Seth H. Ostrow

Chair, Patent Group
Partner
Practice Area: Intellectual Property

Seth Ostrow assists clients with all their patent needs, including litigation, prosecution and strategic advice.  He helps clients maximize their existing assets, identify new opportunities to build on them and manage the risks inherent in dealing with the patents of others.  Recognizing his expertise, large technology companies have retained Mr. Ostrow to help them valuate patent portfolios for purchase or license, and he has been involved in some of the largest and highest profile patent acquisitions in recent years.

Mr. Ostrow has litigated patent cases all over the country, including in the patent heavy jurisdictions of Eastern Virginia, California, Delaware, and New York.  He stands apart in his ability to explain complex legal and technical patent issues in simple and practical terms.  He is a savvy negotiator and has extensive experience with complex business arrangements including drafting and negotiating settlement agreements, patent licenses and development agreements.

Mr. Ostrow’s practice focuses on software, telecommunications, and medical devices.  His experience as a software engineer gives him extensive knowledge of algorithms, computer and network architectures, and various programming languages.  A sampling of his patent work in cutting-edge technologies includes:

  • Software including apps, databases, and operating systems
  • Internet and web functionality including algorithmic search, advertising, and Internet protocols
  • Network architectures including optical fiber, WiFi and cellular communications
  • Telephony and VOIP
  • AI including analytics, machine learning and neural networks
  • Video distribution including VOD systems, interactive television and electronic program guides
  • Anchor delivery devices, catheters, stents, and embolism filters
  • Financial and insurance products such as annuities and retirement investment techniques
Education

Boston University School of Law. J.D. (Magna Cum Laude)

Massachusetts Institute of Technology B.S. Applied Mathematics

Admissions

States of New York and Massachusetts

Southern District of New York

Eastern District of New York

Court of Appeals for the Federal Circuit

U.S. Patent and Trademark Office

Prior Experience

Ostrow Kaufman LLP (Founding Member) 2008 – 2014

Brown Raysman Millstein Felder & Steiner LLP (IP Chair) 1992 – 1995, 1997 – 2006

Representative Matters

Represented an LA based company in enforcing a portfolio of patents over a period of 8 years on mobile Wi-Fi technologies.  In conjunction with this effort, he brought patent suits against airlines, cruise ships and other transportation companies that offer mobile Wi-Fi services along with the technology vendors and satellite service providers that support the services.  The suits were brought in federal courts all over the country including California, Delaware, and Florida, and advanced to various stages including through discovery and claim construction.  The suits were settled favorably for the client.

Represented a division of The Nielsen Company in enforcing a portfolio of patents on web analytics against a dozen companies in the web analytics industry.  Many of the cases extended far into discovery and claim construction and resulted in many favorable rulings.  The multi-year effort resulted in settlements and license agreements and a substantial fund of royalties for the client.

Represented comScore, Inc. in enforcing a patent portfolio on online ad analytics against three companies trying to offer competing technologies.  All three settled on favorable terms, one on the eve of trial.

Representation of a portfolio of small companies in enforcing their patent rights in a variety of technologies.  For one such company, he has been successfully enforcing a UI patent on windows resizing and docking software against several companies, with almost all suits and license negotiations ending favorably for the client, and other suits still pending.  For another such company, he enforced a patent on a vaginal mesh delivery device against Astora Women’s Health.  After he obtained a claim construction ruling largely advantageous to the client, the case settled under favorable terms.  In yet another case for a small company, Mr. Ostrow is enforcing its patents on social media innovations against third parties including Facebook and Instagram.

Represented joint owners of a patent portfolio on a double filter embolism treatment device, bringing suit on their behalf in California against the only manufacturer of such devices in the US and successfully negotiating a favorable settlement shortly after filing the case.

Representation of an Israeli company in a suit against Google, Inc. in the Delaware federal court enforcing its patent on automatic navigation to highest ranked search results.

Representation of a consumer and office supplies company in defending a patent lawsuit brought against it in the District of Connecticut by a competitor on patents purporting to cover trifold display boards with detachable headers.  In addition to presenting a strong defense of invalidity and noninfringement, he and his team also asserted counterclaims for false patent marking on the products in question.  The case is progressing through discovery and will be coming soon to substantive or dispositive break points including claim construction.

In conjunction with many of the cases discussed above, Mr. Ostrow has represented his clients in defending Inter Partes Review (“IPR”) petitions and reexaminations filed against his clients’ patents at the US Patent and Trademark Office.  He has a prolific track record in defeating these petitions and reexaminations.  For one client, he and his team successfully prosecuted eight out of nine reexaminations to completion (the final one still pending), adding hundreds of claims in the process.  For all these clients, he and his team convinced the Patent Office to deny about 60% of IPR petitions filed by third parties, a record far better than the general IPR denial rate of about 35%.  For most of the granted IPRs, he and his team successfully negotiated resolutions.

Publications

“Intellectual Property Licensing: Forms and Analysis,” (Commercial law Intellectual Property Series) February 28, 2016 (co-author)

“Emerging Technologies and the Law: Forms and Analysis,” 2016 (contributor)