Peter J. Toren
Peter Toren
Potomac
Maryland (MD)
Intellectual Property Litigation
Intellectual Property
Criminal Defense: White Collar
Profile
Peter J. Toren is a partner with Shulman Rogers in Potomac, Maryland. Prior to this, he was the head of the New York intellectual property group of Sidlley Austin. He is an experienced litigator, who has successfully tried patent, trademark, copyright, and trade secret cases involving complex legal issues and concerning technologies including computer software and hardware, light emitting diodes, bio-technology, semiconductor manufacturing and fabrication, optics and medical devices as well as business methods. His success in Frazier v. Roessel Cine Photo Tech, Inc., et al., 417 F.3d 1230 (Fed. Cir. 2005), in which the patent in-suit was held invalid and the defendant was awarded attorneys fees was featured in "The Winning Ways of Six IP Trial Teams", IP Law and Business, August 2003. He has also handled a number of internal investigations involving the Economic Espionage Act as well as other federal criminal laws on behalf of large corporations.Most recently, he represented Adelphia Communications Corporation in a patent infringement lawsuit involving cable modems brought by Rembrandt, Inc. In Re: Rembrandt Technologies LP Patent Litigation, 07 Md-1848-GMS-LPS. The case settled after Rembrandt dismissed its claims and filed a covenant not to sue. He also recently represented a software development company against Allstate that settled on favorable terms. WebXchange, Inc. v. Allstate Insurance Co. Del. No.8-131 (JJF) and obtained dismissal of two declaratory judgment actions for patent non-infringement and invalidity brought by Microsoft against WebXchange. He successfully represented a Japanese printing press company, Tokyo Kikai Seisakusho, Ltd. in an appeal before the Eighth Circuit Court of Appeals involving a foreign anti-suit injunction. (Goss International Corporation v. Man Roland Druckmaschinen Aktiengesellschaft, 491 F 3d 355 (8th Cir., 2007). He represented a large European company in a case involving a novel interpretation of trade dress infringement under the Lanham Act in which, after a two week trial in the Southern District of Mississippi, the client was awarded $1,750,000. In addition, he has successfully obtained and defended motions for preliminary injunctions, summary judgment motions involving the Patent Act, Copyright Act, Lanham Act, Digital Millennium Copyright Act and Computer Fraud and Abuse Act. See e.g. Physicians Interactive v. Lathian Systems, 2003 U.S. Dist. LEXIS 22868 (E.D. Va. Dec. 5, 2003). He has also argued numerous times before the Second, Fifth, Ninth and Federal Circuits involving patent, copyright, and trademark law. See e.g., The McGraw-Hill Companies, Inc. v. International Securities Exchange, Inc. et al., 451 F.3d 295 (2d Cir. 2006).He regularly represents clients in complex intellectual property licensing and technology transfer agreements. He also regularly handles pro bono matters including representing a client in the Goggle book settlement, and recently appeared before the Alabama Court of Criminal Appeals seeking a writ of habeas corpus for a death row inmate, Renard Marcel Daniel, v. State of Alabama, CR-08-0670.Mr. Toren has also been recognized in New York Super Lawyers 2006, 2007, 2008, 2009 and 2010 and has been profiled as an outstanding alumnus of USF Law School.He regularly represents clients in complex intellectual property licensing and technology transfer agreements.
Prior to entering private practice, Mr. Toren was at the United States Department of Justice, as one of the first attorneys with the Computer Crime and Intellectual Property Department. During his more than six years there, he handled a number of high-profile investigations and prosecutions involving criminal copyright, trafficking in counterfeit goods, theft of trade secrets and computer intrusions. He was also the author of the Department's first manual on prosecuting violations of criminal intellectual property laws. He also served as a Special Assistant United States Attorney with the United States Attorney's Office for the District of Columbia. While with the government, Mr. Toren tried more than twenty cases.
Mr. Toren has written dozens of articles on intellectual property issues and is the author of the treatise, "Intellectual Property & Computer Crimes", Law Journal Press (2003). His recent publications include "The Intersection of IP and Bankruptcy Law", IP Law 360, February 13, 2009 and "Responding To Companies Trademark Concerns in an Evolving Technological Landscape", Inside the Minds: Trademark Protection and Enforcement, 2009. He has given over 100 speeches and talks on a wide variety of intellectual property subjects groups both inside and outside the United States. He is a member of the Board of Editors of the Quarterly Law Journal of the American Intellectual Property Law Association Law Journal (AIPLA), Patent, Strategy and Management, and Internet Law and Strategy. Mr. Toren was an Adjunct Professor of Law for five years specializing in cyberlaw. He has appeared as a legal commentator on television and radio.
Selected Speeches and Publications include "Exploring the Law of Embodiments After Philips", Patent Strategy & Management , Volume 7, No. 7, December 2006"Federal Circuit Finally Defines Materiality for Inequitable Conduct", Patent Strategy & Management , Volume 6, No. 11, April 2006"Diamonds and Spiders are Coming to an Exchange Near You", Futures & Derivatives Law Report , January 2006, Vol. 26 No. 1."The Advantages of Litigating Patent Infringement Lawsuits in the ITC", Patent Strategy & Management , Volume 6, No. 2, June 2005"Comprehensive Protection of New Intellectual Property", Competitive Intelligence Magazine , May/June 2005."Limiting Computer Crime Losses with Cyberinsurance", New York Law Journal , October 27, 2003, at T-5."U.S. Standards and International Legal Standards for Information Security", presentation to 2006 Privacy Academy, International Association of Privacy Professionals, Toronto, Canada."Anatomy of a Data Breach", presentation to Global Privacy and Information Law Conference, Information Law and Privacy Group, San Francisco, California."Email Monitoring and Archiving and Records Retention: How to Avoid Storing up Trouble", presentation to Summit on Compliance & IT for Investment Advisors, Financial Technology Forum, New York, New York. "Meaning of the Amendments to Federal Rules of Civil Procedure Governing Discovery of Electronically Stored Information", presentation at workshop, New York, New York.Activities and AffiliationsMember: Federal Circuit Bar Association, AIPLA, NYILPA, ABA, Second Circuit Bar Association
Selected To
New York Super Lawyers 2010 - Metro
New York Super Lawyers 2009 - Metro
New York Super Lawyers 2008 - Metro
New York Super Lawyers 2007 - Metro
New York Super Lawyers 2006 - Metro
About Peter Toren
Admitted: 1986, Maryland
Honors and Awards:
- U.S. Dept. of Justice Meritorious Achievement Award 1994; Special Achievement Awards 1992, 1993, 1995, 1996, 1997.Adjunct Professor of Law - Cyberlaw: Hofstra University, Hempstead, N.Y. Former Member Board of Editors - American Intellectual Property Law Asssociation Quarterly Law Journal (2006-2009). Assistant Editor and Adviser - Patent Strategy & Management. Board of Editors - Internet Law & Strategy. Former Columnist and Board Member -The Advisory Board to E-Commerce Law Journal. Judge - George Hutchinson Writing Competition 2008, Federal Circuit Bar Association.
Bar/Professional Activity:
- New York Intellectual Property Law Association; American Intellectual Property Law Association; Federal Bar Council; New York Bar Association; Federal Circuit Bar Association; American Bar Association.
Pro bono/Community Service:
- Represent a client on death row in Alabama.
Scholarly Lectures and Writings:
- Intellectual Property and Computer Crimes, published by the Law Journal Press division of American Lawyer Media. Considered a "must have desk reference for an overview of copyrights, patents, trade secrets, trademarks, computer crime and the key federal and state statutes pertaining to intellectual property and computer crime."“THE TREATMENT OF INTELLECTUAL PROPERTY UNDER BANKRUPTCY LAW,” The Bankruptcy Strategist, February 2010.“’UNAUTHORIZED ACCESS’ UNDER THE CFAA,” Law360, January 11, 2010.“THE INTERSECTION OF INTELLECTUAL PROPERTY AND BANKRUPTCY LAW,” Patent, Trademark & Copyright, BNA, June 12, 2009.“THE INTERSECTION OF INTELLECTUAL PROPERTY AND BANKRUPTCY LAW," Law360, February, 2009.“EXPLORING THE LAW OF EMBODIMENTS AFTER PHILLIPS,” Patent Strategy & Management, Volume 7, No. 7, December 2006.“FEDERAL CIRCUIT FINALLY DEFINES MATERIALITY FOR INEQUITABLE CONDUCT,” Patent Strategy & Management, Volume 6, No. 11, April 2006.“DIAMONDS AND SPIDERS ARE COMING TO AN EXCHANGE NEAR YOU,” Futures & Derivatives Law Report, January 2006, Vol. 26 No. 1.“THE ADVANTAGES OF LITIGATING PATENT INFRINGEMENT LAWSUITS IN THE ITC,” Patent Strategy & Management, Volume 6, No. 2, June 2005.“COMPREHENSIVE PROTECTION OF NEW INTELLECTUAL PROPERTY,” Competitive Intelligence Magazine, May/June 2005.“LIMITING COMPUTER CRIME LOSSES WITH CYBERINSURANCE,” Internet Law & Strategy, Vol. 2, No. 7, July 2004.“LIMITING COMPUTER CRIME LOSSES WITH CYBERINSURANCE,” New York Law Journal, October 27, 2003, at T-5.Book review, “THE ART OF DECEPTION: CONTROLLING THE HUMAN ELEMENT OF SECURITY,” Kevin D. Mitnick and William L. Simon, New York Law Journal, February 4, 2003 at 2.“THE RIGHT TO A FAIR USE DEFENSE UNDER THE DMCA,” E-Commerce Law, Vol. 2, No. 9, September 2002.“THE REWARDS AND RISKS OF DEFENSIVE PATENT PUBLICATIONS,” E-Commerce Law, Vol. 2, No. 7, June/July 2002.“CONTROLLING SPAM,” E-Commerce Law, Vol. 2, No. 6, May 2002.Book review, “HANDBOOK OF COMPUTER CRIME INVESTIGATION,” Eoghan Casey, ed. New York Law Journal, April 2, 2002 at 2.“USING TECHNOLOGY TO LIMIT THE BASIS FOR JURISDICTION,” E-Commerce Law, Vol. 2, No. 5, April 2002.“DOES THE DMCA THREATEN FREE SPEECH?”, E-Commerce Law, Vol. 2, No. 4, March 2002.“NO NEW ENCRYPTION LAW, AT LEAST FOR NOW,” E-Commerce Law, Vol. 2, No. 3, February 2002.“LIABILITY FOR COMPUTER INTRUSIONS AND DENIAL OF SERVICE ATTACKS: WHO SHOULD PAY?” E-Commerce Law, Vol. 2, No. 2, January 2002.“FROM THE SEVEN EWES OF ABRAHAM TO THE CLICK OF A COMPUTER MOUSE,” E-Commerce Law, Vol. 2, No. 1, November/December 2001.“IS COPYRIGHT LAW OUT OF BALANCE?,” E-Commerce Law, Vol. 1, No. 10, October 2001.“IS P3P THE ANSWER?” E-Commerce Law, Vol. 1. No. 9, September 2001.“THE RIGHT TO COLLECT COOKIES,” E-Commerce Law, Vol. 1, No. 8, August 2001“TRADE SECRET THEFT IN U.S. GETS SERIOUS,” New York Law Journal, June 9, 2001.“THE POTENTIAL IMPACT OF TRUSTED SYSTEMS ON COPYRIGHT LAW,” E-Commerce Law, Vol. 1, No. 7, July 2001.“DOES STRICT SCRUTINY APPLY TO COMPUTER CODE,” E-Commerce Law, Vol. 1, No. 6, June 2001.“MORE LIMITS ON DATA MINING,” E-Commerce Law, Vol. 1. No. 5, May 2001.“VIVE LA FRANCE,” E-Commerce Law, Vol. 1, No. 4, April 2001.“YOURCOMPANYSUCKS.COM,” E-Commerce Law, Vol. 1. No. 3, March 2001.“CRIMINAL PROSECUTIONS UNDER THE DIGITAL MILLENNIUM COPYRIGHT ACT (DMCA),” eIP, Premier Issue.Book Review, “LASER: THE INVENTOR, THE NOBEL LAUREATE & THE THIRTY-YEAR PATENT WAR,” New York Law Journal, February 9, 2001, at 2.“IS DATA ON THE INTERNET PROPERTY?” E-Commerce Law, Vol. 1, No. 2, January February 2001.“AN IDEA WHOSE TIME HAS COME: PATENTING SOFTWARE AND BUSINESS METHODS,” Business Law Today (The magazine of the ABA Section of Business Law), Vol. 10, Number 3, January/February 2001.“THE LEGALITY OF HYPERLINKING,” E-Commerce Law, November/December 2000.“SOFTWARE AND BUSINESS METHODS ARE PATENTABLE IN THE US (GET OVER IT),” Patent World, September 2000.“PATENT PROBLEMS? THE SOLUTION . . .” Corporate Counsel, September 2000.“PROTECTING INVENTIONS AS TRADE SECRETS WHEN PATENTS ARE INAPPROPRIATE,” Patent Strategy & Management, August 2000.“ANTITRUST CONSIDERATIONS IN PATENT LICENSES,” International Legal Strategy, Vol. IX-7 (July 2000) (Japanese language publication).“PROTECTING INVENTIONS AS TRADE SECRETS: A BETTER WAY WHEN PATENTS ARE INAPPROPRIATE, UNAVAILABLE,” IP Law Weekly, May 24, 2000, at 664."ANTICYBERSQUATTING CONSUMER PROTECTION ACT," Intellectual Property Today, April 2000."PROTECTING PREVAILING INTELLECTUAL PROPERTY," The New York Law Journal, March 27, 2000, at S8."INTELLECTUAL PROPERTY DUE DILIGENCE IN THE ACQUISITION OF OR INVESTMENT IN TECHNOLOGY COMPANIES," The Lawyer's Brief, Vol. 30 Issue No. 5, March 15, 2000; "Corporate Counsel's Guide to Acquisitions and Divestitures," April 2000."THE IMPORTANCE OF PRIOR ART DISCLOSURE IN BUSINESS METHOD PATENT APPLICATIONS," International Legal Strategy, Vol. IX-1 (Japanese language publication)."WIRTSCHAFTSSPIONAGE KANN IN AMERIKA HARTE STRAFEN NACH SICH ZIEHEN," Frankfurter Allgemeine, at Seite 22, September 3, 1999 (German language publication)."FEDERAL PROSECUTION OF THEFTS OF TRADE SECRETS UNDER THE ECONOMIC ESPIONAGE ACT," Worldwide Trade Secrets Law Treatise, West Publishing Company, Release No. 6, 1999.“STEAL BEAM - Has the Economic Espionage Act fulfilled its promise to protect trade secrets?” The Daily Journal, Intellectual Property Supplement, February 8, 1999. “THE CRIMINALIZATION OF TRADEMARK COUNTERFEITING ,” 31 U. Conn. L. Rev. 1 (Fall 1998)."SUPPLEMENT TO FEDERAL GUIDELINES FOR SEARCHING AND SEIZING COMPUTERS," United States Department of Justice, October 1997."EEA VIOLATIONS COULD TRIGGER CRIMINAL SANCTIONS," The National Law Journal, August 25, 1997, at B8."FEDERAL PROSECUTION OF VIOLATIONS OF INTELLECTUAL PROPERTY RIGHTS (Copyrights, Trademarks, and Trade Secrets)," United States Department of Justice, May 1997."UNDERSTANDING THE ECONOMIC ESPIONAGE ACT OF 1996," 5 Texas Intellectual Property Law Journal 177, Winter 1997."INTERNET: A SAFE HAVEN FOR INFORMATION THIEVES," 11 St. John's J. Legal Comment 647, Summer 1996."THE PROSECUTION OF THEFT OF TRADE SECRETS UNDER FEDERAL LAW," 22 Pepperdine Law Review 1, December 1994. (Cited in Senate Report No. 104-359, 104th Cong. 2nd Sess. 1996, accompanying S. 1556, THE INDUSTRIAL ESPIONAGE ACT OF 1996) (Reprinted in Protecting Confidential Business Information, Law Journal Seminars-Press, April 1996)Comment, "THE ADJUDICATION OF INDIAN WATER RIGHTS IN STATE COURTS," 19 U.S.F.L. Rev. 1, Fall 1984., Intellectual Property and Computer Crimes
Representative Clients:
- Adelphia Communications, Hilton Hotels.
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