs in a patent infringement action involving embroidered sticks used as a reward or incentive, or to promote an activity, event, brand, product and/or service, and the related mark for the goods.
  • Soverain IP, LLC v. Datapipe, Inc., Civil Action No. 2:17-cv-00292 (E.D. Tex. 2017). Defended Datapipe in a patent infringement action involving patents directed to certifying authorization in computer networks, managing transfers of information in communication networks, and systems for counting Web access requests.
  • Digital Audio Encoding Systems, LLC v. Atlantic Tele-Network, Inc., Civil Action No. 1:16-cv-00486 (D. Del. 2016). Defended Atlantic Tele-Network in a patent infringement action involving methods and apparatuses for encoding signals.
  • International License Exchange of America, LLC v. ATN International, Inc., Commnet Wireless, LLC, and Choice Communications, LLC, Civil Action No. 1:16-cv-00718 (D. Del. 2016). Defended ATN International et al. in a patent infringement action involving formatting of data frames for virtual local area networks (VLANs).
  • Preservation Wellness Technologies, LLC v. Allscripts Healthcare Solutions, Inc., Civil Action No. 2:15-cv-01559 (E.D. Tex. 2015), and Preservation Wellness Technologies, LLC v. Allscripts Healthcare Solutions, Inc., et al., Appeal No. 2016-2193 (Fed. Cir. 2016). Defended Allscripts Healthcare Solutions in a patent infringement action involving methods for organizing, displaying and sharing medical patient care information, and a related appeal to the U.S. Court of Appeals for the Federal Circuit.
  • Uniloc USA, Inc. and Uniloc Luxembourg S.A. v. Allscripts Healthcare Solutions, Inc., Civil Action No. 6:14-cv-00631 (E.D. Tex. 2014). Defended Allscripts Healthcare Solutions in a patent infringement action involving methods for organizing, recording and displaying medical patient care information.
  • Innovative Automation LLC v. Scholastic Storia Inc. and Scholastic Book Stores Inc., Civil Action No. 2:14-cv-00775 (E.D. Tex. 2014). Defended Scholastic in a patent infringement action involving a method for duplicating and transferring electronic files for e-books.
  • eDekka LLC v. Scholastic Inc., Case No. 2:14-cv-481 (E.D. Tex. 2014). Defended Scholastic in an e-commerce patent infringement action involving online "shopping cart" technology.
  • buySAFE, Inc. v. Google Inc., Civil Action No. 3:13-cv-781-HEH (E.D. Va. 2013). Represented buySAFE in a patent infringement action involving methods for monitoring and analyzing consumer behavior data to predict consumer demand in relation to offering a third-party transactional guarantee.
  • RPost Holdings, Inc., RPost Communications Ltd. and RMail Ltd. v. Infogroup, Inc., et al., Case No. 2:12-cv-00517-JRG (E.D. Tex. 2013). Defended Scholastic Inc. in a patent infringement action involving electronic mail marketing services and technologies that allow users to track, report and analyze data regarding electronic messages.
  • Princeton Digital Image Corporation v. Scholastic Corporation, et al., Case No. 1:13-cv-00410-UNA (D. Del. 2013). Currently defending Scholastic Corporation in an e-commerce patent infringement action involving JPEG image coding to produce various-sized JPEG images of products sold through Scholastic's online e-commerce website, including enlarged views of those products.
  • ComplementSoft, LLC v. SAS Institute, Inc., Case No. 1:12-cv-07372 (N.D. Ill. 2012). Represented ComplementSoft in a patent infringement action involving a system and method for generating, modifying and maintaining software source code through a graphical user interface software development tool.
  • Brandywine Communications Technologies, LLC v. Consolidated Communications Holdings, Inc., Case No. 1:12-cv-01784 (D. Del. 2012). Defended Consolidated Communications in a patent infringement action involving data communication devices and related methods.
  • GlobeTecTrust LLC v. Consolidated Communications Holdings, Inc., Case No. 1:12-cv-01239-UNA (D. Del. 2012). Defended Consolidated Communications in a patent infringement action involving fiber optic network systems and technology.
  • Trademark, Trade Dress, Copyright and Unfair Competition Litigation

  • Shandong Shinho Food Industries Co., Ltd. v. May Flower International, Inc., GB Green Gastronome, LLC, and Xiaobo Yao, Civil Action No. 1:19-cv-1621-MKB-RER (E.D.N.Y 2019). Representing Shandong Shinho in an action involving trademark infringement of the CONG BAN LV mark for use with soybean paste and other processed food products.
  • Great Bowery d/b/a Trunk Archive v. Z57, Inc., IGD Real Estate, LLC; Erik Kobley , and DOES 1-10, Case No. 19-cv-04537-ENV-SMG (E.D.N.Y. 2019). Represented defendants in copyright infringement action involving online use of photographs.
  • Spirit Monkey, LLC v. Scholastic Book Fairs, Inc. and Scholastic Inc., Cause No. 5:17-cv-1066 (W.D. Tex. 2017). Defended Scholastic and Scholastic Book Fairs in a trademark infringement action involving embroidered sticks used as a reward or incentive, or to promote an activity, event, brand, product and/or service, and the related mark for the goods.
  • Christian Charles v. Jerry Seinfeld, Columbus 81 Productions, Inc. Embassy Row, LLC, Comedians in Cars, LLC, Sony Pictures Television Inc., and Netflix Inc., Civil Action No. 1:18-cv-01196-AJN-KHP (S.D.N.Y. 2018). Represented Christian Charles in an action for copyright infringement, including related claims of breach of implied-in-fact contract, tortious interference with prospective business relations, quantum meruit, negligent misrepresentation, fraudulent misrepresentation, and unfair competition, under the common law of New York, involving the original episode script and filming of, and overall treatment for, the web series Comedians in Cars Getting Coffee. Press coverage included articles in Forbes and The Hollywood Reporter.
  • FashionCraft-Excello, Inc. v. CheapFavorShop.com, WeddingFavors.org, CustomGift.com, BabyFavors.com, Outdoor Living, Inc., a.k.a. OutdoorLiving.com, Wish Rocket, LLC and Ronald G. Spinks Jr., Case No. 1:16-cv-00381-PKC-RER (E.D.N.Y. 2016). Represented FashionCraft-Excello in an action involving trademark infringement, copyright infringement, false designation of goods, false advertising, unjust enrichment, deceptive acts and business practices, deception and confusion of consumers, and damage to FashionCraft-Excello's reputation and goodwill in connection with the marketing and sale of wedding and event favors and gifts.
  • Beckson Manufacturing, Inc., Beckson Industrial Products, Inc. v. Tuthill Corporation d/b/a Tuthill Transfer Systems, Civil Action No. 13-654 (D. Conn. 2013). Defended Tuthill against allegations of trademark and trade dress counterfeiting, infringement and false designation of origin involving the color and configuration of pump housings and pump handles.
  • Other Litigation

  • Harinder B.S. Jalli v. Nexstar Broadcasting, Inc. d/b/a WTNH News 8, et al., Docket No. CV-18-6070048 S (Superior Court of Connecticut, 2018). Represented Nexstar Broadcasting and related entities in action for invasion of privacy based on a claim of casting the Plaintiff in a “false light.” Successfully ended action through assertion of Connecticut’s anti-SLAPP statute protecting the exercise of free speech on a matter of public concern.

Patent Risk Management and Opinions of Counsel

Mr. Siff developed and continues to manage global Internet/e-commerce patent strategies for one of the top 50 Internet/e-commerce retailers in North America, and he performs noninfringement and invalidity analysis work for a leading European electronics equipment and consumer goods company. In addition, Mr. Siff has negotiated high-stakes settlements between major automotive part manufacturers.

Admissions

  • New York
  • Connecticut
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Southern District of New York
  • U.S. Patent and Trademark Office

Education

  • Washington University School of Law, J.D., 1990
  • Cornell University, B.S., Mechanical Engineering, 1987

Experience

  • Duane Morris LLP
    - Partner, 2016-present
  • Schiff Hardin LLP
    - Partner, 2012-2016
  • Dickstein Shapiro LLP
    - Partner, 2004-2012
  • Pennie & Edmonds LLP
    - Partner/Associate, 1989-2004

Professional Activities

  • Toy Association
      - Member, Intellectual Property Committee
  • American Bar Association
  • Connecticut Bar Association
  • International Trademark Association
  • New York Intellectual Property Law Association
  • New York State Bar Association
  • U.S. Patent Bar Association
  • Washington University School of Law Intellectual Property Advisory Board

Honors and Awards

Selected Publications

  • Featured in "What Are You Leaving on the Table?" Publishers Weekly, October 2016