Amster Rothstein and Ebenstein, LLP - Intellectual Property Law

Kenneth P. George Partner

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Kenneth P. George litigates high stakes patent disputes and represents consumer products companies in all aspects of intellectual property law, including patent and trademark procurement, counseling, and litigation. He also represents research and academic institutions in securing, protecting, enforcing, and monetizing their intellectual property.

A trial lawyer, Mr. George's experience includes jury and non-jury trials in Federal and State Courts and appeals before the Court of Appeals for the Federal Circuit. He excels at identifying the strengths and weaknesses in claims and designing offensive and defensive litigation strategies. It is not unusual for his cases to involve hundreds, and in some cases, thousands, of overlapping claims, and revenue streams in the hundreds of millions of dollars. For example, when the launch of a new line of consumer products roiled an existing $800 million market and led to dozens of patent infringement lawsuits to halt the new competitor, Mr. George defended suits and the inevitable motions for injunctions. He successfully defeated preliminary injunctions at the district court level and overturned improperly entered injunctions at the appellate level.

He served as co-counsel for a major pharmaceutical company in a case that reset the standard for inequitable conduct. In that case, the client prevailed on both invalidity and inequitable conduct and obtained an award of attorneys’ fees. A separate patent was defeated earlier in the case on summary judgment (Therasense, Inc. v. Becton, Dickinson and Co., Case No. 3:05-CV 3117).

In litigation involving an attempt to capture the market for storage of umbilical cord blood, Mr. George worked with five different opposers to coordinate the defeat of the stem cell cryo preservation patent. Mr. George has worked closely with European counsel in connection with opposition proceedings before the European Patent Office, nullity proceedings before the German Federal Patent Court, and infringement and other proceedings in Germany, Switzerland, Austria, France, Belgium, and the Netherlands. Working with European counsel, Mr. George successfully asserted patent infringement claims in Europe directed to implantable medical devices and methods for inactivating viruses in blood products and plasma.

Mr. George was lead counsel in a series of lawsuits between the two top competitors in a consumer product and achieved an unbroken string of success for his client in numerous patent, trademark, trade dress, and unfair competition issues that arose. Before the ITC, he obtained an exclusion order on behalf of a U.S. manufacturer of digital printing press plates that holds more than 400 patents protecting its advanced printing equipment.

Another major focus for Mr. George is advising academic institutions and not-for-profit research organizations on developing, protecting, transferring, and licensing the output of their R&D programs. Much of this work involves materials science, life sciences, and medical products licensed to major pharmaceutical companies, with substantial royalties flowing back to the non-profit organization. Mr. George has represented the Albert Einstein College of Medicine for over twenty years and The Feinstein Institute for Medical Research for more than ten years. He has worked with clients to establish effective patent and licensing strategies and has represented them in litigations to enforce their rights under patents and licenses. He was lead counsel in a landmark New York State case that established the principal that scientific researchers at academic institutions are hired to invent and are therefore obligated to assign their inventions to their employers, even in the absence of a written agreement.


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Certification/Specialties
  • Registered to Practice Before the U.S. Patent and Trademark Office, 1981
Bar Admissions
  • New York, 1981
  • U.S. District Court Southern District of New York, 1983
  • U.S. District Court Eastern District of New York, 1983
  • U.S. Court of Appeals for the Federal Circuit, 1993
Education
  • Brooklyn Law School, Brooklyn, NY, J.D., 1980
  • New York University, New York, NY, Physics, 1977
Representative Cases
  • SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 2013 U.S. Dist. LEXIS 98755 (W.D. Ky. July 15, 2013)
  • Kimberly-Clark Worldwide, Inc. v. First Quality Baby Prods., LLC, 2012 U.S. Dist. LEXIS 167952 (E.D. Wis. Nov. 27, 2012)
  • Kimberly-Clark, Inc. v. First Quality Baby Prods., LLC, 900 F. Supp. 2d 919 (E.D. Wis. 2012)
  • Kimberly-Clark Worldwide, Inc. v. First Quality Baby Prods., LLC, 900 F. Supp. 2d 903 (E.D. Wis. 2012)
  • Kimberly-Clark Worldwide, Inc. v. First Quality Baby Prods., LLC, 2012 U.S. Dist. LEXIS 129646 (E.D. Wis. Sept. 12, 2012)
  • Kimberly-Clark Worldwide, Inc. v. First Quality Baby Prods., LLC, 431 Fed. Appx. 884, reh'g denied (Fed. Cir. 2011), and cert. denied, 132 S. Ct. 1143 (2012).
  • Kimberly-Clark Worldwide, Inc. v. First Quality Baby Prods., LLC, 447 Fed. Appx. 217 (Fed. Cir. 2011)
  • Kimberly-Clark Worldwide, Inc. v. First Quality Baby Prods., LLC, 2011 U.S. Dist. LEXIS 139656 (E.D. Wis. Dec. 3, 2011)
  • Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1289 (Fed. Cir. 2010) (en banc)
  • Roche Diagnostics Operations, Inc. v. Abbott Diabetes Care, 756 F. Supp. 2d 598 (D. Del. 2010)
  • Kimberly-Clark Worldwide, Inc. v. First Quality Baby Prods., LLC, 2009 U.S. Dist. LEXIS 76571, 2009 WL 2634860 (N.D. Tex. Aug. 26, 2009)
  • In the Matter of Certain Laser Imageable Lithographic Printing Plates, Inv. No. 337-TA-636, USITC Pub. 4204 (Dec. 2010)
  • Presstek Incorporated v. VIM Technologies Limited, Landgericht Dusseldorf - German Patent Litigation Presstek, Inc. v. Creo, Inc., 2007 U.S. Dist. LEXIS 24126 (D.N.H. 2007)
  • Spotless Enterprises v. A&E Products Group, 294 F.Supp. 2d (E.D.N.Y. 2003)
  • Thierry Pourchez & Bard v. Diatek, Inc. & Arrow, 265 F. Supp. 2d 192 (S.D.N.Y. 2003)
  • Spotless Enterprises, Inc. v. Carlisle Plastics, Inc., 144 F. Supp. 2d 167 (E.D.N.Y. 2001)
  • Spotless Enterprises, Inc. v. Carlisle Plastics, Inc., 56 F. Supp. 2d 274 (E.D.N.Y. 1999)
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