Practice Areas
FinTech
Global Litigation
IP Due Diligence
ITC Litigation
Intellectual Property
Patent & Trade Secret Litigation
Patent Preparation & Prosecution
Trademark & Copyright Protection
Admissions
U.S. Patent and Trademark Office
New York
Education
Fordham University School of Law - J.D., 2002
Columbia University - B.S.E.E., 1999
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Profile
Howard Wizenfeld focuses his practice in the area of intellectual property law where his practice concentrates on intellectual property related transactions and litigations. Howard has particular experience in drafting and negotiating complex IP-related transactions with respect to mergers and acquisitions, including carve-out transactions, share and asset purchase agreements, controlling and minority investments (e.g., VC transactions), joint ventures, SPACs and ancillary agreements. He also has primary responsibility for negotiating and drafting a wide range of intellectual property documentation, including patent and know-how licensing agreements, trademark licensing agreements, data licensing agreements, SaaS agreements, fintech agreements and non-disclosure agreements. Howard frequently represents companies in the automotive, fintech, music publishing, retail, cybersecurity, professional services, and food and beverage industries.
Howard also handles complex patent litigations primarily in the electrical engineering, telecommunications, and computer science fields, and has handled litigations in the biotechnology, pharmaceutical, and chemical sectors. Although Howard’s practice largely focuses on intellectual property law, he has also litigated non-IP matters, for example defending a large manufacturer of Petrol tanks in an arbitration proceeding for payment of dividends.
Prior to joining Cadwalader, Howard was an associate at White & Case, Quinn Emanuel, and Amster, Rothstein & Ebenstein where he participated in all aspects of intellectual property law.
Howard earned his J.D. from Fordham University School of Law, where he was a member of Moot Court, and his B.S. in Electrical Engineering from Columbia University. He is admitted to practice in the State of New York, the Southern and Eastern Districts of New York, the U.S. Court of Appeals for the Federal Circuit, and is registered to practice before the U.S. Patent & Trademark Office. In addition, Howard is a member of the New York Intellectual Property Law Association (NYIPLA).
Experience
Howard has advised clients on numerous significant matters, including the representation of:
- Mason Capital Management in its $475 million acquisition of CB&I storage solutions from McDermott International, Ltd.
- TSD Mobility Solutions, a leader in fleet management software and services, in connection with its sale to The Reynolds and Reynolds Company.
- Aone, a SPAC, in its $2.1 billion definitive merger agreement with Markforged, Inc., the creator of an integrated metal and carbon fiber additive manufacturing platform for use in 3-D printing.
- AngioDynamics, Inc., a leading medical technology company focused on the body’s vascular system, in the sale of its Dialysis product portfolio and BioSentry Tract Sealant System Biopsy product to Merit Medical Systems, Inc. for $100 million in cash.
- Barings LLC in connection with its $38 million loan (and product royalty financing agreement) to Coherus BioSciences, secured by Coherus’ Loqtorzi and Udenyca biologics.
- BC Partners in its acquisition of VTX Holdings, LLC, a seller of customer information system software for utilities.
- Underline Infrastructure, a community infrastructure platform that provides U.S. communities with open access fiber networks, in a strategic investment and a joint venture arrangement led by Ares Management’s Infrastructure Opportunities.
- MBIA Inc. and a joint venture acquisition vehicle majority owned by MBIA and Bardin Hill Investment Partners in connection with the acquisition of aircraft manufacturer MD Helicopters, Inc. through a Bankruptcy Code Section 363 asset sale.
- Portico Capital Advisors, a leading M&A advisory firm focused on the Verticalized Software, Data, and Analytics sector, in its sale to Cowen Inc.
- Cybereason in connection with various rounds of venture capital funding.
- Elliot Management Corporation in its majority equity investment in small business loan provider Channel Partners Capital.
- Inteva Products, a leading supplier of automotive engineered components and systems, in the sale of its roof systems design and assembly business to CIE Automotive, S.A.
- The Medicines Company in connection with its divestment of three marketed cardiovascular products – Cleviprex® (clevidipine), Kengreal® (cangrelor) and Argatroban® – to Chiesi Farmaceutici S.p.A..
- Towers Watson in its $140 million acquisition of Acclaris, a provider of software-as-a-service (SaaS)-based technology and services for consumer-driven health care and reimbursement accounts.
- Cedar Lane Techs., Inc. v. Qualcomm Inc. (W.D. Texas)
- Secured a complete walkaway victory for Qualcomm in the Western District of Texas after motion practice challenging Cedar Lane's claims for infringement. Cedar Lane accused Qualcomm’s Snapdragon Chips of infringing three patents directed to imaging technologies.
- Auth Token v. Citigroup (W.D. Tex.)
- Defended Citi against charges of infringing a patent related to the use of an authentication token embedded in Europay, Mastercard and Visa (“EMV”) chip cards.
- AuthWallet v. Citibank (S.D. Tex.)
- Represented Citibank in a patent infringement lawsuit alleging infringement of a patent related to online platforms and services that facilitate transaction processing, including redemption of reward points.
- Fast 101 v. Citigroup (D. Del.)
- Defended Citibank against charges of infringing five patents related to electronic intermediated settlement of invoices. We successfully won a motion to dismiss the case based on a ruling that the patents were direct to ineligible subject matter, which was successfully affirmed on Appeal.
- TriOptima Ltd. v. Quantile Technologies, Ltd. (EDTX)
- Defend Quantile against allegations of patent infringement and trade secret misappropriation. We successfully won a motion to dismiss the case for lack of personal jurisdiction.
- Modern Telecom Systems v. Brother International Corporation (D. Del.)
- Represented Brother in a patent infringement lawsuit relating to the use of training sequences in Wi-Fi communications.
- Diversified Observation v. Brother International Corporation (D. Del.)
- Represented Brother in a patent infringement lawsuit concerning light adjustment technology in printers and scanners.
- Freeny v. Brother International Corporation (E.D. Tex.)
- Represented Brother in a patent infringement lawsuit relating to use of authorization codes in providing services over Wi-Fi communications.
- Orca Health, Inc. v. 3D4Medical Ltd., et al. (D. Utah) (Settled Prior to Filing Answer)
- 3D4Medical Ltd., et al. v. Orca Health, Inc. (S.D. Cal.) (Settled Prior to Filing Answer)
- Represented 3D4Medical Ltd. in actions against Orca Health, Inc. In one action, we defended 3D4Medical in Utah Federal District Court where Orca Health alleged over 10 state and federal tort claims, including unfair competition, trade secret misappropriation, and infringement of its trademarks, trade dress and patents. Reached a favorable settlement after pressuring Orca Health via filing a lawsuit against it in the Southern California Federal District Court for copyright infringement, trade dress infringement, unfair competition and breach of obligations under its End User License Agreement with 3D4Medical.
- ParkerVision, Inc. v. Qualcomm, Inc.
- Represented Qualcomm in a multi-patent infringement case related to RF receivers.
- Broadcom Corp. v. Qualcomm, Inc.
- Substituted as counsel to defend Qualcomm against allegations of infringement by its 3rd Generation baseband processors and proprietary network software. Broadcom alleged that these products infringed telecommunications patents related to video encoding and network switching technologies. The case settled on favorable terms.
- Matsushita Electric Industrial Co., Ltd. v. MediaTek, Inc.
- Represented Mediatek in a multi-patent litigation involving optical disc drive technology. The case settled on favorable terms.
- Nidec Corp. v. Victor Company of Japan
- Represented JVC in a multi-patent infringement case related to hard disk drives. Case settled on favorable terms.
- Reliant Pharmaceuticals v. Abbot Laboratories
- Represented Reliant Pharmaceuticals in a litigation involving fenofibrates. The case settled on favorable terms.
- John R. Gammino v. Verizon Communications, Inc.
- Defended Verizon and its subsidiaries against allegations of patent infringement regarding call-blocking technology. Case settled on favorable terms.
- Syngeta Seeds, Inc. v. Monsanto
- Represented Syngenta Seeds in a patent infringement litigation relating to genetically modified seeds.
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