AREA OF PRACTICE

Litigation

Biography

Alfred Fabricant (Fred) brings more than 30 years of litigation experience to Brown Rudnick, where he heads the intellectual property litigation practice in the United States. Fred is an experienced first chair trial lawyer and focuses his practice on patent, copyright, trademark, unfair competition, entertainment, antitrust, and other commercial litigation matters.

Fred has first chair experience in district courts throughout the United States litigating patents including the most active courts in Delaware, E.D. Texas, California, Illinois and Florida. His cases have involved a large variety of technologies including digital audio and video watermarking, electronic ratings systems, consumer electronics, copy protection and anti-piracy 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 successfully handled dozens of high-stakes patent litigation cases and resolved disputes across the gamut of contentious IP issues including copyright and trademark infringement, trade secret and unfair competition disputes. According to The World's Leading Patent Practitioners 2013 & 2014 published by iam 1000, "clients say they cannot imagine working with anyone better, hailing [Fabricant's] outstanding skills of presentation and persuasion in the courtroom." Fred has also tried many arbitration matters and represented clients in mediations.

He has represented clients in matters before the International Trade Commission and the Board of Patent Appeals and Interferences in the United States Patent and Trademark Office. Fred has also argued numerous appeals before the U.S. Courts of Appeal for the Federal, Second and Fourth Circuits where he has represented both appellants and appellees in a variety of matters, including patent, copyright, breach of contract, antitrust, entertainment, and First Amendment issues.

In addition to his litigation experience, Fred routinely acts a legal counselor and advisor in the negotiation and drafting of patent, trademark and copyright license agreements, joint venture and funding agreements, partnership agreements and other business contracts. Fred also specializes in IP due diligence; freedom to operate analyses and the management and monetization of IP portfolios, a topic on which he has lectured extensively over the past decade. He advises clients on portfolio development, licensing strategies and other intellectual property protection.

Awards

Representation

Successfully representing clients in numerous jury and non-jury cases in both federal and state courts throughout the United States.

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).

Obtaining 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 defending several large defendants in the Katz patent litigation involving interactive call processing and digital teleconferencing patents (E.D. Tex. Judge David Folsom; MDL C.D. Calif. Judge Gary Klausner).

Securing a consent injunction 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).

Securing 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 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).

Education

John Marshall – J.D., 1978 (with highest distinction)
University of Miami – B.A., 1975 (magna cum laude)

Bar Admissions

New York
Arizona
Speaking Engagements
Fred 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, including most recently "Administering An IP Licensing Program" PLI IP Issues in Business Transactions January, 2014
Speaker, "Patent v. Trade Secret; Making The Choice" Trade Secret Symposium, The John Marshall Law School, September, 2014
Speaker, "Developments in U.S. IP Enforcement Law" State Intellectual Property Office, Beijing, PRC April 10, 2013
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
Awards and Honors
In 2013 and 2014, Fred was recognized by IAM Patent 1000 in The World's Leading Patent Practitioners as a leading patent litigation practitioner.
Fred is recognized in New York Super Lawyers Metro Edition in 2011, 2012, 2013 and 2014.
Professional Memberships
American Bar Association
New York State Bar Association
Association of the Bar of the City of New York
Arizona State Bar Association