Florida: Sun, Sand and Joel B.

Rothman
Board Certified in Intellectual Property Law
Intellectual Property ARNSTEIN & LEHR LLP
5 1 5 N . F L A GLE R DR . | SU I T E 6 0 0 W E ST P A LM B EA CH, F L
3340 1
P 561.833.98 00 | F 561.655.5 551
jrothman@arnstein.com

A recent study by LegalMetrics, a litigation analysis firm, named the Southern and Middle Districts of Florida
among the top five districts for speed to resolution in patent infringement cases.

Since Florida has not been known as a “rocket docket” in the past, these results may seem surprising.
However, for intellectual property litigation attorneys, the recognition that Florida offers a favorable forum
for facilitating the resolution of cases in a timely manner is nothing new.

The Southern District (in yellow) and the Middle District (in
green) cover all Florida’s major population centers including
Arnstein & Lehr LLP office locations in Miami, Ft. Lauderdale,
West Palm Beach and Tampa. The judges in these districts
are well known to the attorneys at Arnstein & Lehr LLP who
appear before them on a regular basis.

A survey we performed of filings of intellectual property

cases in popular federal districts including these Florida
Districts reveals that, with the exception of the Eastern
District of Virginia, filings of IP cases have trended
downward in the last several years. Of course, fewer cases
filed mean more attention for filed cases from the federal
judges assigned to those cases.

Decisions in IP cases issued in early 2009 District Court IP Case Filings

further suggest IP owners receive favorable
treatment from Florida district court judges. 450

Among these decisions were the following: 400

350
• In a trademark infringement case Number Cases Filed
300
filed in the Southern District of EDTX
EDVA
Florida, district judge Daniel T. K. 250
MDFLA
Hurley denied the defendant’s 200
SDFLA
motion to dismiss finding that the WDWA
150
plaintiff trademark licensee had
standing to prosecute infringements 100

even though it was not the 50

trademark owner. In the process, the
0
court adopted a liberal interpretation 2005 2006 2007 2008 2009
of standing for Lanham Act claims

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Boca Raton Coral Gables Fort Lauderdale Miami Tampa West Palm Beach

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 favorable to plaintiffs. See Trump Plaza of the Palm Beaches v. Rosenthal, Case No. 08-80408 (Jun. 24,
2009)

• In a patent infringement case filed in the Middle District of Florida, district judge Steven D. Merryday
dismissed counterclaims for unjust enrichment as preempted by federal patent law. See Mayo Clinic
of Jacksonville v. Alzheimer’s Institute of America, Inc., Case No. 8:05-cv-839 (Jun. 26, 2009)

• In a patent infringement case filed in the Southern District of Florida, district judge James I. Cohn
denied the defendant’s motion to dismiss and held that the plaintiff had standing to sue for
infringement based upon an agreement with the original inventor in England signed before the
patents were ever filed in the United States. See Flexiteek Americas, Inc. v. Plasteak, Inc., Case No. 08-
60996 (Jun. 14, 2009).

Other cases demonstrate a willingness among Florida district judges to find personal jurisdiction over
defendants based upon very minimal contacts including activities on the Internet. Recent decisions have
indicated that Florida courts will follow liberal standards for jurisdiction where simply maintaining an
interactive website accessible on the Internet from Florida will subject a defendant to personal jurisdiction in
the Sunshine State.

When considering where to file an infringement action, intellectual property owners, including owners of
trademarks, copyrights and patents, as well as counsel for these owners, would be wise to consider filing in
the Southern or Middle Districts of Florida. And Arnstein & Lehr LLP, with its vast litigation resources and
experience prosecuting infringements would be an excellent choice to partner with as knowledgeable local
counsel for such cases.

Joel B. Rothman is a partner in the firm’s West Palm Beach office and board certified in Intellectual
Property Law by The Florida Bar. Mr. Rothman represents individual and corporate clients in
intellectual property infringement litigation involving patents, trademarks, copyrights, trade secrets,
trade libel and related commercial matters. His litigation practice also includes significant focus on
electronic discovery issues such as e-discovery management and motion practice relating to e-
discovery.

Mr. Rothman also files applications for trademark and copyright registrations, represents companies in
licensing and acquisitions, and advises clients on information security and privacy matters. Mr.
Rothman has significant employment litigation experience as well, including defense of Fair Labor Standards Act, wrongful
termination, and discrimination matters.

A substantial portion of Mr. Rothman’s practice is devoted to representing dietary supplement companies in FDA and FTC
regulatory matters, transactions and litigation. Mr. Rothman publishes the Nutritional and Dietary Supplement Law Blog at
http://www.nutrisuplaw.com that provides information and resources on laws and regulations that apply to the
manufacture and sale of supplements, functional foods, and cosmetics.

Mr. Rothman is a member of the Executive Council of the Business Law Section of The Florida Bar, and he is currently Chair of
the Intellectual Property Committee of the Section. He is also a member of the American Intellectual Property Law
Association and the International Trademark Association.

Mr. Rothman is “AV” Rated by Martindale-Hubbell, and was named to Best Lawyers in America for FDA Law and Information
Technology Law. Mr. Rothman is also rated 10.0 “Superb” by Avvo.

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Boca Raton Coral Gables Fort Lauderdale Miami Tampa West Palm Beach