Stephen J. Rosenman
Mr. Rosenman has over thirty-five years of experience representing clients in Section 337 investigations before the US International Trade Commission. He has appeared in approximately fifty investigations since the early 1980s, making him a sought after “thought leader” on ITC litigation matters and strategies. Legal 500 has recognized Mr. Rosenman as a top lawyer in ITC patent litigation, while Chambers USA and Chambers Global state that he “provides practical advice and solutions while remaining cost-conscious.”
A seasoned litigator, Mr. Rosenman has also handled jury and bench trials in federal district courts and regularly advises clients on litigation strategies, licenses and other agreements, as well as IP valuation and transactional issues.
Mr. Rosenman has a degree in electrical engineering from MIT and frequently represents clients in the semiconductor and computer hardware industries. His experience includes several years practicing in Silicon Valley, where he helped launch and lead the office of another national firm.
Mr. Rosenman, prior to forming Capital IP Law Group PLLC, represented clients in multiple high-profile ITC investigations, including:
- Diageo North America in Certain Products Having Laminated Packaging, 337-TA-874. This investigation was the first in the ITC’s pilot program for possible early disposition of cases. Following an accelerated trial on the economic prong of domestic industry, the Commission found that the complainant (a non-practicing entity) failed to satisfy the economic prong and terminated the investigation.
- Spansion in Certain Devices Containing Non-Volatile Memory and Products Containing the Same, 337-TA-922, a four patent case brought by Macronix; in Non-Volatile Memory Chips and Products Containing the Same, 337-TA-916, a four patent case against various manufacturers and purchasers of flash memories; and in Non-Volatile Memory Devices and Products Containing Same, 337-TA-909, involving three patents.
- Samsung in Certain Television Sets, Television Receivers, Television Tuners, and Components Thereof, 337-TA-910, a two patent case relating to TV turner products.
- Samsung in Certain Wireless Devices with 3G and/or 4G Capabilities and Components Thereof, 337-TA-868. This investigation involved seven patents concerning 3G and 4G capable devices.
- Motorola in Certain Gaming and Entertainment Consoles and Related Software, 337-TA-752, a five patent case relating to various features of Microsoft’s Xbox products.
Other representative ITC cases in which Mr. Rosenman participated as counsel include: Bulk Welding Wire Containers and Welding Wire, 337-TA-686; Computer Systems, Printers and Scanners, 337-TA-618; Voltage Regulators, 337-TA-564; Personal Computers, Monitors and Components, 337-TA-519; and CMOS Active Pixel Image Sensors, 337-TA-451.
Mr. Rosenman has represented such clients as Atlantic China Welding Consumables, Fujitsu, Gateway, OmniVision Technologies, TEAC, Topcon, and Zilog in ITC matters. In district court proceedings, he has represented numerous companies including Intel, Rockwell, Sega, and Standard Register. In counseling and other matters, he has represented such clients as Cisco Systems.
Mr. Rosenman was previously a partner at Ropes & Gray LLP, where he led the Section 337 ITC practice group.
- Massachusetts Institute of Technology – Bachelor of Science (S.B.) in Electrical Engineering (1977)
- George Washington University – Juris Doctor (1980)
Bar and Court Admissions
- Admitted in DC (1980) and CA (1994)
- Admitted to practice before the US Patent & Trademark Office (1978)
Select Professional Awards
- Named as a leading lawyer for Intellectual Property: Section 337 Proceedings: U.S. International Trade Commission, by Chambers USA (2010-2011, 2015); Chambers Global (2011-2012, 2016); and Legal 500 (2007-2010).
- Listed in Best Lawyers in America (2012-2016); Managing IP - IP Stars (2013-2015); and IAM Patent 1000 - World's Leading Patent Practitioners (2013-2015).
- "AV" rated by Martindale-Hubbell continuously since 1990.
Representative Publications/Speaking Engagements:
- Co-author, “Audio Processing Is An ITC Investigation To Watch,” Law360 (April 7, 2015)
- Speaker, “Third Party Discovery and Subpoena Practice at the ITC: Clarifying the Impact and Rights of Third Parties Brought into an ITC Case,” American Conference Institute’s 7th Expert Forum on ITC Litigation & Enforcement, DC (February 24, 2015)
- Moderator, “The View from the ITC Bench,” A Panel Program with ALJs Bullock, Essex, Lord and Pender, American Conference Institute’s 6th Expert Forum on ITC Litigation & Enforcement, DC (February 25, 2014)
- Co-author, “New Rules at the ITC Target Efficiency, Require Caution,” Bloomberg BNA’s Patent, Trademark & Copyright Journal (June 14, 2013)
- Speaker, “EPROMS and Exclusion Orders: Examining the Evolution of the Injunctive Relief Standard in 337 Investigations,” American Conference Institute’s 5th Expert Forum on ITC Litigation & Enforcement, DC (February 26, 2013)
- Speaker on ITC Practices, “Conference on Patent Litigation and Trend on NPE,” College of Law, National Taiwan University & Industrial Technology Research Institute, Taiwan (October 30-31, 2012)
- Speaker, “U.S. Patent Law Strategies for Patent Engineers,” Seminar by the Taiwan Semiconductor Industry Association, hosted by National Chiao Tong University, Taiwan (July 5-6, 2012)
- Speaker, American Conference Institute’s 3rd Expert Forum on ITC Litigation & Enforcement, NYC (February 2011)
- Speaker, “Coordinating Related Parties & Proceedings,” American Conference Institute’s 2nd Expert Forum on ITC Litigation & Enforcement, NYC (February 25, 2010)
- “The ITC’s Pilot Mediation Program for 337 Investigations: A Primer,” IP Law and Business (October 20, 2009)
- “The Impact of Kyocera v. ITC,” Patent Strategy & Management, Volume 9, No. 8 (January 2009)