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Neal Slifkin
D: (585) 419-8636  
nslifkin@harrisbeach.com
Linkedin

Neal L. Slifkin

  Member

Legal Teams Leader -  
Internet Commerce
Industry Team Leader -  
Photonics
(585) 419-8636
  nslifkin@harrisbeach.com
Linkedin
“Understanding complex technology and explaining it in terms easily understood by the intended audience, including judges and juries, is critical to achieve the best results for clients.”
  • Daily Record Recognizes Partners Neal Slifkin and Jim Muldoon
  • Unitary Patent System Launching in Europe – Patent Holders May Need to Take Action
Profile
Representative Matters
Professional and Civic
Areas of Experience
Admissions
Education
Location
Publications and Events

Neal litigates all types of intellectual property actions including patent, trademark, copyright, and trade dress infringement actions. He has served as counsel in numerous intellectual property actions pending in the United States District Courts for the Western, Northern, Southern and Eastern Districts of New York. He has litigated over eighty patent infringement actions in district courts.

In addition to representing clients in litigation, Neal advises clients in the optics, telecommunications, sporting goods, wastewater treatment and financial services industries and represents technology companies in negotiating and documenting intellectual property transactions, including product development projects and intellectual property purchases, sales and licensing.

Neal also prepares and prosecutes patent applications in a wide variety of technologies including medical devices, complex mechanical systems, optical technologies, sporting goods, electrical components, lighting components, and others.  He has also prosecuted patent appeals before the Patent Board of Appeals and Interferences.

Neal maintains an active trademark practice, prosecuting trademark applications and handling inter partes proceedings before the Trademark Trial and Appeal Board.  He maintains the international trademark portfolios of numerous clients engaged in global commerce.

Representative Matters

  • Greatbatch Ltd. v. AVX Corp. et al. (U.S. District Court, D. Del. 2019): Represented patent owner in patent infringement action over key components for pacemakers and implantable defibrillators. Jury verdicts found infringement of three U.S. Patents, and awarded lost profits and price erosion. Judgment on the jury verdict exceeded $27 million in damages.
  • Izzo Golf, Inc. v. King Par Golf, Inc. (U.S. District Court, W.D.N.Y., 2010): Plaintiff’s counsel in a patent infringement action resulting in a jury verdict and finding of willful infringement ultimately totaling approximately $12 million.
  • Jaccard Corp. v. Keystone Mfg. (U.S. District Court, W.D.N.Y., 2008): Counsel for plaintiff in jury trial resulting in successful prosecution of trade dress infringement claim.
  • John King Chains Limited v. John King USA, Inc. (U.S. District Court, C.D. Ill., 2017): Represented a United Kingdom company in a trademark dispute, in the Central District of Illinois, with the company’s former U.S. affiliate, resulting in the affiliate agreeing to cease using the disputed trademarks.
  • Eastman Kodak v. Sun Microsystems (U.S. District Court, W.D.N.Y., 2002): Co-counsel for Kodak in patent infringement claim involving Java Run Time and Java Virtual Machine.
  • Eastman Kodak v. Sony Corp. (U.S. District Court, W.D.N.Y., 2004): Co-counsel for Kodak in patent infringement claim involving digital imaging.
  • Amesbury Products v. Caldwell Manufacturing (U.S. District Court, D. Mass., 2008): Defense counsel in a patent infringement suit involving patents for window balances.
  • Frink America v. Champion Road Machinery Ltd. (U.S. District Court, N.D.N.Y., 1996): Plaintiff’s jury verdict for $5.3 million in an action for misappropriation of intellectual property.
  • Redcom Laboratories v. Cisco Systems (U.S. District Court, W.D.N.Y., 2000): Plaintiff’s counsel in multimillion dollar settlement of patent infringement claim involving telephone switching equipment.
  • Laser Diode Array, Inc. v. Paradigm Lasers (U.S. District Court, N.D.N.Y., 1996): Representation of Paradigm through a successful Markman hearing resulting in voluntary dismissal of action.
  • Bevin Barber v. Terry Precision (U.S. District Court, W.D.N.Y., 2001): Counsel for Terry Precision in trademark infringement action.
  • Ltg. Ltd. v. MaxLite-S.K. America (Trademark Trial and Appeal Board): Representation of MaxLite in trademark opposition action.
  • Faster Form v. Portney (U.S. District Court, S.D.N.Y., 2003): Representation of Faster Form in trade dress infringement action.
  • Broadcast Music Inc. v. Millennium Billiards (U.S. District Court, W.D.N.Y., 2002): Representation of Broadcast Music Inc. (BMI) in copyright infringement action.

Professional and Civic

  • International Trademark Association, Leadership Committee
  • Rochester Regional Photonics Cluster, board member
  • Young Entrepreneurs Academy, mentor

Recognition

  • Best Lawyers, Lawyer of the Year, Litigation – Intellectual Property, 2021
  • Best Lawyers, Lawyer of the Year, Litigation – Patent, 2020
  • Best Lawyers, Copyright Law; Litigation – Intellectual Property; Litigation – Patent, since 2013
  • Super Lawyers, Intellectual Property and Intellectual Property Litigation, since 2011

Legal Practices

Intellectual Property
Internet Commerce

Industry Teams

Blockchain and Digital Assets
Food and Beverage
Industrial and Consumer Manufacturing
Photonics
Science and Technology
Telecommunications and Media

Admissions

District of Columbia

New York

Pennsylvania

U.S. Court of Appeals, Federal Circuit

U.S. Court of Appeals, Second Circuit

U.S. District Court, Illinois – Central District

U.S. District Court, Michigan - Eastern District

U.S. District Court, Michigan - Western District

U.S. District Court, New York - Eastern District

U.S. District Court, New York - Northern District

U.S. District Court, New York - Southern District

U.S. District Court, New York - Western District

U.S. Patent and Trademark Office

Albany Law School

JD 
1989

Pennsylvania State University

BS 
1986

Location

Rochester, NY Office
Insights
March 21, 2023

Unitary Patent System Launching in Europe – Patent Holders May Need to Take Action

European patent owners may want to take action to opt certain patents out of the new Unitary Patent System.
August 28, 2020

The Strongest Link: Decisive Legal Action Protects Clients from Trademark and Copyright Infringement

Counterfeits and subpar knockoffs can tarnish the image and reputation of even the most established brands – and that’s especially true when
February 5, 2020

Patent Infringement: Successful Litigation Stays the Course

What happens when your competitors infringe your patent for golf equipment – then declare bankruptcy to avoid paying up? In this episode, Ha
July 22, 2019

Department of Defense Unifies Compliance Standards, May Reimburse Contractors for Costs

The Department of Defense (DoD) will establish uniform cybersecurity compliance standards for its defense contractors; and may permit contra
News
September 22, 2022

Daily Record Recognizes Partners Neal Slifkin and Jim Muldoon

For the second consecutive year, The Daily Record of Western New York has named Partners Neal Slifkin and Jim Muldoon to its Power 20 Intell
March 21, 2022

Partners Jim Muldoon and Neal Slifkin Named Power 20 Lawyers in Intellectual Property

As we go deeper into what’s been referred to as the “information age,” the task of the intellectual property attorney has gotten more compli
October 15, 2021

72 Attorneys from Harris Beach Recognized in 2021 Edition of Super Lawyers

Partners, senior counsel and associates from Harris Beach PLLC offices across New York have been named to the 2021 edition of Super Lawyers,
August 28, 2020

The Strongest Link: Decisive Legal Action Protects Clients from Trademark and Copyright Infringement

Counterfeits and subpar knockoffs can tarnish the image and reputation of even the most established brands – and that’s especially true when
August 20, 2020

81 Harris Beach Lawyers Recognized in 2021 Best Lawyers List; 10 Named Lawyers of the Year

Attorneys from Harris Beach PLLC are named as Best Lawyers, Lawyers of the Year and “Ones to Watch” in the 2021 edition of The Best Lawyers
August 7, 2020

Federal Appeals Court Upholds $27 Million Judgment after Jury Verdicts on Patents for Greatbatch, Medical Components Manufacturer

A $27 million judgment after three jury verdicts in favor of Greatbatch Ltd., a Buffalo-based medical device manufacturer and subsidiary of
February 5, 2020

Contempt Ruling in Golf Bag Patent Suit

Our longstanding and committed representation of Izzo Golf Inc. in a patent infringement case has taken another turn. Late last week, U.S. D
November 12, 2019

79 Attorneys from Harris Beach Named to 2019 Super Lawyers List

A total of 79 Harris Beach PLLC attorneys have been named to the 2019 edition of Super Lawyers, a peer-based rating service that recognizes
September 27, 2019

Harris Beach Client Awarded $12 Million in Cases Arising from Patent Infringement

Harris Beach PLLC won a $12 million final judgment for its client, Izzo Golf Inc., in a long-running patent infringement dispute that led to
August 15, 2018

63 Harris Beach Attorneys Named to Best Lawyers® List

A total of 63 attorneys from Harris Beach PLLC have made the 2019 edition of The Best Lawyers in America, the oldest guide of its kind in th
Events
November 30, 2020

Laura Smalley and Neal Slifkin Complimentary Patent Law CLE Webinar Recording

Damages are a critical part of a patent infringement case. This webinar addresses the current state of the law on patent damages, including
November 6, 2019

Harris Beach Intellectual Property Practice Group Hosting Rochester Regional Photonics Cluster CEO Dinner

“What is Your Company Worth?” will be the topic of discussion at this event. Harris Beach’s Josh Penner will be the moderator of a panel inc
August 21, 2019

Neal Slifkin and Alan Winchester to Speak at Photonics Business Meeting

Neal and Alan will speak at the New York Photonics Business Meeting on September 9th on the new Department of Defense (DOD) cybersecurity st
External Publications
All Insights, All Publications, Legal Alert |
 March 21, 2023
Unitary Patent System Launching in Europe – Patent Holders May Need to Take Action
European patent owners may want to take action to opt certain patents out of the new Unitary Patent System. ...read more
All Insights, Authored Article |
 August 28, 2020
The Strongest Link: Decisive Legal Action Protects Clients from Trademark and Copyright Infringement
Counterfeits and subpar knockoffs can tarnish the image and reputation of even the most established brands – and that’s especially true when...read more
All Insights, Audio |
 February 5, 2020
Patent Infringement: Successful Litigation Stays the Course
What happens when your competitors infringe your patent for golf equipment – then declare bankruptcy to avoid paying up? In this episode, Ha...read more
All Insights, All Publications, Legal Alert |
 July 22, 2019
Department of Defense Unifies Compliance Standards, May Reimburse Contractors for Costs
The Department of Defense (DoD) will establish uniform cybersecurity compliance standards for its defense contractors; and may permit contra...read more
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Harris Beach PLLC Discover True Engagement image

Neal L. Slifkin

nslifkin@harrisbeach.com
D: (585) 419-8636
Rochester, NY Office
Neal Slifkin
https://www.harrisbeach.com/people/slifkin-neal-l/

■ Areas of Expertise

Legal Practices

Intellectual Property Legal Practice
Internet Commerce Legal Practice

Industry Teams

Blockchain and Digital Assets Industry Team
Food and Beverage Industry Team
Industrial and Consumer Manufacturing Industry Team
Photonics Industry Team
Science and Technology Industry Team
Telecommunications and Media Industry Team

■ Profile

Neal litigates all types of intellectual property actions including patent, trademark, copyright, and trade dress infringement actions. He has served as counsel in numerous intellectual property actions pending in the United States District Courts for the Western, Northern, Southern and Eastern Districts of New York. He has litigated over eighty patent infringement actions in district courts.

In addition to representing clients in litigation, Neal advises clients in the optics, telecommunications, sporting goods, wastewater treatment and financial services industries and represents technology companies in negotiating and documenting intellectual property transactions, including product development projects and intellectual property purchases, sales and licensing.

Neal also prepares and prosecutes patent applications in a wide variety of technologies including medical devices, complex mechanical systems, optical technologies, sporting goods, electrical components, lighting components, and others.  He has also prosecuted patent appeals before the Patent Board of Appeals and Interferences.

Neal maintains an active trademark practice, prosecuting trademark applications and handling inter partes proceedings before the Trademark Trial and Appeal Board.  He maintains the international trademark portfolios of numerous clients engaged in global commerce.

■ Representative Matters

  • Greatbatch Ltd. v. AVX Corp. et al. (U.S. District Court, D. Del. 2019): Represented patent owner in patent infringement action over key components for pacemakers and implantable defibrillators. Jury verdicts found infringement of three U.S. Patents, and awarded lost profits and price erosion. Judgment on the jury verdict exceeded $27 million in damages.
  • Izzo Golf, Inc. v. King Par Golf, Inc. (U.S. District Court, W.D.N.Y., 2010): Plaintiff’s counsel in a patent infringement action resulting in a jury verdict and finding of willful infringement ultimately totaling approximately $12 million.
  • Jaccard Corp. v. Keystone Mfg. (U.S. District Court, W.D.N.Y., 2008): Counsel for plaintiff in jury trial resulting in successful prosecution of trade dress infringement claim.
  • John King Chains Limited v. John King USA, Inc. (U.S. District Court, C.D. Ill., 2017): Represented a United Kingdom company in a trademark dispute, in the Central District of Illinois, with the company’s former U.S. affiliate, resulting in the affiliate agreeing to cease using the disputed trademarks.
  • Eastman Kodak v. Sun Microsystems (U.S. District Court, W.D.N.Y., 2002): Co-counsel for Kodak in patent infringement claim involving Java Run Time and Java Virtual Machine.
  • Eastman Kodak v. Sony Corp. (U.S. District Court, W.D.N.Y., 2004): Co-counsel for Kodak in patent infringement claim involving digital imaging.
  • Amesbury Products v. Caldwell Manufacturing (U.S. District Court, D. Mass., 2008): Defense counsel in a patent infringement suit involving patents for window balances.
  • Frink America v. Champion Road Machinery Ltd. (U.S. District Court, N.D.N.Y., 1996): Plaintiff’s jury verdict for $5.3 million in an action for misappropriation of intellectual property.
  • Redcom Laboratories v. Cisco Systems (U.S. District Court, W.D.N.Y., 2000): Plaintiff’s counsel in multimillion dollar settlement of patent infringement claim involving telephone switching equipment.
  • Laser Diode Array, Inc. v. Paradigm Lasers (U.S. District Court, N.D.N.Y., 1996): Representation of Paradigm through a successful Markman hearing resulting in voluntary dismissal of action.
  • Bevin Barber v. Terry Precision (U.S. District Court, W.D.N.Y., 2001): Counsel for Terry Precision in trademark infringement action.
  • Ltg. Ltd. v. MaxLite-S.K. America (Trademark Trial and Appeal Board): Representation of MaxLite in trademark opposition action.
  • Faster Form v. Portney (U.S. District Court, S.D.N.Y., 2003): Representation of Faster Form in trade dress infringement action.
  • Broadcast Music Inc. v. Millennium Billiards (U.S. District Court, W.D.N.Y., 2002): Representation of Broadcast Music Inc. (BMI) in copyright infringement action.

■ Professional and Civic

  • International Trademark Association, Leadership Committee
  • Rochester Regional Photonics Cluster, board member
  • Young Entrepreneurs Academy, mentor

■ Admissions

  • Best Lawyers, Lawyer of the Year, Litigation – Intellectual Property, 2021
  • Best Lawyers, Lawyer of the Year, Litigation – Patent, 2020
  • Best Lawyers, Copyright Law; Litigation – Intellectual Property; Litigation – Patent, since 2013
  • Super Lawyers, Intellectual Property and Intellectual Property Litigation, since 2011

■ Education

Albany Law School
 ,JD
 ,1989
Pennsylvania State University
 ,BS
 ,1986

Harris Beach and its subsidiaries provide a full range of legal and professional services for clients across New York state, as well as nationally and internationally. Harris Beach is among the country’s top law firms as ranked by The National Law Journal and is among the BTI Elite law firms based on in-depth interviews of more than 600 corporate counsel at the world’s largest and most influential companies. Our clients include Fortune 100 corporations, privately-held companies, emerging businesses, public sector entities, not-for-profit organizations and individuals. Principal industries we represent include education, energy, financial, food and beverage, health care, insurance, manufacturing, medical and life sciences, real estate developers, and state and local governments and authorities.

Industry Teams
Automotive and Vehicle Dealerships
Blockchain and Digital Assets 
Cannabis
Construction and Surety
Educational Institutions Higher Ed
Educational Institutions K-12
EMS and Fire Protection Providers
Energy
Financial Institutions and Capital Markets
Food and Beverage
Health Care
Industrial and Consumer Manufacturing
Medical and Life Sciences
Municipalities and Local Agencies
Nanotechnology
Photonics
Racing and Gaming
Real Estate Developers
Science and Technology
Telecommunications and Media
Unmanned Aircraft Systems
USA Collegiate Sports
Veterinary Medicine

Practices
Alternative Dispute Resolution
Appellate
Business and Commercial Litigation
Collection Law
Commercial Real Estate
Corporate
Cybersecurity Protection and Response
Diversity Compliance
E-Discovery (e-infoSM)
Employee Benefits
Employment Litigation
Environmental Law
Environmental, Social and Governance (ESG)
Financial Restructuring, Bankruptcy and Creditors’ Rights
Government Compliance and Investigations
Health Law
Immigration Law
Insurance Coverage
Intellectual Property Law
International Trade Law
Internet Law
Labor and Employment Law
Mass Torts and Industry-Wide Litigation
New Markets Tax Credit
Patent, Trademark and Copyright Law
Product Liability and Comprehensive General Liability
Public Finance and Economic Development
Real Property Valuation Litigation
Residential Real Estate
Tax Law
White Collar Crime
Wills, Trusts and Estates

Consulting Services
HB Solutions LLC
Collegiate Sports Compliance
Data Privacy and Cybersecurity
Economic Development and Public Affairs
Educational Institution Assistance
EMRG® (E-Discovery Management Resources Group)
Energy
Health and Human Services
Human Resources
Information Technology
Marketing and Communication Services
Municipal and Local Agency Assistance

HB Cornerstone LLC
Owner Representation
Design Services
Facilities Consulting
Move Management

Caetra.io
CyMetric (Cybersecurity Regulation Compliance Software)

Offices throughout New York:

Albany
677 Broadway
Albany, NY 12207
518-427-9700

Buffalo
726 Exchange Street
Buffalo, NY 14210
716-200-5050

Ithaca
119 East Seneca Street
Ithaca, NY 14850
607-273-6444

Long Island
333 Earle Ovington Boulevard
Uniondale, NY 11553
516-880-8484

New York City
100 Wall Street
New York, NY 10005
212-687-0100

Rochester
99 Garnsey Road
Pittsford, NY 14534
585-419-8800

Saratoga Springs
513 Broadway
Saratoga Springs, NY 12866
518-587-0551

Syracuse
333 West Washington Street
Syracuse, NY 13202
315-423-7100

White Plains
445 Hamilton Avenue
White Plains, NY 10601
914-683-1200

Offices also in:

New Haven, CT
195 Church Street
New Haven, CT 06510
203-784-3159

Newark, NJ
One Gateway Center
Newark, NJ 07102
973-848-1244

Washington, DC
800-685-1429

Attorney Advertising. Prior results do not guarantee a similar outcome.
© 2022 Harris Beach PLLC

Content current as of March 22, 2023 5:28 am
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