An Experienced Intellectual Property Litigator

I am a litigator with over 30 years of experience, who has successfully represented clients in a variety of matters in venues all over the United States at trial and appellate levels.

Peter Toren | Experienced Intellectual Property Lawyer

I have a strong focus on patent, trademark, copyright, and trade secret cases.

I have represented clients in patent litigation involving a variety of technologies including computer software and hardware, light emitting diodes, bio-technology, semiconductor manufacturing and fabrication, optics and medical devices as well as business methods. I have successfully obtained and defended motions for preliminary injunctions and summary judgment motions involving the Patent Act, Copyright Act, Lanham Act, Digital Millennium Copyright Act and Computer Fraud and Abuse Act. In addition to intellectual property litigation I also have experience in computer law including cybersecurity.

Before moving back to the D.C. area I was a a partner in the New York office of Sidley Austin. Before that, I was a federal prosecutor with the Computer Crime and Intellectual Property Section (“CCIPs”) of the Criminal Division of the United States Department of Justice where I worked for over eight year where I also served as Acting Deputy Chief.

I’ve first-chaired several patent and trademark trials and dozens of Markman, preliminary injunction and summary judgment hearings in federal courts throughout the United States.

Other Selected Representations Include:

Federal Prosecutor/Computer Crime & Intellectual Property Section:

While with CCIPs, I oversaw a number of high profile investigations and prosecutions involving criminal copyright including the prosecution of the then largest counterfeit computer software operation in the United States, trafficking in counterfeit goods including for trafficking in counterfeit computer memory modules which resulted in the then largest fine ever assessed for a criminal intellectual property violation, computer hacking and one of the first cases ever tried under the Economic Espionage Act of 1996. I also served as Acting Deputy chief of CCIPs and was a Special Assistant United States Attorney the U.S. Attorney’s Office for the District of Columbia where I represented the United States in dozens of criminal trials. I received a Meritorious Achievement Award in 1994 and Special Achievement Awards in 1992, 1993, 1995, 1996 and 1997.

Education:

Columbia University School of International and Public Affairs, New York, N.Y. M.I.A., 1988

University of San Francisco School of Law, San Francisco, CA

J.D. with honors 1985

Bowdoin College, Brunswick ME

BS in Government/Environmental Science.

Honors:

Adjunct Professor of Law - Hofstra University, Hempstead, N.Y., Cyberlaw.
Chairman, American Intellectual Property Law Association (AIPLA) subcommittee on Cybersecurity.
Member Board of Governors, University of San Francisco School of Law.

Member Advisory Board, BNA’s Internet Law Resource Center.
Member Advisory Board, BNA’s Internet Law & Regulation.
Member Board of Editors, Internet Law & Strategy.
Member Board of Editors - AIPLA Quarterly Law Journal (2006-2009).
Recognized in New York Super Lawyers 2006, 2007, 2008, 2009 and 2010.
Recognized in Washington, D.C. Super Lawyers, 2013, 2016, 2017, 2018.
Profiled as an outstanding alumnus of USF Law School.
Member of the Program Committee for the Sixth Annual Conference on Computers Freedom and Privacy, Department of Electrical Engineering and Computer Science, Massachusetts Institute of Technology, March 27-30, 1996 and the Eighth Annual Conference on Computers Freedom and Privacy, University of Texas School of Law, Austin, Texas, February 1998.

Other Activities:

I am actively involved in pro bono legal matters and have represented an inmate on death row in Alabama. I have also worked with a writer’s advocacy organization in opposing a major settlement involving Google books in New York.

Professional Affiliations:

New York Intellectual Property Law Association

New York Bar Association

American Intellectual Property Law Association;

American Bar Association.

Federal Bar Council.

Federal Circuit Bar Association.

Bar and Court Affiliations:

California, 1986
New York, 1988
District of Columbia, 2015
United States Supreme Court
U.S. Court of Appeals: 2^nd, 3^rd, 5^th, 8^th, 9^th,11^th and Federal Circuits
U.S. District Courts: E.D.N.Y., N.D.N.Y., S.D.N.Y., N.D. Cal., C.D. Cal., S.D Cal. and D.D.C.
U.S. Court of International Trade

• New York Intellectual Property Law Association; New York Bar Association; American Intellectual Property Law Association; American Bar Association; Federal Bar Council; Federal Circuit Bar Association

Selected Publications:

Selected Presentations:

Panelist, A MODEL BEST PRACTICES DIALOGUE: HOW COURTS CAN PRTOECT TRADE SECRETS, The Global Protection of Trade Secrets: Strengthening National Best Practices and Collaborative Approaches, Center for the Protection of Intellectual Property, Antonin Scalia Law School, George Mason University, December 2, 2016.

Speaker, THE DEFEND TRADE SECRETS OF 2016, Webinar, Wolters Kluwer, November 3, 2016.

Speaker, THE DEFEND TRADE SECRETS ACT: WHAT EVERY OUTSIDE AND IN-HOUSE COUNSEL NEEDS, American Intellectual Property Law Association, 2016 Annual, Meeting, Washington, D.C., October 28, 2016.

Speaker, THE DEFEND TRADE SECRETS OF 2016, Webinar, Wolter Kluwer, September 29, 2016.

Speaker, THE LAW OF TRADE SECRETS IN THE UNITED STATES, Virginia Society of CPAs Annual Business Valuation, Fraud, and Litigation Services, Tyson’s Corner Virginia, Oct. 29, 2015.

Speaker, STRUCTURING TRADEMARK LICENSES; NEGOTIATING SCOPE, QUALITY CONTROL, TERRITORY AND OTHER KEY PROVISIONS, Webinar, Strafford Publications, April 14, 2015.

Moderator, THE INTERPLAY OF PATENTS AND TRADE SECRETS; IN THE WAKE OF THE AMERICA INVENTS ACT AND SUPREME COURT DECISIONS, WHY COMPANIES SHOULD LOOK TO TRADE SECRETS LAW, AIPLA – 2014 Trade Secret Law Summit, Santa Clara, California, Dec. 4-5, 2014.

Guest, PROTECTING PRIVACY, Privacy Piracy, KUCI, November 24, 2014, http://www.kuci.org/privacypiracy/

Speaker, POLICING AND PROTECTING COPYRIGHTS ON THE INTERNET; LATEST APPROACHES AND DEVELOPMENTS, Strafford, November 4, 2014.

Speaker, CRIMINAL PROSECUTION OF TRADE SECRETS IN THE UNITED STATES, Bilateral Exchange Program Between the United States and Peoples Republic of China, On Intellectual Property Legislation, Regulation and Judicial Interpretation, The United States Trade and Development Agency, The Office of the U.S. Trade Representative and the U.S. Patent and Trademark Office, September 18, 2014.

Speaker, PATENT LICENSING: AGREEMENTS, CONSIDERATIONS IN JOINT DEVELOPMENT PROJECTS, Webinar, National Constitution Center Conferences, April 16, 2014

Chair, Trade Secret Law Summit, American Intellectual Property Law Association, Washington, D.C. October 22, 2013.

Moderator, A HEAVY HAMMER? THE ITC & TRADE SECRET INVESTIGATIONS, American Intellectual Property Law Association, Washington, D.C. October 22, 2013.

POLICING AND PROTECTING COPYRIGHTS ON THE INTERNET: LATEST APPROACHES AND DEVELOPMENTS (NAVIGATING FAIR USE, INFRINGEMENT CLAIMS, DMCA SAFE HARBOR AND SECONDARY LIABILITY ISSUES), Webinar, Strafford, August 1, 2013.

INSIGHTS INTO THE EEA, Webinar, Certified Patent Valuation Analyst, July 2013.

COMPUTER FRAUD AND ABUSE ACT: LEAST UNDERSTOOD LAW IN THE U.S. OR JUST IN TECHNOLOGY? Webinar, Bloomberg BNA, June 4, 2013.

ANALYSIS OF ADMINISTRATION’S STRATEGY TO MITIGATE THE THEFT OF U.S. TRADE SECRETS, American Intellectual Property Law Association Spring Meeting, Seattle, Washington, May 4, 2013.

THE INTERSECTION OF COMPUTER CRIME AND ELECTRONIC TRANSACTIONS, University of California, Boalt Hall, May 1, 2013.

THE THEFT OF TRADE SECRETS CLARIFICATION ACT, Law Seminars International, January 25, 2013.

INTELLECTUAL PROPERTY 2012 YEARBOOK: EMERGING TECHNOLOGY, NEW CASE LAW & REGULATORY HIGHLIGHTS, LexisNexis Emerging Issues Webinar Series, November 7, 2012.

CURRENT TRADE SECRET LITIGATION ISSUES, American Intellectual Property Law Association’s 2012 Trade Secret Law Summit, October 23, 2012, Washington, D.C.

TRADE SECRET FUNDAMENTALS: WHAT YOU CAN AND CAN’T DO, DC Bar Continuing Legal Education Program, September 11, 2012, Washington, D.C.

“TRADE SECRET FUNDAMENTALS: WHAT YOU CAN AND CAN’T DO,” DC Bar Continuing Legal Education Program, September 11, 2012, Washington, D.C.

“THE INTERNATIONALIZATION OF TRADE SECRET DISPUTES: BIG CASES, BIG VERDICTS AND BIG CHALLENGES,” AIPLA, 2012 Spring Meeting, May 10-12, 2012, Austin, Texas.

“ETHICS AND SOCIAL MEDIA,” Webinar, American Lawyer Media, June 22, 2011.

“IP AND BANKRUPTCY LAW: STRANGE BEDFELLOWS,” Webinar, American Lawyer Media, January 28, 2010.

“INTELLECTUAL PROPERTY ISSUES FOR FINANCIALLY TROUBLED COMPANIES,” 2009 Virginia Information Technology Legal Institute, Virginal Law Foundation, September 25, 2009.

“SECURITY INTERESTS & ASSIGNMENTS OF TRADEMARKS,” 2009 Spring Half-Day Trademark & Copyright CLE Program and Luncheon, New York Intellectual Property Law Association, June 3, 2009.

“THEFT OF TRADE SECRETS & THE FEDERAL COMPUTER FRAUD AND ABUSE ACT (CFAA),” New York Intellectual Property Law Association, December 12, 2007.

“EFFECT OF MARKMAN RULINGS IN SUBSEQUENT PROCEEDINGS,” How to Prepare & Conduct MarkmanHearings 2007, Practicing Law Institute, New York City, July 11, 2007.

“TRADE SECRETS & CONFIDENTIAL BUSINESS INFORMATION,” ABA Inaugural National Institute on Computing and the Law: From Steps to Strides into the New Age,” San Francisco, CA June 25-26, 2007.

“U.S. STANDARDS AND INTERNATIONAL LEGAL STANDARDS FOR INFORMATION SECURITY,” 2006 Privacy Academy, International Association of Privacy Professionals, Toronto, Canada, October 19, 2006.

“ANATOMY OF A DATA BREACH,” Global Privacy and Information Law Conference, Information Law and Privacy Group, Sidley Austin LLP, San Francisco, California, September 19, 2006.

“E-MAIL MONITORING AND ARCHIVING AND RECORDS RETENTION: HOW TO AVOID STORING UP TROUBLE, Summit on Compliance & IT for Investment Advisors,” Financial Technology Forum, New York, New York, July 12, 2006.

“MEANING OF THE AMENDMENTS TO FEDERAL RULES OF CIVIL PROCEDURE GOVERNING DISCOVERY OF ELECTRONICALLY STORED INFORMATION,” E-Discovery “A-to-Z” Workshop, Glaser Legalworks Seminar, New York, New York, May 10, 2006.

“IP CRIMES: WHEN CIVIL INFRINGEMENT TURNS CRIMINAL,” 30^thAnnual Intellectual Property Institute, The State Bar of California, Napa Valley, November 5, 2005.

“IT’S NOT AS COMPLICATED AS YOU THINK: LEGAL GRAY AREAS IN THE COLLECTION OF COMPETITIVE INTELLIGENCE,” Intelligence for Business Strategy Conference, Institute for International Research, Boston, Massachusetts, October 26, 2005.

“PROTECTING INFORMATION BY PLANNING, PREVENTING, PREVENTION AND CONTRACT,” Global Data Protection and Privacy Conference, May 17, 2005, New York, N.Y.

“THE LATEST AND GREATEST: ELECTRONIC DISCOVERY LEGAL DEVELOPMENTS UPDATE,” Glasser LegalWorks, 8^thAnnual Electronic Discovery and Records Retention Conference, New York, N.Y., November 9, 2004.

“COMPETITIVE INTELLIGENCE FOR FINANCIAL SERVICES,” Institute for International Research, New York, N.Y. September 10, 2004.

“CURRENT DEVELOPMENTS IN COMPUTER AND INFORMATION SECURITY AND ECONOMIC ESPIONAGE,” New York, N.Y. December 10, 2003.

“THE USE OF REASONABLE MEASURES TO PROTECT TRADE SECRETS,” FindLaw Corporate Counsel Center, IP Strategies 2003, Chicago, Illinois, October 21, 2003.

Panelist, “IN THE WAKE OF ZUBULAKE: NEW JUDICIAL APPROACHES AND THEIR IMPLICATIONS FOR LITIGANTS AND THEIR LAWYERS,” Glasser Legal Works, 7^thAnnual Electronic Discovery and Records Retention Conference, New York, N.Y. October 9, 2003.

“USE OF EXPERTS IN PATENT LITIGATION,” Practising Law Institute conference on Preparing Patent Legal Opinions 2003, New York, N.Y. September 17, 2003.

Panelist, “ELECTRONIC DISCOVERY: ONCE THE CASE HAS BEGUN LITIGATION: TACTICS AND STRATEGIES,” Glasser Legal Works, 6^thAnnual Electronic Discovery and Record Management Conference, New York, N.Y. October 25, 2002.

“ECONOMIC ESPIONAGE AND THEFT OF TRADE SECRETS,” National Intellectual Property Law Institute (NIPLI), Washington, D.C. June 17-18, 2002.

“PRIVACY, INFORMATION SECURITY AND CYBERCRIMES,” General Electric, Fairfield, CT, May 21, 2002.

“AUTHENTICATION AND CHAIN OF CUSTODY ISSUES IN ELECTRONIC DISCOVERY,” BNA Litigation Forum, Electronic Discovery & Document Retention, New York, N.Y., May 19-20, 2002.

“THE REQUEST AND THE RESPONSE: CURRENT STRATEGIES IN ELECTRONIC DISCOVERY,” Fifth Annual Electronic Discovery and Records Management, Glasser Legal Works, New York, N.Y., December 6, 2001.

“COMPUTER CRIMES,” Computer and Technology Law Conference, Berkeley Center for Law & Technology and the University of Texas School of Law, San Francisco, CA, June 28 & 29, 2001.

“TRADE SECRET PROTECTION AND ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS,” The National Intellectual Property Law Institute (NIPLI), Washington, D.C., March 28-29, 2001.

“PATENTS v. TRADE SECRETS,” Patent Strategy & Management: Practical Methods for Converting Knowledge Into Gold, Law Journal Seminars, Tysons Corner, Virginia, November 3, 2000.

“REVIEWING THE INTRICACIES OF COMPUTER BASED FEDERAL CRIMES AND HOW THEY IMPACT MONEY LAUNDERING,” Anti-Money Laundering 2000, ICM, New York, N.Y. May 18, 2000.

“SEEKING FORMAL DISCOVERY OF ELECTRONIC INFORMATION: PITFALLS AND OPPORTUNITIES,” Third Annual Conference ELECTRONIC DISCOVERY, Glasser Legal Works, New York, N.Y. March 31, 2000.

“EXAMINING THE REGULATORY SCHEME FOR THE HIGH TECH INDUSTRY AND THE USE OF CI,” ICM Conference Division, San Diego, California, January 2000.

“CYBERCRIME,” Cyberspace Law School, Glasser Legal Works, New York, N.Y., December 3, 1999.

“THE ESSENTIALS OF COMPUTER DISCOVERY AND ELECTRONIC DATA RETENTION RISK CONTROL.” Glasser Legal Works, San Francisco, California, March 1999.

“TRADE SECRETS, INFORMATION SECURITY AND INDUSTRIAL ESPIONAGE,” Insight Information, New York, February 1999.

“REPRESENTING HIGH TECHNOLOGY COMPANIES,” ABA National Institute, November 1998.

“THE ECONOMIC ESPIONAGE ACT OF 1996,” Dupont’s 12^thAnnual Conference on Intellectual Property, Wilmington, Delaware, October 1998.

“TRADE SECRETS CONTROVERSIES,” Glasser Legal Works, San Francisco, California, June 1998.

“AN OVERVIEW OF THE EEA – A CASE RETROSPECTIVE WITH PROSECUTIVE FACTORS,” Pharmaceutical Marketing Research Group, Miami Beach, Florida, April 1999.

“CRYPTO AND PRIVACY AT THE FRINGES OF SOCIETY,” Eighth Annual Conference on Computers Freedom and Privacy. Hosted by the University of Texas School of Law, Austin, Texas, February 1998.

“PROTECTING CONFIDENTIAL CORPORATE INFORMATION,” Council of Chief Legal Officers, Laguna Niguel, California, January 1998.

“ENFORCING THE NEW FEDERAL CRIMINAL TRADE SECRETS LAW.” Intellectual Property Owners Annual Meeting, Washington, D.C., September 1997.

“UNDERSTANDING THE ECONOMIC ESPIONAGE ACT OF 1996,” ICM Conference on Competitive Intelligence, Chicago, Illinois, July 1997.

“THE POST-COLD WAR REALITY: FORMER NATIONAL SECURITY ISSUES BECOME PRIVATE BUSINESS CONCERNS,” ABA Section of International Law and Practice, Washington, D.C., May 1997.

“THE ELECTRONIC FUTURE OF CASH,” The American University Law Review and the Washington College of Law, Washington, D.C., April 1997.

“THE FEDERAL PROSECUTION OF VIOLATIONS OF INTELLECTUAL PROPERTY RIGHTS, COPYRIGHTS, TRADEMARKS AND TRADE SECRETS,” Computer Crimes and Electronic Evidence, Office of Legal Education, Executive Office for United States Attorneys, Department of Justice, Cape Canaveral, Florida, April 1997.

“CYPHERPUNKS AND CYBERCOPS: RULES FOR CRUISING THE INFORMATION SUPERHIGHWAY,” The Seventh Conference on Computers, Freedom & Privacy, San Francisco, CA, March 1997.

“THE ECONOMIC ESPIONAGE ACT OF 1996,” Society of Competitive Intelligence Professionals, Washington, D.C., February 1997.

“THE ECONOMIC ESPIONAGE ACT OF 1996,” American Intellectual Property Law Association, Mid-Winter Institute, Marco Island, Florida, January 1997

“INTERNET RISKS AND OPPORTUNITIES FROM LAW A ENFORCEMENT PERSPECTIVE,” United States Treasury Department, Office of Thrift Supervision Northeast Region, New York, New York

“The ECONOMIC ESPIONAGE ACT OF 1996,” Intellectual Property Law Association of Chicago, Chicago, Illinois, December 1996.

“EXECUTING COMPUTER SEARCH WARRANTS,” Complex Prosecutions Seminar, Office of Legal Education, Executive Office for United States Attorneys, Department of Justice, Milwaukee, Wisconsin, November 1996.

“DIGITAL MONEY AND PUBLIC POLICY: LAW ENFORCEMENT ISSUES” The Institute for Technology Assessment, Washington, D.C. September 1996

“GATHERING EVIDENCE OF COMPUTER INTRUSIONS” University of California at San Diego Supercomputer Center, San Diego, California, July 1996

“THE FIRST AMENDMENT AND CRIMINAL LAW IN CYBERSPACE,” University of Texas 2nd Annual Computer Law Conference: Communicating and Conducting Business On-Line, Austin, Texas, May 1996

“FEDERAL PROSECUTION OF COMPUTER CRIME” Computers, Freedom and Privacy Conference, Cambridge, Massachusetts, March 1996.

“FEDERAL PROSECUTION OF TRADE SECRET THEFTS” Protecting Confidential Business Information Seminar, National Law Journal, New York, New York, April 1996.

“CRIMINAL COPYRIGHT ENFORCEMENT” St. John’s University, Law School, Queens, New York, April 1996.

“INFORMATION SECURITY IN THE GLOBAL ELECTRONIC ENVIRONMENT,” Trade Secret Law Institute, Washington, D.C., April 1994.