John R. Nelson, Of Counsel, focuses on complex intellectual property litigation matters. Mr. Nelson was a trial attorney with the United States Department of Justice, Antitrust Division, Patent Section, in 1975-77.
IP Asset Management
1978, New Jersey
1973, United States Patent & Trademark Office
J.D., cum laude, University of Connecticut Law School, 1974
B.S., Engineering Sciences, with highest distinction, Purdue University, 1970
Floyd Rose, represented by Gregg A. Paradise and Aaron S. Eckenthal, recently prevailed on his Uniform Domain Name Resolution Policy Complaint against Adam Reiver. The complaint sought a transfer of the Domain Name floydupgrades.com because use of that Domain Name violated Floyd Rose’s trademarks and was being used in bad faith. Floyd Rose is the inventor of the locking tremolo used on electric guitars. Floyd Rose owns several United States Trademarks, including FLOYD ROSE and THE FLOYD (U.S. Reg. Nos. 1,292,157; 1,925,371; 2,606,770), which are used in connection with electric guitar accessories, stringed instruments, and include tuners, tremolos, guitar stands, picks, etc. Adam Reiver used the floydupgrades.com Domain Name to deliberately refer to the Floyd Rose trademarks and offers products, including instructional videos on how a musician can modify or “upgrade” their FLOYD ROSE products such as the world-famous tremolo bridge. In his complaint, Floyd Rose contended that the disputed Domain Name (floydupgrades.com) is identical or confusingly similar to its trademarks. In addition, the complaint alleged that Adam Reiver used the trademarks for illegal solicitation and to gain an illicit profit based on the likelihood of confusion with Complainant’s trademark, which creates the likelihood that customers will believe that Floyd Rose is the owner and operator of the floydupgrades.com Domain Name. The three member Administrative Panel agreed with Floyd Rose. In the opinion, the panel held that Adam Reiver does not have a right to use the Floyd Rose trademarks, either as nominative fair use or otherwise. Any nominative fair use by Adam Reiver was negated by the fact that Reiver used the floydupgrades.com Domain Name for a website that not only sells goods and services related to Floyd Rose branded goods, but also products that directly compete with those offered by Floyd Rose. In addition, the panel held that Adam Reiver’s use of the floydupgrades.com Domain Name reflects bad faith in engendering at least initial confusion for commercial gain. Thus, based on the finding, the panel ordered that the Disputed Domain Name floydupgrades.com be transferred to Floyd Rose. Lerner, David was also previously successful in getting Facebook to terminate Adam Reiver’s “The Original Floyd Rose Upgrades” web page.
SYNTHES (U.S.A.) v. STRYKER CORP., Civil Action No. 06-5681-AB (E.D. Pa. Mar. 19, 2009). In this two-year-old patent infringement suit brought by Synthes (U.S.A.) against our client Stryker Corp. and its subsidiary, Howmedica Osteonics Corp., the district court granted our motion to stay further proceedings pending reexamination of Synthes' patent-in-suit, directed to a threaded insert for a bone plate screw hole. Reexamination of Synthes' patent by the United States Patent and Trademark Office was commenced in response to a request for reexamination filed on behalf of Howmedica Osteonics by our firm. In March 2008, the district court had issued a claim construction order broadly construing the patent's claims, which resulted in the request for reexamination. The stay was granted by the district court in the face of arguments by Synthes that the stay motion was a "transparent" attempt to unnecessarily delay the case.
In a trial in late 2006, we successfully tried the issues of validity and infringement before a jury in Newark, New Jersey in Stryker v. Synthes. The Stryker patent found infringed by the jury relates to the setting fractures with an external fixation system somewhat reminiscent of an erector set. After fighting off Synthes' post trial motions before the judge on, among other things, the validity of the asserted patent, we were faced with yet another validity challenge, this time the result of Synthes' petition for reexamination before the U.S. Patent and Trademark Office. With the depth of our litigation and prosecution experience, we presented evidence supporting our longstanding and judge and jury-tested position that the asserted patent was valid. In June 2008, the U.S. Patent and Trademark Office rendered a decision that Synthes' attack was not persuasive and that the patent claims held infringed would stand as previously issued and litigated.