Milton Springut

Milton Springut

Partner

Contact Me

T(212) 554-7871

F(212) 377-6039

Milton specializes in intellectual property litigation and counseling. He litigates and prosecutes patents in the scientific disciplines, including electrical and electronic systems, computer hardware and software, and business systems, drawing on his experience at Bell Telephone Laboratories, where he developed computer hardware and software systems. He also is one of the country’s few experts in fashion and luxury goods IP.

During Milton’s professional experience he has been counsel in numerous patent, trade secret, and computer law litigations. His experience encompasses a broad range of technologies including computer processors and related hardware and software, mobile payments, electronic commerce, telephony, security systems, video systems, medical devices, and financial services systems. Milton’s clients in this area include both Fortune 500 companies and start-ups.

Over 25 years of practice, Milton has earned a reputation as one of the country’s most skilled litigators of trademark, counterfeiting, and gray goods cases, representing the world’s top luxury brands and international fashion houses. He has served as the full-service outside advisor to Richemont (Cartier, Montblanc, Van Cleef & Arpels, Chloe), Gucci, Guess?, and others, in their patent, design patent, copyright, trademark, and trade dress strategies, and in defending their premium IP rights through litigation. In doing so, Milton successfully implemented procedures to combat the proliferation of counterfeit and gray goods, directing both investigations and legal proceedings.

Milton has been selected as a Super Lawyer in the field of intellectual property litigation and rated by Martindale-Hubbell as an AV Preeminent® lawyer, its highest rating. He holds a B.S., Electrical Engineering from the City College of New York, an M.S., Electrical Engineering and Computer Science from Columbia University and a J.D. from Seton Hall University. He is also admitted to practice before the U.S. Patent and Trademark Office, is a member of the Association of the Bar of the City of New York, and the New York Patent, Trademark and Copyright Law Association, and frequently lectures on intellectual property matters before professional associations including the Alliance for Gray Market and Counterfeit Abatement (AGMA), Union de Fabricants (UNIFAB), the American Bankruptcy Institute (CoChair IP Asset Presentation Panel), the International Anti-Counterfeiting Coalition (Co-Chair – Attorney/ Investigator Task Force), the American Intellectual Property Law Association, the Alliance for Gray Market and Counterfeit Abatement, the World Trade Institute, the Software Publishers Association (Chair – Software Piracy Panel) and the United States Customs Service.

Articles [View All]

Prior to Joining Moses & Singer LLP

New York Law Journal Articles

Representative Matters

Prior to Joining Moses & Singer LLP

Patent Litigation

  • Leviton Manufacturing Co. v. Greenberg Traurig, in a patent malpractice lawsuit against one of the largest U.S. law firms, working with malpractice counsel, Milton obtained a highly favorable and sizable settlement. Persuasively jumping the multitude of hurdles for proving a “case-within-a-case,” against an aggressive defense by another leading trial firm, on complex allegations of misconduct over an extended period of time relating to both patent litigation and prosecution laid the foundation for settlement;
  • Several internet media clients sued for infringement by Mobile Transformation LLC, a patent troll, relating to infringing a patented system and method for displaying advertisements along with video, photo and text content. The plaintiff had previously brought some twenty suits against various media companies, many of which settled for undisclosed sums. Milton directed the research and analysis of the prior art, and presented arguments that the patent was not valid, resulting in a dismissal and settlement where the client did not pay the troll a dime;
  • E. I. DuPont de Nemours & Co. v. Millenium Chemicals Inc., negotiated a favorable settlement for defendant in patent litigation involving titanium oxide formulations;
  • General Electric Co. v. Prince, negotiated a favorable settlement for the inventor declaratory judgment-defendant in patent litigation involving MRI technology;
  • Honeywell International Inc. v. Electrolux Home Products, Inc., negotiated a favorable settlement for the plaintiff-patent owner in litigation regarding turbidity sensor technology used in home appliances;
  • Honeywell International Inc. v. Gollomp, negotiated a favorable settlement for the plaintiff-patent owner in litigation regarding ownership of intellectual property rights in air filter technology;
  • In re Relafen; In re Ciprofloxacin; In re Augmentin; In re K-Dur; In re Paxil; In re Wellbutrin; In re Tamoxifin; In re Plavix; In re Tricor, where in multiple antitrust litigations, as patent counsel reviewed and analyzed the work of prior patent prosecution attorneys and patent litigators in the context of allegations of fraud on the Patent Office and sham litigation;
  • Vetrerie Bruni SpA v. Shonfeld’s (USA), Inc., where in a case involving a design patent for a decorative bottle, the patent marking statute was used to force a substantial cut in plaintiff’s settlement demand, resulting in a much more favorable settlement for our client;
  • Datastrip International Ltd. v. Symbol Technologies; Datastrip International Ltd. v. Intacta Technologies, where the plaintiff-patent owner was represented in patent litigation involving two-dimensional bar-code technology.

Fashion & Luxury Goods

  • Chloe v. Queen Bee, in which the Second Circuit made a ground-breaking decision on internet personal jurisdiction, allowing trademark owners to bring suit in a more convenient location, and not only where a counterfeiter resides;
  • Guess? v. Gold Center Jewelry, the first U.S. case to impose statutory damages for counterfeit goods under the Anti-Counterfeiting Act of 1996;
  • Gucci America v. Hall & Associates, which established that Internet Service Providers are not immune from secondary liability for trademark infringement for infringing content posted on internet websites;
  • Cartier v. Four Star Jewelry Creations, where Milton established an effective means and method for plaintiffs to secure valid trade dress rights;
  • Act II Jewelry, LLC v. Zhu, in which a $1 Million judgment was obtained and collected against an on-line counterfeiting operation. The jury found the principal’s husband to be her partner in the counterfeiting business, rendering him liable for treble damages;
  • Van Cleef & Arpels v. Heidi Klum GmbH, where a “family of trade dress” theory in the client’s line of highly successful jewelry designs was asserted against a similar line marketed by the famous fashion designer Heidi Klum, resulting in a highly favorable settlement;
  • McAfee, Inc. v. Cao, a counterfeiting case, in which a TRO was obtained against the New York City Police Department enjoining the return of funds seized in a raid after the criminal fine was paid by the counterfeiter. The counterfeiter soon settled the case, with the bulk of the frozen funds paid out to McAfee in settlement;
  • Gucci America, Inc. v. Costco, Inc., where after several incidents of infringement by the national warehouse chain, a settlement was negotiated that included entry of a permanent injunction barring sales of any goods, genuine or counterfeit, bearing the GUCCI mark for fifteen (15) years.
Biography

Milton specializes in intellectual property litigation and counseling. He litigates and prosecutes patents in the scientific disciplines, including electrical and electronic systems, computer hardware and software, and business systems, drawing on his experience at Bell Telephone Laboratories, where he developed computer hardware and software systems. He also is one of the country’s few experts in fashion and luxury goods IP.

During Milton’s professional experience he has been counsel in numerous patent, trade secret, and computer law litigations. His experience encompasses a broad range of technologies including computer processors and related hardware and software, mobile payments, electronic commerce, telephony, security systems, video systems, medical devices, and financial services systems. Milton’s clients in this area include both Fortune 500 companies and start-ups.

Over 25 years of practice, Milton has earned a reputation as one of the country’s most skilled litigators of trademark, counterfeiting, and gray goods cases, representing the world’s top luxury brands and international fashion houses. He has served as the full-service outside advisor to Richemont (Cartier, Montblanc, Van Cleef & Arpels, Chloe), Gucci, Guess?, and others, in their patent, design patent, copyright, trademark, and trade dress strategies, and in defending their premium IP rights through litigation. In doing so, Milton successfully implemented procedures to combat the proliferation of counterfeit and gray goods, directing both investigations and legal proceedings.

Milton has been selected as a Super Lawyer in the field of intellectual property litigation and rated by Martindale-Hubbell as an AV Preeminent® lawyer, its highest rating. He holds a B.S., Electrical Engineering from the City College of New York, an M.S., Electrical Engineering and Computer Science from Columbia University and a J.D. from Seton Hall University. He is also admitted to practice before the U.S. Patent and Trademark Office, is a member of the Association of the Bar of the City of New York, and the New York Patent, Trademark and Copyright Law Association, and frequently lectures on intellectual property matters before professional associations including the Alliance for Gray Market and Counterfeit Abatement (AGMA), Union de Fabricants (UNIFAB), the American Bankruptcy Institute (CoChair IP Asset Presentation Panel), the International Anti-Counterfeiting Coalition (Co-Chair – Attorney/ Investigator Task Force), the American Intellectual Property Law Association, the Alliance for Gray Market and Counterfeit Abatement, the World Trade Institute, the Software Publishers Association (Chair – Software Piracy Panel) and the United States Customs Service.

Articles [View All]

Prior to Joining Moses & Singer LLP

New York Law Journal Articles

Education
  • Seton Hall University School of Law (J.D.)
  • Columbia University (M.S. Electrical Engineering and Computer Science)
  • The City College of New York of the City University of New York (B.S.)
Bar/Court Admissions
  • New York
  • New Jersey
Representative Matters

Prior to Joining Moses & Singer LLP

Patent Litigation

  • Leviton Manufacturing Co. v. Greenberg Traurig, in a patent malpractice lawsuit against one of the largest U.S. law firms, working with malpractice counsel, Milton obtained a highly favorable and sizable settlement. Persuasively jumping the multitude of hurdles for proving a “case-within-a-case,” against an aggressive defense by another leading trial firm, on complex allegations of misconduct over an extended period of time relating to both patent litigation and prosecution laid the foundation for settlement;
  • Several internet media clients sued for infringement by Mobile Transformation LLC, a patent troll, relating to infringing a patented system and method for displaying advertisements along with video, photo and text content. The plaintiff had previously brought some twenty suits against various media companies, many of which settled for undisclosed sums. Milton directed the research and analysis of the prior art, and presented arguments that the patent was not valid, resulting in a dismissal and settlement where the client did not pay the troll a dime;
  • E. I. DuPont de Nemours & Co. v. Millenium Chemicals Inc., negotiated a favorable settlement for defendant in patent litigation involving titanium oxide formulations;
  • General Electric Co. v. Prince, negotiated a favorable settlement for the inventor declaratory judgment-defendant in patent litigation involving MRI technology;
  • Honeywell International Inc. v. Electrolux Home Products, Inc., negotiated a favorable settlement for the plaintiff-patent owner in litigation regarding turbidity sensor technology used in home appliances;
  • Honeywell International Inc. v. Gollomp, negotiated a favorable settlement for the plaintiff-patent owner in litigation regarding ownership of intellectual property rights in air filter technology;
  • In re Relafen; In re Ciprofloxacin; In re Augmentin; In re K-Dur; In re Paxil; In re Wellbutrin; In re Tamoxifin; In re Plavix; In re Tricor, where in multiple antitrust litigations, as patent counsel reviewed and analyzed the work of prior patent prosecution attorneys and patent litigators in the context of allegations of fraud on the Patent Office and sham litigation;
  • Vetrerie Bruni SpA v. Shonfeld’s (USA), Inc., where in a case involving a design patent for a decorative bottle, the patent marking statute was used to force a substantial cut in plaintiff’s settlement demand, resulting in a much more favorable settlement for our client;
  • Datastrip International Ltd. v. Symbol Technologies; Datastrip International Ltd. v. Intacta Technologies, where the plaintiff-patent owner was represented in patent litigation involving two-dimensional bar-code technology.

Fashion & Luxury Goods

  • Chloe v. Queen Bee, in which the Second Circuit made a ground-breaking decision on internet personal jurisdiction, allowing trademark owners to bring suit in a more convenient location, and not only where a counterfeiter resides;
  • Guess? v. Gold Center Jewelry, the first U.S. case to impose statutory damages for counterfeit goods under the Anti-Counterfeiting Act of 1996;
  • Gucci America v. Hall & Associates, which established that Internet Service Providers are not immune from secondary liability for trademark infringement for infringing content posted on internet websites;
  • Cartier v. Four Star Jewelry Creations, where Milton established an effective means and method for plaintiffs to secure valid trade dress rights;
  • Act II Jewelry, LLC v. Zhu, in which a $1 Million judgment was obtained and collected against an on-line counterfeiting operation. The jury found the principal’s husband to be her partner in the counterfeiting business, rendering him liable for treble damages;
  • Van Cleef & Arpels v. Heidi Klum GmbH, where a “family of trade dress” theory in the client’s line of highly successful jewelry designs was asserted against a similar line marketed by the famous fashion designer Heidi Klum, resulting in a highly favorable settlement;
  • McAfee, Inc. v. Cao, a counterfeiting case, in which a TRO was obtained against the New York City Police Department enjoining the return of funds seized in a raid after the criminal fine was paid by the counterfeiter. The counterfeiter soon settled the case, with the bulk of the frozen funds paid out to McAfee in settlement;
  • Gucci America, Inc. v. Costco, Inc., where after several incidents of infringement by the national warehouse chain, a settlement was negotiated that included entry of a permanent injunction barring sales of any goods, genuine or counterfeit, bearing the GUCCI mark for fifteen (15) years.