For more than 50 years, Mr. Graff has mediated, arbitrated and acted as lead counsel in numerous arbitrations, mediations, lawsuits, ITC investigations and appeals involving patents, copyrights, trade secrets, software and technology licensing, trademarks and related antitrust and commercial issues, including semiconductor design and manufacturing, software development, entertainment, pharmaceuticals and dietary supplements, medical and dental devices, optical lenses, telecommunications, fiber optics, automotive components, apparel, travel services, internet services, and investment banking. He has also assisted parties in the negotiation of intellectual property and technology licenses and acquisitions in a wide variety of fields
Mr. Graff serves on the national mediation panel for the Federal Circuit Court of Appeals, National Panel of Neutrals of the American Arbitration Association, the Technology Panel of Neutrals, Entertainment Panel, Health Care Panel and International Patent Commission of the International Institute for Conflict Prevention and Resolution (CPR), and the Tech List of the Silicon Valley Arbitration and Mediation Center. He is a fellow of the Chartered Institute of Arbitrators, a charter member of the New York Academy of Mediators and Arbitrators and a member of the National Association of Distinguished Neutrals. Mr. Graff has spoken at numerous seminars and symposia, including programs at Yale Law School, Fordham Law School, the Gould USC School of Law, the ABA, the Practising Law Institute, the Intellectual Property Owners Association and the Association For Conflict Resolution Greater New York Chapter (“ACRGNY”).
Mr. Graff represented the American Bar Association as advisor to the drafting committee of the Uniform Computer Information Transactions Act (UCITA), which establishes a nationwide legislative framework for licensing of software and electronic databases. He has also served as vice chair of the Amicus Committee of the IPO, as a member of the Council of the ABA section on science and technology and as chairman of the State Legislation Committee of the Association of the Bar of the City of New York. He has been recognized as a leading U.S. intellectual property attorney in several publications, including The Legal 500, SuperLawyers, and Who’s Who in American Law.
Mr. Graff represented the Intellectual Property Owners Association (IPO) as an amicus curiae in several appeals before the United States Supreme Court and the Federal Circuit Court of Appeals involving major issues of intellectual property law, including the Supreme Court briefs in Bilski v. Kappos, Costco Wholesale Corp. v. Omega, S.A., Stanford v. Roche and Kirtsaeng v, Wiley.
Mr. Graff served as a partner of Paul, Hastings, Janofsky and Walker, LLP from 1992 to 2008 and Milgrim Thomajan and Jacobs, PC from 1975 to 1992. He graduated, magna cum laude, from Columbia University School of Law in 1967, where he was named as a Harlan Fiske Scholar for three consecutive years and served as an editor of the Columbia Law Review. Following law school, he served for three years as law clerk to Chief Judge Stanley H. Fuld of the New York Court of Appeals. Before commencing his legal career, Mr. Graff served as an officer in the United States Navy, where he attained the rank of Lieutenant Commander.
Although the details of Mr. Graff's work as an arbitrator and mediator are generally confidential, here is a brief description of some recent matters in which he was involved as a neutral:
Mediations. Pre-litigation, pre-trial and pre-appeal mediations of patent infringement, copyright infringement, and contractual disputes involving pharmaceuticals, neutraceuticals, medical and dental devices, semiconductor manufacturing, high resolution digital scanning of micro markings, motion picture copy protection technology, optical character recognition, banking operations management software, electrical components, chemical manufacturing technology, and digital imagery.
Arbitrations. Service as sole arbitrator, tribunal chair and "wing" arbitrator in AAA, ICDR, CPR, ICC, ad hoc and mock arbitrations, involving disputes arising out of a wide variety of IP and technology related disputes, including
a licensor's claim for reimbursement for legal expenses incurred on behalf of licensee under an exclusive patent license for a biological testing product.
a claim for performance royalties due for broadcasting of musical compositions.
alleged failure to perform under a software development and maintenance agreement.
construction of an option in a patent license for pharmaceutical license to extend the license to additional patents.
alleged misappropriation of proprietary oil and gas extraction technology
alleged misappropriation of proprietary information and breach of field of use restrictions in cross-license of process technology for manufacturing high voltage electrolytic components.
scope of sublicensing rights granted under patent cross-license for optical lenses.
alleged failure of exclusive licensee to diligently develop and test a new drug under an exclusive patent license for a pharmaceutical product.
Publicly known matters handled by Mr. Graff include the following:
Align Technologies v. OrthoClear: Represented the developer of the Invisalign® system for treatment of malocclusion in an ITC investigation involving 11 patents and trade secret misappropriation claims.
Wood v. Cendant: Defended Cendant in bench trial involving the alleged infringement of a copyright for software to predict the long-term staffing requirement for call centers used by Avis and other Cendant divisions. Case resulted in a dismissal of all claims on the merits.
TSMC v. SMIC: Represented China’s largest manufacturer of semiconductors in defending a series of cases in the International Trade Commission and state and federal courts involving claims of infringement of 14 patents and alleged theft of trade secrets.
GlaxoSmithkline v. Geneva Pharmaceuticals: Represented GlaxoSmithkline in proceedings in the International Trade Commission and courts involving the alleged use by Novartis subsidiaries of a stolen proprietary production strain of bacteria to produce a generic version of GSK’s Augmentin® antibiotic.
Furakawa – Lucent: Represented Furukawa Electric Company in the intellectual property aspects of its acquisition of the fiber optic manufacturing business of Lucent, a $2.75 billion transaction involving more than 600 patents, as well as copyrights, trademarks, unpatented technology and hundreds of license agreements.
NEC v. Hyundai: Represented NEC prosecuting and defending claims of infringement of 21 semiconductor memory patents in the United States District Court in the Eastern District of Virginia.
SmithKline Beecham v. Colgate-Palmolive: Successfully defended Colgate-Palmolive in a patent infringement action brought by SmithKline Beecham in the Eastern District of Pennsylvania.
Philip Morris v. Allen: Represented Philip Morris in successfully prosecuting a “gray goods” claim under the Lanham Act against the unauthorized sale of imported Marlboro® cigarettes.
Otis Elevator Maintenance Tool Cases: Represented Otis Elevator in successful claims against several competing elevator companies, including U.S. Elevator, Schindler, Dover, Montgomery, General Elevator and Millar, to prevent them from using Otis trade secrets in computerized tools for the maintenance and service of Otis microprocessor based elevator systems.
Honeywell v. Minolta: Successfully defended Minolta Camera Co. in a four and one-half month jury trial in the New Jersey federal court for alleged misappropriation of proprietary confidential autofocus camera technology.
Unix System Laboratory v. Regents of the University of California: Represented the copyright owner of the UNIX® operating system software in infringement claims against the University of California. The settlement of that case let to the issuance of the University’s BSD 4.4 software release which forms the basis for LINUX® and other open source operating systems.
Roth v. Pritikin. Successfully defended the author of a bestselling work on diet and health in a trial for copyright infringement and appeal to the Second Circuit Court of Appeals which resolved novel issues concerning the retroactivity of the Copyright Act of 1978.
Bitmanagement v. United States. Testified as an expert witness on damages in a copyright infringement case brought by the developer of a computer application that was installed without authorization by the U.S. Navy in several hundred thousand computers.