AREA OF PRACTICE

Intellectual Property Litigation

Biography

Alfred Fabricant (Fred) heads the intellectual property litigation practice at Brown Rudnick. Fred is an experienced first chair trial lawyer who focuses his practice on patent, copyright, trademark, unfair competition, and other commercial litigation matters.

Fred has more than 30 years of first chair experience in district courts throughout the United States litigating patents for both patent owners and defendants including cases in the most active courts in Delaware, E.D. Texas, California, Illinois and Florida. His cases have involved a large variety of technologies including automotive, semiconductor, LED displays, smartphone handsets, medical devices, digital audio and video watermarking, electronic ratings systems, consumer electronics, copy protection and anti-piracy technology, NFC and radio frequency identification systems, robotics systems, automated storage and retrieval systems, memory and storage devices, software, internet-related method and system patents, universal remote control devices, optical systems, and methods and systems for the manufacture of flooring materials.  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 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.

Fred has represented clients in matters before the International Trade Commission including, at present, the patent owner in one of the largest ITC proceedings involving modular LED display panels.  He has also appeared in more than 50 inter partes review proceedings before the Patent Trial and Appeals Board. 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. 

Since 2008, Fred has handled a large number of cases that have been financed, in whole or in part, by litigation funders.  He has also represented litigation funds as outside diligence counsel and is frequently recommended by litigation funders to claimants for both lead counsel representation in litigation as well as for IPR work before the PTAB.

In addition to his litigation experience, Fred routinely acts as a legal counselor and advisor in the negotiation and drafting of patent, trademark and copyright license agreements, joint venture and funding 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 acquisitions and development, licensing and enforcement strategies, and litigation financing options.

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
Publications
Co-Author, "Mandamus as a strategic tool to avoid a forum" Intellectual Property Magazine, January 21, 2019
Speaking Engagements
Panelist, "Funding for Perfection: Delivering Superior Client Service" and "Law Firm Profitability: Big Law Roundtable" Momentum Events General Counsel Forum, New York, May 1, 2019
Fred has been a featured speaker at the IP Dealmakers Forum since 2016 and conference Chairperson since 2018
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