Mr. Gorenstein has been engaged in the practice of patent law and other aspects of intellectual property law since 1972. His practice emphasizes all facets of representing clients with regard to litigation, negotiations, and licensing. Mr. Gorenstein has litigated, tried and/or settled favorably dozens of cases brought in U.S. district courts and the International Trade Commission. He has also negotiated settlements short of litigation in numerous disputes. He has represented both patent owners and defending parties in disputed patent matters. A large part of his direct experience relates to defending against charges of infringement in a variety of situations and scenarios with emphasis on defending against charges of infringement of patents in the electrical and mechanical arts.

Mr. Gorenstein has represented parties in several appeals to the U.S. Court of Appeals for the Federal Circuit.

Mr. Gorenstein’s responsibilities with the firm of Birch, Stewart, Kolasch & Birch, LLP also include prosecution of patent applications in the electrical and mechanical arts including complex data processing and computer systems, automotive and related technologies and a wide range of other subject matter and prosecution and client counseling relating to trademark matters.

Representative Matters

  • United States District Court — District of Delaware
    Defended manufacturer against charges of patent infringement relating to vehicle controls. Obtained summary dismissal of action, Rule 11 sanctions against opposing counsel and Section 285 sanctions against plaintiff.
  • United States District Court — Southern District of Texas
    Defended automobile manufacturer against charges of patent infringement relating to automobile ignition and fueling systems. Obtained highly favorable Markman ruling and resulting summary dismissal of all charges.
  • United States District Court — Eastern District of Texas
    Represented patent owner-plaintiff in infringement suit asserting infringement of patent relating to burners and fragrance lamps. Approx 1.5 years of discovery, motions and trial preparation. Obtained settlement favorable to client two days before trial.
  • United States District Court — Eastern District of Texas
    Defended manufacturer of burners and fragrance lamps in declaratory judgment action seeking declaration of noninfringement of manufacturer’s patent. Negotiated voluntary dismissal of suit brought against client.
  • United States District Court — Southern District of California
    Defended automobile manufacturer against charges of infringement of patents relating to plastic molded tail light lenses and methods of manufacturing such lenses. Obtained summary judgment of noninfringement in favor of client.
  • United States District Court — Eastern District of Texas
    Defended automobile manufacturer against charges of infringement of patent relating to automotive alarm systems. Obtained immediate dismissal of client from suit, prior to any discovery or proceedings, by establishing that suit was filed against client without proper basis.
  • United States District Court — Eastern District of North Carolina
    Defended manufacturer of biometric identification devices in action seeking declaration that client’s patent was invalid and not infringed by plaintiff, and seeking damages under several state-law based contract and tort claims. Obtained dismissal of all federal and state law claims against client, with prejudice.
  • United States District Court — Eastern District of Michigan
    Represented automobile manufacturer in defending infringement suit relating to side impact sensors for automotive airbag systems. Obtained summary judgment of noninfringement in favor of client.
  • United States District Court — Northern District of Ohio
    Defended manufacturer of lawn care equipment in suit asserting infringement of patent on lawn mower blades. Defended vigorously through discovery and motions period and obtained favorable settlement for client.
  • United States District Court — District of Colorado
    Represented manufacturer of facsimile machines and its indemnified customers in defending patent infringement action relating to telephone dialing and call routing features of facsimile machines. Also defended related actions in the U.S. District Courts for the Southern District of New York and the Eastern District of New York. Obtained favorable settlement for clients.
  • United States District Court — District of Colorado
    Defended manufacturer of ski equipment in infringement suit relating to cross country ski bindings. Obtained favorable settlement for client.

Speaking Engagements

    Current Speaking Engagements

    Previous Speaking Engagements

  • Patent Law Institute 2020: Critical Issues & Best Practices

    PLI 2020: Live Webcast

    April 02 2020
  • New Trademark Developments and Rules in the U.S.P.T.O

    Trademark Day Sweden

    January 23 2020
  • Inter-Collegiate Licensing Association Winter Symposium

    ICLA Winter Symposium

    January 15 2020
  • Claim Drafting and Amendment Workshop Under EP and US Practices

    2019 JPAA Workshop

    November 01 2019

Articles

  • July 24, 2020

    Washington, D.C. NFL Team Loses Race to the Trademark Office: Does it Matter?

    by Michael. T Smith | IPWatchDog

    In surveys throughout the Washington, D.C. metro area, three possible replacement names have emerged as favorites among the fans: Warriors, Red Wolves, and Redtails. Armed with the knowledge of the name change and the relative popularity of the possible replacement names, two enterprising individuals have applied to obtain a federal trademark registration for the marks WARRIORS, WASHINGTON RED WOLVES, and WASHINGTON REDTAILS, respectively. Neither applicant appears to be connected to the owners of the Washington D.C. professional football team.

    Learn More
  • July 10, 2020

    Could good intentions lead to future danger?

    by MaryAnne Armstrong, Ph.D. | LSIPR

    MaryAnne Armstrong, Ph.D. discusses the potential risks to IP rights with open-access to technology, medicines and devices in the fight against COVID-19 in the latest issue of LSIPR.

    Learn More

Presentations