Leon Medzhibovsky is a partner in the Corporate and Finance group, based in New York.

His practice focuses primarily on counseling and strategy in intellectual property (IP) and technology law, including protection, licensing and enforcement of IP rights. He also provides technology/IP-focused advice in connection with M&A transactions and other corporate matters.

Mr. Medzhibovsky’s IP litigation experience includes responsibility for consideration, initiation, maintenance and defense of intellectual property lawsuits. He is experienced in trademark, patent and unfair competition litigation, as well as licensing and transactional agreements, prosecution of trademarks, due diligence, trademark clearance and counseling. He represents diverse clients ranging from large domestic and international entities to technology startups.

REPRESENTATIVE TRANSACTIONAL EXPERIENCE

• Represented international medical technology company in the sale of its US subsidiary and other ancillary operations relating to cardiac monitoring technology to a major international electronics conglomerate.
• Represented a venture fund in connection with its investment in a company that provides biomaterial storage, inventory management and cold-chain logistics for the biopharmaceutical market.
• Represented international media company in connection with a preferred stock investment by a major investment bank.
• Represented apparel company in connection with its sale of intellectual property and business assets.
• Represented major international fragrance and personal care company in negotiating and entering into prestige fragrance licenses with various celebrities and designers.
• Represented various clients in connection with IP license and cross-license agreements resulting from non-litigious business negotiations and in settlement of infringement actions.

REPRESENTATIVE LITIGATION EXPERIENCE

• Representation of a major international pharmaceutical company in a patent infringement action filed by a university that resulted in a favorable judgment for the client following a six-week trial
• Representation of a major international pharmaceutical company in a patent infringement action that resulted in a favorable settlement for the client after extensive discovery
• Representation of an international soft drink manufacturer in a trademark infringement and unfair competition action against a bottler. A favorable settlement was reached resulting in seizure and destruction of 18 containers of unauthorized product
• Representation of a major international consumer products company in a trademark infringement action, including successful opposition of a temporary restraining order and preliminary injunction. A favorable settlement was reached after obtaining a favorable ruling from the United States Court of Appeals for the Second Circuit
• Representation of a multimedia company in challenging a breach of contract claim involving European copyright and trademark licenses for popular American television shows and entertainment properties. Successfully represented client in obtaining a favorable District Court judgment and through appeal of the judgment before the United States Court of Appeals for the Fourth Circuit, which decided the case in a precedent-setting published decision
• Representation of a major international specialty chemical company in a suit for trade disparagement and unfair competition filed against a competitor. A favorable settlement was achieved following pre-trial mediation, including a substantial monetary payment and injunction on consent in favor of client
• Representation of a printing plate manufacturer in appealing a District Court decision to the Court of Appeals for the Federal Circuit, including a request for reconsideration en banc and petition for writ of certiorari to the United States Supreme Court
• Several representations of a telecommunications/contact center company in patent infringement actions against various competitors. In each case a favorable settlement was made out of court in favor of client resulting in grant of licenses to various defendants and payment of back and/or future royalties
• Representation of a hedge fund in a declaratory judgment action against a claim of trademark infringement and unfair competition. A favorable settlement was made out of court following successful defense of a motion for preliminary injunction

REGISTRATIES

• New Jersey
• New York
• United States District Court for the Eastern District of New York
• United States District Court for the Southern District of New York
• United States District Court for the District of Massachusetts
• United States District Court for the Central District of California
• United States Court of Appeals for the Second Circuit
• United States Court of Appeals for the Fourth Circuit

Lidmaatschap

• International Trademark Association (INTA) (2001-present):
• Parallel Imports Committee—North America Subcommittee (2008-2009)
• Anti-Counterfeiting and Enforcement—European Union Sub-Committee (2006-2007)

Seminars

• "Managing US Litigation: From… Initial Litigation Strategy – To… Thriving in the E-Discovery World," Herzlia, Israel, January 2007 and Tel Aviv, Israel, April 2007
• "An Overview of US Litigation: What you need to know if you are doing business in the US," Toulouse, France, November 2005
• "An Overview of US Trademark Practice," Mannheim and Munich, Germany, November 2005
• "An Overview of US Trademark Practice," Karlstad, Sweden, November 2005
• "Trademark Clearance and Opinions," Cincinnati, Ohio, June 2005