ATTORNEYS
Thorsten Schmidt
EXPERIENCE
Thorsten Schmidt, co-founder and managing partner of Schmidt LLC, focuses his practice on intellectual property law with emphases in patent, trademark and unfair competition litigation, trademark prosecution and oppositions before the USPTO, IP licensing and IP due diligence. He supports his US and international clients in national and cross-border transactions, especially where such activities pertain to their intellectual property. Further, Thorsten is engaged in general corporate counseling, commercial litigation and alternative dispute resolution, including domestic and international arbitration.
Prior to founding Schmidt LLC, Thorsten worked for over a decade for an international law firm in its Washington, D.C., London and New York offices. He is a frequent speaker at legal and business conventions, seminars and workshops throughout the United States, Europe and China.
REPRESENTATIVE EXPERIENCE
• Defended a German manufacturer and US distributor in trademark infringement litigation against group of competitors. The dispute was settled favorably for the client.
• Representation of a US healthcare company in series of patent infringement litigations. Obtained favorable settlements for the client.
• Representation of a German pharmaceutical company in an ICDR arbitration against a US company in a contract manufacturing dispute which was settled favorably for the client.
• Represented a US company in a JAMS arbitration against a patent licensee in a royalty dispute. Arbitrator ruled that licensee owed royalties to client.
• Defended a German manufacturing company in patent infringement litigation against a U.S. competitor. Obtained favorable settlement for the client.
• Representation of a German specialty chemical company in a trade disparagement and unfair competition suit against a U.S competitor. A favorable out-of-court settlement was obtained.
• Representation of a German chemical company in patent infringement litigation against the US subsidiary of a European company that resulted in a favorable settlement for the client.
• Assisted in representation of Eastern European country in a series of ICC arbitrations against international consortia of construction companies over payment terms for construction projects in that country. Achieved favorable rulings for the client in all cases.
PROFESSIONAL ACTIVITIES AND MEMBERSHIPS
• American Bar Association (Intellectual Property, International and Business Law Sections)
• The Association of the Bar of the City of New York
• International Trademark Association (INTA)
EDUCATIONAL BACKGROUND
1998 – LL.M. Duke University School of Law
1997 – 2nd State (Bar) Exam in Frankfurt, Germany
1994 – 1st State Exam (JD equivalent) in Hamburg, Germany
Thorsten was licensed to practice law in Germany in 1997 and in the state of New York in 2001. He is admitted to practice before the Southern, Eastern and Western Districts of New York and the Lower Regional Court in Itzehoe, Germany.
LANGUAGE CAPABILITIES
Thorsten is fluent in German.
Bruce J. Koch
EXPERIENCE
Bruce is a co-founder of Schmidt LLC. His practice focuses on intellectual property law with emphases in patent, trademark and unfair competition litigation, patent and trademark prosecution and oppositions before the USPTO and IP licensing and due diligence. Prior to founding Schmidt LLC, Bruce worked for two highly rated international law firms in their New York and Washington D.C. offices handling all aspects of complex IP and commercial litigations, including Hatch-Waxman pharmaceutical cases, drafting freedom-to-operate and invalidity opinions, performing due diligence reviews for transactional matters, negotiating and preparing settlement and license agreements and prosecuting patents and trademarks before the USPTO.
Bruce has represented clients in complex patent, trademark and false advertising matters involving biotechnology, chemicals, chemical substrates, lasers, mechanical devices, medical devices, paper-plastic laminates and pharmaceuticals.
REPRESENTATIVE EXPERIENCE
• Represented U.S. company in trademark and trade dress dispute relating to marketing and bottle design for premium vodka manufacturers. Obtained favorable settlement for the client.
• Represented client in trademark and trade secret case relating to home heating oil delivery. Obtained settlement that barred defendant/opponent from servicing client’s market.
• Represented German pharmaceutical company against infringement allegations concerning medical device. Obtained favorable settlement for the client.
• Represented German company against allegations of infringement of paper-plastic laminates patents. Obtained favorable settlement for the client.
• Represented large U.S. bank against patent infringement allegations regarding electronic check image processing. Obtained favorable settlement for the client.
• Represented large U.S. University in patent interference action before the USPTO Board of Patent Appeals and Interferences regarding micro-batch protein crystallization patents. Succeeded in invalidating competitor’s patents saving client substantial royalties.
• Defended a Swiss pharmaceutical company in the post-trial and appellate phases of an infringement action concerning recombinant DNA techniques where client had lost at trial and had a large monetary damages awarded against it. Succeeded in settling the case for no damages.
• Represented major U.S. chemical company in infringement action involving chemical catalyst technology. Responsible for damages portion of case from inception through Federal Circuit appeal. Developed legal theory for multi-million dollar damages calculation used at trial. Obtained reversal of verdict and client won a substantial damage award at retrial.
PROFESSIONAL ACTIVITIES AND MEMBERSHIPS
• The Association of the Bar of the City of New York
• The Association of the Bar of Westchester County
• International Trademark Association (INTA)
EDUCATIONAL BACKGROUND
1995 - University of Pennsylvania Law School, J.D., cum laude
1989 – Colgate University, B.A. , Molecular Biology, magna cum laude, Phi Beta Kappa
Prior to law school Mr. Koch spent three years at the University of North Carolina doing recombinant DNA research to develop improved cytokines and cytokine conjugates.
Bruce is licensed to practice in New York and Pennsylvania. He is admitted to practice before the Federal Circuit, the Southern, Eastern and Western Districts of New York and the United States Patent and Trademark Office.
Michael Dallal
EXPERIENCE
Michael is Of Counsel to Schmidt LLC. His practice has encompassed intellectual property litigation and prosecution since 2005. Before working with Schmidt LLC, Michael maintained a legal practice and was associated with national and international law firms in their New York offices. He has litigated, prosecuted and negotiated patent, trademark, copyright, unfair competition, and trade secret matters in the telecommunications, electronics, software, biotechnology, and chemical industries, as well as commercial transactions and disputes. In addition to all aspects of complex litigation, Michael has performed pre-litigation due diligence and case analysis and developed litigation and negotiation strategies.
REPRESENTATIVE EXPERIENCE
• Represented publicly-traded bioanalysis company in multiple patent infringement lawsuits involving numerous patents asserted by both parties.
• Developed litigation strategy and involved in all aspects of enforcing and monetizing patents for a telecommunications company.
• Successfully prosecuted several patents for publicly-traded biotechnology and consumer product companies.
• Represented software company in negotiations to license and acquire intellectual property rights.
PROFESSIONAL ACTIVITIES AND MEMBERSHIPS
• American Bar Association
EDUCATIONAL BACKGROUND
2005 – Fordham University School of Law, J.D.
2001 – The Cooper Union for the Advancement of Science and Art, M.Eng., Mechanical Engineering
1999 – Hofstra University, B.S. with Honors, Mechanical Engineering
During law school, Michael was Symposium Editor of the Fordham Urban Law Journal. He is licensed to practice in New York and New Jersey. He is admitted to argue before the Supreme Court, the Federal and Second Circuits, the Southern and Eastern Districts of New York, the District of New Jersey, the Court of International Trade, and the United States Patent and Trademark Office.