Nels Lippert is a partner in the firm's Intellectual Property Department, and a member of the Intellectual Property Litigation Practice Group. He joined the firm in 2000.
Practice
Mr. Lippert's practice concentrates in trademark and patent counseling and litigation. He administers trademarks and registrations around the world for leading consumer product manufacturers, pharmaceutical companies and service companies.
A registered US patent attorney, Mr. Lippert also has particular experience in trials, interferences, counseling, licensing and prosecution of chemical, biotechnological and pharmaceutical patents. Mr. Lippert successfully represented the Japanese Foundation For Cancer Research and other Japanese interests against Biogen, Inc., and Yeda Research and Development Co. Ltd. in a lengthy and highly publicized US patent interference proceeding involving the patent rights to the DNA sequence coding for Interferon-beta. Fiers v. Revel, et al. v. Sugano, et al., 984 F2d 1164 (Fed. Cir. 1993).
Recent Highlights
- Obtained a favorable claim construction ruling in a multi-patent and multi-party action in the United States District Court for the Southern District of New York.
- Obtained a TRO, preliminary injunction and order on summary judgment of trademark infringement, trademark dilution, unfair competition, false advertising and deceptive trade practices in the United States District Court for the Eastern District of New York against a company selling a purported natural alternative to a renowned pharmaceutical.
- Successfully defended a provider of “pop-up” advertisements in the United States District Court for the Eastern District of Virginia. The Court held that the pop-up ads were not “use in commerce” of the plaintiff's trademarks and did not interfere with a copyright owner's right to display its works or create a derivative work.
- Prevailed at the final hearing before the Trademark Trial and Appeal Board in a trademark opposition based on a nationally recognized pharmaceutical product.
- Obtained favorable judgments and injunctions in numerous federal actions against Internet providers of products purported to be generic versions of a well known pharmaceutical product. In a number of instances, the cases were brought against “Doe” defendants who were successfully identified following orders of the court granting early discovery.
Professional Activities
Mr. Lippert is a member of the American Bar Association and its Intellectual Property Section. He is also a member of the International Trademark Association and the WIPO Domain Name Panel of Neutrals. Throughout his career, Mr. Lippert has been involved in academia and continuing education, speaking on patent law at numerous bar association and Practicing Law Institute programs. He has been an adjunct professor of patent law at the Benjamin N. Cardozo School of Law in New York.
Honors and Awards
Mr. Lippert was named as a “New York Super Lawyer” in intellectual property in the 2006, 2007, 2008, 2009, 2010 and 2011 issues of Law and Politics.
Speaking Engagements
- Panelist, "Trademarks, Patents & Copyrights: Understanding the Interplay," INTA Annual Meeting in Berlin (May 2008)
- Program Chair, New York County Lawyers Association, Trademark Protection on the Internet (June 2008)
Publications
- Sarah Harrop and Nels Lippert, “Important Changes to the UK IPO’s Trademark Examination Practice,” WilmerHale Email Alert (August 14, 2007)
- Nels Lippert and Dyan Finguerra-DuCharme, “The Trademark Dilution Revision Act of 2006 is Signed Into Law,” WilmerHale Email Alert (October 17, 2006)
- Nels Lippert, Jennifer Ann Gaeta, and Florian von Baum, “Pop-Up Ads Survive Legal Challenge in the United States, but Rejected in Germany,” Hale and Dorr LLP E-Alert (September 15, 2003).
- David Cerveny, Nels Lippert, and with contributions from Elizabeth Black, “Cybertrespass: The Final Stage?” Hale and Dorr LLP E-Alert (July 30, 2003).
- Nels Lippert, and Debra Dorfman, “Cybertrespass: Developments in the Evolution of a New Tort,” Hale and Dorr LLP E-Alert (May 9, 2002).
Community Involvement
Mr. Lippert serves on the Board of Directors of The Wildlife Trust.
