Alfred R. Fabricant, Partner

Alfred Fabricant brings more than 30 years of litigation experience to Winston & Strawn, where he heads the intellectual property group in New York. Mr. Fabricant is an experienced trial lawyer and focuses his practice on patent, copyright, trademark, unfair competition, entertainment, antitrust, and other commercial litigation matters.

Mr. Fabricant has represented clients in matters before the International Trade Commission and before the Board of Patent Appeals and Interferences in the U.S. Patent and Trademark Office. He has first chair experience litigating patents covering digital audio and video watermarking, electronic ratings systems, copy protection technology, NFC and radio frequency identification systems, robotics and pneumatic systems, automated storage and retrieval systems, memory and storage devices, software, internet-related method and system patents, digital signal processing encoders and decoders, universal remote control devices, optical systems for cinematography lenses, methods and systems for the manufacture of flooring materials, and automotive parts.

He has also argued numerous appeals before the U.S. Courts of Appeal for the Federal, Fourth, and Second Circuits where he has represented appellants and appellees in a variety of matters, including patent, copyright, breach of contract, antitrust, entertainment, and First Amendment issues.

Mr. Fabricant has successfully represented clients in numerous jury and non-jury cases in both federal and state courts throughout the United States. His representative matters include:

• Successfully defending his clients at trial by jury against claims of patent infringement asserted by McKesson, the world’s largest healthcare provider (D. Del. Judge Sue Robinson)
• Obtaining judgment of non-infringement in a patent case tried to verdict concerning universal remote control devices against one of the world’s largest electronics manufacturers (D. Del. Judge Kent Jordan)
• Obtaining judgment of patent unenforceability in a patent case tried to verdict concerning RFID systems for animal tagging and identification (E.D. Tex. Judge T.J. Ward)
• Obtaining a multimillion-dollar jury verdict awarding complete relief to his client, an independent theatrical motion picture production company, against one of the world’s largest entertainment and publishing houses (S.D.N.Y Judge Alvin Hellerstein)
• Obtained jury verdict of non-infringement in copyright case involving commercial photographs (S.D.N.Y. Judge William H. Pauley)
• Securing a consent injunction in a patent case involving audio encoding and decoding technology by which the defendant agreed to permanently cease practicing the asserted patents and conceded patent validity and enforceability (E.D. Tex. Judge T.J. Ward)
• Successfully defended several large defendants in the Katz patent litigation involving interactive call processing and digital teleconferencing patents (E.D. Tex. Judge DavidFolsom; MDL C.D. Calif. Judge Gary Klausner)
• Secured consent injunctions against four competitors in a patent case concerning child safety restraints by which the defendants each agreed to permanently cease practicing the asserted patents and conceded patent validity and enforceability (E.D. Tex. Judge T.J. Ward)
• Secured favorable settlements for global digital camera and lens manufacturer in patent cases involving flash memory cards and internet marketing websites (E.D. Tex. Judge Leonard Davis)
• Obtaining judgment of patent invalidity in favor of a global leader in audience measurement involving a new type of electronic ratings meter (S.D.N.Y Judge Constance Baker Motley)
• Obtaining summary judgment defeating all claims of inventorship asserted against 17 patents covering audio encoding and audience measurement technology (S.D.N.Y. Judge Paul A. Crotty)
• Securing a favorable license agreement and settlement for plaintiff prior to trial on behalf of a large automotive parts manufacturer in a patent suit against a major competitor (S.D.N.Y Judge Kimba M. Wood)
• Defending a manufacturer and distributor of a new type of in-line skate product against claims of patent infringement and unfair competition, resulting in a finding of non-infringement (S.D.N.Y Judge Jed S Rakoff)
• Securing judgment in an interference matter before the Board of Patent Appeals and Interferences rendering the junior party’s patent unenforceable
• Defeating a preliminary injunction sought by one of the country’s largest wireless phone companies in a trademark and unfair competition case (S.D.N.Y. Judge Sydney Stein)
• Successfully representing a well-known art collector in an action against Christie’s, the art auction house, concerning the sale of one of the rare Fabergé Imperial Easter Eggs—the Nicholas II Equestrian Egg (Supreme Court NY County)

In addition to his intellectual property litigation experience, Mr. Fabricant has negotiated settlements of complex lawsuits and drafted license agreements, joint venture agreements, partnership agreements, non-disclosure agreements, restrictive covenants, and other business contracts. Mr. Fabricant has extensive experience with complex corporate disputes involving antitrust, breach of contract, fraud, securities, and entertainment litigation. He has also tried many arbitration matters and represented clients in mediations, as well as in other alternative dispute resolution proceedings.

Honors and Awards

Activities

Education

Speeches and Publications

Mr. Fabricant has been a member of the faculty of the Practicing Law Institute (“PLI”) since 2007 and regularly lectures on a variety of patent law subjects.

Speaker, “Patent Litigation With Non-Practicing Entities,” ACC-GNY CLE Program, New York, September 22, 2011.

Speaker, IQPC 6th Patent Strategies, New York, October 2008.

Speaker, “Protecting Yourself Against Patent Trolls,” IP Litigation Summit: Proactive Strategies to Simultaneously Enforce and Defend Intellectual Property Rights and Contain Litigation Costs, New York, May 2006.

Lecturer, “How to Successfully Litigate Your Patent Case in the U.S.,” IP Law European Summit, Montreux, Switzerland, April 2006.

Lecturer, “A ‘How To’ Guide for Creating a Cost-Effective Discovery Strategy,” New York State Bar Association’s Intellectual Property Law Section, 1999 Fall Meeting.