Joel R. Leeman

Joel R. Leeman

Partner

t:
617-443-9292, ext 222
f:
617-443-0004
e:
jleeman@sunsteinlaw.com
Harvard Law School
J.D.
Brandeis University
B.A., magna cum laude, M.A.

Awards

  • Martindale Hubbell-Preeminent-Badge

Education

  • Harvard Law School J.D.
  • Brandeis University B.A., magna cum laude, M.A.

Profile

Joel Leeman is a partner at Sunstein, and devotes his practice to the litigation of patent and trademark disputes. He has extensive experience in handling technology-licensing disputes, as well as trade secret and general commercial litigation. Joel focuses on helping our clients resolve disputes efficiently— through litigation and other methods—and in a manner that promotes their business objectives. He advises clients on strategies for minimizing litigation risks.

Experience

  • Has handled numerous patent and trade secret litigations covering a wide range of technologies, including: pharmaceuticals, biological/chemical assay methods and devices, non-invasive thermometry, x-ray inspection systems, disambiguation/clustering software, machine learning image analysis, fire-detector mapping software, caching software, chip technology, fluorescent lighting, mobile payment processing, military training simulators, data security, and fruit processing methods.
  • Possesses special expertise in the economic analysis of patent infringement cases.
  • Has represented clients in domestic and international contract disputes, including licenses, commission arrangements, collaboration agreements, confidentiality clauses, inventors’ agreements, and indemnities.
  • Has wide experience in all aspects of trademark and copyright protection and litigation, representing firms in courts and before the Patent and Trademark Office and the Trademark Trial and Appeal Board.
  • Has handled trade dress disputes involving electric fans, cellphone cases, user interfaces, musical instruments, food packaging, and athletic shoes, among other things.
  • Litigated novel issues on behalf of a web-hosting company, including the extent of long-arm jurisdiction over an out-of-state operator and remedies available for unfair business practices arising from conduct on the Internet.
  • Successfully represented a California company in a dispute, alleging misappropriation of proprietary software, that established a Massachusetts standard for a plaintiff’s duty to disclose his trade secrets at the outset of pretrial discovery.
  • Joel has co-written books on copyright enforcement and limits on commercial speech.
  • Has spoken on panels sponsored by bar associations on non-competition disputes, trade secret law, and international arbitration.

Professional and Community Involvement

  • Active participant in early-education literacy programs in Boston public schools.
  • Has played in a softball double-header every Sunday of the spring, summer and fall for over 30 years.
  • Formerly an instructor of advanced Hebrew language at Brandeis while pursuing his graduate studies.

Honors

  • Joel was named to the Super Lawyers® list in the practice area of intellectual property 2004-2018 in Massachusetts, a list limited to the top 5 percent of attorneys in each region. The attorneys featured in Super Lawyers were selected by their peers in an extensive nomination and polling process conducted by the research team at Super Lawyers, a service of Thomson Reuters and seen in a special advertising section in Boston magazine.
  • Named to the 2016-2018 New England Super Lawyers Top 100 List, a listing of 100 lawyers who received the highest point totals in the Massachusetts nomination, research and blue ribbon review process.

Recent Publications

Protecting and Enforcing Copyright, MCLE New England, 4th ed. 2014 (co-written with Lisa Tittemore).

“What Can I Say? Leeway and Legal Limits in Commercial Speech: A Primer on Defamation, Commercial Disparagement and False Advertising,” American Bar Association (Spring 2009) (co-written with Julia Huston).

Massachusetts Trade Secret Protections Are About to Resemble Everyone Else’s. That Brings Changes that Businesses Should Know About.—August 22, 2018

Litigate Your Trademark Rights With Care, No Matter what Forum You’re In—February 16, 2018

Give Me a ©! Supreme Court Examines Cheerleader Uniforms and Gives Designers a Means to Protect Their Creations—April 10, 2017

Litigator’s Perspective- I’ve a Hunch You’re Stealing My Invention: Low Standard Prevails for Alleging Patent Infringement—May 9, 2013

Do-Nothing Congress Manages to Crack Down on Trade Secret Thieves—January 17, 2013

Not the Cadillac of Trade Secrets, But Still Deserving of Protection—January 19, 2012

Bar and Court Admissions

  • Admitted to the Massachusetts bar, as well as the bars of the U.S. Supreme Court, the First Circuit Court of Appeal, the Federal Circuit and the U.S. District Court for the District of Massachusetts.

Results

Exergen Corporation vs. Kaz, USA, Inc.

United States District Court for the District of Massachusetts

Sunstein’s trial team won a jury verdict for our client Exergen, resulting in a $16 million judgment against Kaz, the maker of consumer products sold under the Vicks and Braun brands. Despite Kaz’s multiple challenges to the twelve patent claims asserted by Exergen, the jury upheld the validity of all of them, and found that the forehead thermometers sold by Kaz infringed those claims. Exergen is a Watertown, MA-based manufacturer and seller of thermometers for both the professional and consumer markets.

#

$16 million judgment

FairWarning IP, LLC v. Iatric, Inc.; FairWarning IP, LLC v. CynergisTek, Inc.

We successfully defended clients Iatric and CynergisTek in the District Court and Federal Circuit against claims of patent infringement relating to software for detecting fraud and misuse of protected health information. Sunstein litigation group obtained judgments of patent invalidity under Section 101.

#

Largest award in Massachusetts 2019

Publications

Litigate Your Trademark Rights With Care, No Matter what Forum You’re In

Litigate Your Trademark Rights With Care, No Matter what Forum You’re In

Give Me a ©! Supreme Court Examines Cheerleader Uniforms and Gives Designers a Means to Protect Their Creations

Give Me a ©! Supreme Court Examines Cheerleader Uniforms and Gives Designers a Means to Protect Their Creations

Litigator’s Perspective- I’ve a Hunch You’re Stealing My Invention: Low Standard Prevails for Alleging Patent Infringement

Litigator’s Perspective- I’ve a Hunch You’re Stealing My Invention: Low Standard Prevails for Alleging Patent Infringement

Do-Nothing Congress Manages to Crack Down on Trade Secret Thieves

Do-Nothing Congress Manages to Crack Down on Trade Secret Thieves

Not the Cadillac of Trade Secrets, But Still Deserving of Protection

Not the Cadillac of Trade Secrets, But Still Deserving of Protection

Sure as Shootin’, If It’s Claimed in Your Patent, You Can’t Assert It as a Trade Secret

Sure as Shootin’, If It’s Claimed in Your Patent, You Can’t Assert It as a Trade Secret

Isn’t Asserting a Trade Secret Inconsistent with Seeking a Patent? Not If the Secret is a Unique Combination of Known Elements

Isn’t Asserting a Trade Secret Inconsistent with Seeking a Patent? Not If the Secret is a Unique Combination of Known Elements

25% Rule is Drawn and Quartered: Court Rejects Popular Method for Computing Patent Infringement Damages

25% Rule is Drawn and Quartered: Court Rejects Popular Method for Computing Patent Infringement Damages

Bimbo Knows the Muffin Man . . . and Teaches Him a Lesson in Trade Secrets

Bimbo Knows the Muffin Man . . . and Teaches Him a Lesson in Trade Secrets

Silence is Deadly: The Peril of Inaction After Calling Someone an Infringer

Silence is Deadly: The Peril of Inaction After Calling Someone an Infringer

Overzealous Trade-Secret Plaintiff Gets His Just Desserts

Overzealous Trade-Secret Plaintiff Gets His Just Desserts

Adventure on the Appellation Trail: Joseph Abboud Gives Away His Name, Yet May Get to Use it Anyway

Adventure on the Appellation Trail: Joseph Abboud Gives Away His Name, Yet May Get to Use it Anyway

Trade Show Exhibit Subjects Foreign Businessman to Federal Jurisdiction

Trade Show Exhibit Subjects Foreign Businessman to Federal Jurisdiction

What Can I Say: Leeway and Legal Limits in Commercial Speech A Primer on Defamation, Commercial Disparagement and False Advertising

What Can I Say: Leeway and Legal Limits in Commercial Speech A Primer on Defamation, Commercial Disparagement and False Advertising

Federal Preemption Has Its Limits: State law Governs Theft of Trade Secrets Even When a Patent is Involved

Federal Preemption Has Its Limits: State law Governs Theft of Trade Secrets Even When a Patent is Involved

New Procedures May Lure More Patent Lawsuits to Massachusetts

New Procedures May Lure More Patent Lawsuits to Massachusetts

It Doesn’t Take Much: Familiarity With a Competitor’s Trade Secrets Can Doom Your Reverse Engineering Project to Legal Limbo,

It Doesn’t Take Much: Familiarity With a Competitor’s Trade Secrets Can Doom Your Reverse Engineering Project to Legal Limbo,

Hall Street Associates: Arbitration Results Are Final Despite Erroneous Legal Analysis

Hall Street Associates: Arbitration Results Are Final Despite Erroneous Legal Analysis

Join Our Team

Sunstein seeks talented candidates interested in joining our dynamic, motivated, and talented professional team.

Subscribe to Our Newsletters

Subscribe to: