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Weil, Gotshal & Manges LLP
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Stephen D. Kahn has practiced patent
litigation and other areas of intellectual property law for more than 30
years, including the litigation of trade secret, copyright and trademark
disputes and extensive counseling/transactional matters.
In the patent litigation arena,
Mr. Kahn has litigated concerning electronic control systems, computer
software, mechanical devices and manufacturing systems. He has been involved
in new areas of patent law, focusing on patents involving financial services
products and systems. In this regard, he was directly involved in a case
entitled Mopex v. Chicago Stock Exchange et al., in which a patent
allegedly covering a financial instrument and a process for trading such
instrument was asserted against the Chicago Stock Exchange and many other
defendants. In this case the firm represented Merrill Lynch, Pierce, Fenner
& Smith.
In addition to his patent experience,
Mr. Kahn has been extensively involved in the use of copyright and trade
secret law to protect computer software and has litigated several cases
in this area of law, including Computer Associates v. Altai in which
the firm represented CA.
On the counseling and transactional
side, Mr. Kahn has had significant involvement in intellectual property
and related issues arising in the context of the Internet, e-commerce and
electronic signatures. He has also negotiated and drafted many computer
software development and licensing agreements and outsourcing agreements
covering all or parts of companies’ computer operations.
Mr. Kahn taught a course entitled
“Special Problems in Patent Law” as a Visiting Lecturer at the Yale Law
School in 1997; he has lectured on computer software protection at Yale
and at the Stanford Law School; and he has just completed a term as Chairman
of the Committee on Information Technology Law of the Association of the
Bar of the City of New York. He is the author of several articles on the
subjects of intellectual property protection of computer software, negotiating
and drafting agreements involving computer software and the Internet and
privileged communications.
Mr. Kahn’s academic background
is as follows:
Yale University, B.E., Mechanical
Engineering (summa cum laude) (1964).
Yale Law School, LL.B. (1968).
Representative Cases
- Mopex v. Chicago Stock Exchange,
Merrill Lynch et al. - Lead counsel for Merrill Lynch in
a case in the Federal District Court for the Northern District of Illinois
involving a patent allegedly covering a method of administering a financial
instrument akin to an open end mutual fund.
- Westvaco v. Viva Magnetics
et al. - Lead counsel for Westvaco in patent infringement
action involving DVD containers.
- Pilot Pen v. Benny Industries
- Lead counsel for Pilot Pen in trademark infringement action
in the Federal District Court for the Eastern District of New York involving
Pilot marks.
- American Airlines v. Northwest
Airlines - Counsel for American Airlines in trade secret
misappropriation action against Northwest Airlines relating to demand forecasting
computer system, in Federal District Court for the District of Minnesota.
- Computer Associates International,
Inc. v. Altai, Inc. - Lead counsel for Computer Associates in
this landmark case in the Court of Appeals for the Second Circuit on the
issue of copyright protection for computer software.
- AJV Corp. v. Computer Associates
International, Inc. - Lead counsel for Computer Associates in
this trademark infringement action in the Federal District Court for the
Eastern District of New York. CA was found not to have infringed the plaintiff’s
mark.
- Refac International, Ltd.
v. Computer Associates International, Inc. et al. - Lead counsel
for Computer Associates in this patent infringement action in the
Federal District Court for the Southern District of New York. CA’s motion
to dismiss the action on the ground of champerty was granted by the district
court.
- WordPerfect Corporation v.
Financial Services Marketing Corp. - Lead counsel for WordPerfect
in this trademark infringement action in the Federal District Court
for the Northern District of Texas in which the defendant’s tax preparation
product named TaxPerfect was held to infringe the WordPerfect trademark.
Representative Speaking Engagements
- “Software Licenses in Bankruptcy,”
Association of the Bar of the City of New York, May 8, 2006.
- “When Things Fall Apart: Resolving
Disputes Between Outsourcing Vendors and Customers,” Practicing Law Institute,
New York, New York, program entitled “The Outsourcing Revolution 2004,”
November 9, 2004.
- “Outsourcing Overview,” Weil,
Gotshal & Manges IP/Media Practice Group Seminar, New York, NY, September
28, 2004.
- Co-chairman of conference entitled
“Outsourcing in the Financial Services Industry, and speaker, talk entitled
“Software and Intellectual Property Issues in Outsourcing Transactions,”
Law Seminars International, Stamford, CT, June 10-11, 2004.
- “Software and Intellectual Property
Issues in Outsourcing Transactions,” Law Seminars International, Los Angeles,
CA, May 18, 2004.
- “Software and Intellectual Property
Licenses in Bankruptcy,” Weil, Gotshal & Manges IP/Media Practice
Group Seminar, New York, NY, May 11, 2004.
- “What Corporate Directors Need
to Know about Intellectual Property.” Association of Corporate Patent
Counsel, Puerto Rico, February 1, 2004.
- “Legal Issues Surrounding Email
– Attorney-Client Privilege and Trade Secrecy,” Bureau of National Affairs
Institute, New York, NY, May 2, 2003.
- “The Importance of Patent Law
for Financial Services Businesses,” Weil, Gotshal Seminar, New York, NY
June 10, 2002.
- “New Developments in Trade Secret
Law.” General Electric Company, Intellectual Property Practice Group Meeting,
Croton-on Hudson, NY, May 29, 2002.
- “Technology Forecast -- Navigating
the Future of Software,” Panel Speaker, PriceWaterhouseCoopers Conference,
New York, NY, May 8, 2002.
- “E-Commerce: United States and
European Union Standards for Electronic Contracting,” Pennsylvania Bar
Institute, Philadelphia, PA, December 14, 2001.
- “Internet-Related Patent Issues;
The U.S. Perspective,” Hawksmere Plc, Barcelona, Spain, July 9, 2001.
- “Understanding Electronic Contracting:
UCITA, E-Signature, Federal, State and Foreign Regulations: European E-Commerce
Developments From A US Perspective,” Practicing Law Institute, New York,
NY, April 2001.
- “Business Method Patents,” The
Conference Board, Coral Gables, Florida, February 23, 2001.
Representative Publications
- S. D. Kahn and H. J. Gregory, “What
Independent Directors Need to Know about Intellectual Property,” National
Association of Corporate Directors, Directors Monthly, Vol. 28,
No. 1 (January, 2004) .
- S. D. Kahn, C. Peterman and S.
Shelby, “Digital Signatures,” The Metropolitan Corporate Counsel,
Vol. 8, Nos. 11-12, Vol. 9, No. 1 (2000-2001).
- S.D. Kahn, L. Cantos, J. Boyarski,
“Legal Issues Surrounding E-Mail - Attorney-Client Privilege and Trade
Secrecy,” The Metropolitan Corporate Counsel, Vol. 8, Nos. 7-9
(2000).
- S.D. Kahn, “Getting Connected:
How Weil Gotshal Set Up An Internet Resource For GE,” Legal IT
(June 2000).
Bar Admissions and Professional
Associations
Mr. Kahn is admitted to practice
in New York State and before the United States Court of Appeals for the
Federal Circuit, the United States Court of Appeals for the Second Circuit
and the United States District Courts for the Southern and Eastern Districts
of New York.
Mr. Kahn is a member of the Association
of the Bar of the City of New York, a member of its AdHoc Subcommittee
on Internet Access to Court Records and Past Chairman of its Committee
on Information Technology Law. He is also a member of the American Intellectual
Property Law Association.
- Education
Yale University (B.E., 1964); Yale Law School (LL.B., 1968)
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