Norman H. Zivin

Overview

Norman Zivin focuses on intellectual property litigation, including patent, trademark, copyright, and unfair competition cases. He has tried numerous cases in federal courts around the US, both before juries and judges, and has argued dozens of appeals in the Federal Circuit and other courts of appeal. In addition, Norm has handled hundreds of contested Patent and Trademark Office proceedings before the Patent Trial and Appeal Board (PTAB) and the Trademark Trial and Appeal Board (TTAB). 

With a distinguished career that spans over five decades, Norm’s clients rely on him for his extensive experience across all intellectual property areas. In addition to his active litigation practice, Norm regularly counsels clients on patent and trademark prosecution matters.

Prior to joining Wolf Greenfield, Norm was an attorney at an intellectual property firm in New York for over 50 years, where he served as the head of litigation for many years.

Experience

• Represented SEB, a French home appliance manufacturer, in the prosecution of an infringement action on a deep fryer patent against Montgomery Ward and others. The jury returned a verdict of several million dollars in SEB’s favor. The damages were enhanced by the Court and attorneys’ fees also were awarded, but later reduced because of a change in the law. The judgment was affirmed on appeal by the Federal Circuit and by the United States Supreme Court.
• Represented Columbia University in the prosecution of a patent infringement action against Roche on a patent directed to a co-transformation method of making pharmaceuticals which was invented by the Nobel-Prize winning inventor Professor Richard Axel. The Court held the patent valid and infringed and a judgment for damages was issued.
• Represented Romag Fasteners in the prosecution of several infringement actions on a magnetic fastener patent. In one case, the jury rendered a verdict of several million dollars in Romag’s favor. Enhanced damages and attorneys’ fees also were awarded. The judgment was affirmed on appeal by the Federal Circuit. In another case involving both patent and trademark issues, the jury also rendered a verdict of several million dollars in Romag’s favor and attorneys’ fees were awarded. However, the Court reduced the damages because of a conflict among the circuits in applicable law. That judgment was affirmed on appeal by the Federal Circuit. However, the United States Supreme Court then resolved unanimously the conflict in favor of Romag’s position and vacated the reduced damages award.
• Represented Romag Fasteners in the defense of an infringement action on a magnetic fastener patent. The Court granted judgment as a matter of law at the close of the plaintiff’s case, discharging the jury. The Court then awarded attorneys’ fees against the plaintiff and the plaintiff’s lawyers for bringing a frivolous case. The judgment was affirmed on appeal by the Federal Circuit.
• Represented Donruss-Playoff, a maker of sports trading cards, in the defense of a patent infringement action concerning memorabilia sports cards. The Court granted summary judgment dismissing the complaint. The judgment was affirmed on appeal by the Federal Circuit.
• Represented Coach in the prosecution of a trade dress and trademark infringement action concerning handbags. The jury found the defendants liable and the Court awarded attorneys’ fees to Coach. This is one of the few cases where the appearance of a product was protected. The judgment was affirmed on appeal by the Second Circuit.
• Represented Kohl’s Department Stores in the defense of a trademark and copyright infringement action. The jury found that Kohl’s had no liability, although a judgment was rendered against other defendants.
• Represented ITT Industries in the prosecution of a trademark infringement action. The Court granted summary judgment of defendant’s liability and awarded ITT damages and attorneys’ fees. The judgment was affirmed on appeal by the Third Circuit.
• Represented Patsy’s Brand in a trademark infringement action concerning pasta sauce. The Court granted summary judgment in favor of Patsy’s Brand and awarded attorneys’ fees and sanctions against the defendants. The judgment was affirmed on appeal by the Second Circuit.
• Represented Patsy’s Italian Restaurant in the prosecution of a service mark and unfair competition action against a pizzeria chain and its franchisee. The jury found willful infringement by the pizzeria franchisee and fraud by the chain. The judgment was affirmed on appeal by the Second Circuit.
• Represented Enovate Medical in petitions for Inter Partes Reviews of patents owned by InterMetro before the Patent Trial and Appeal Board. The applicable claims of the patents were invalidated. The judgment was affirmed on appeal by the Federal Circuit.

Activities

• Member, Association of the Bar of the City of the New York
• Member, American Bar Association
• Member, New York Intellectual Property Law Association
• Member, American Intellectual Property Law Association
• Member, Federal Bar Council
• Member, International Trademark Association
• Member, Society of Mining Engineers
• Member, Columbia Law School Alumni Association
• Member, PTAB Bar Association

Recognition

• Repeatedly named to the New York Super Lawyers list
• Recognized in Euromoney’s Guide to the World’s Leading Patent Law Experts
• Recognized by Who’s Who in America

Interests

Norm is a director of two apartment corporations.