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Colby Van Horn is a registered patent attorney in Stroock’s Intellectual Property Department. His practice focuses on patent, trademark and trade secret matters, including: complex litigation, intellectual property portfolio management, patent prosecution both domestically and internationally, trademark prosecution, licensing, patent opinion and trademark opinion work, as well as due diligence of patents and technologies at issue in potential acquisitions and divestitures.

Colby has represented clients in matters concerning a broad range of technologies including: commercial software applications, microelectronics, dermatological treatment devices, wireless communications, sporting equipment, consumer electronics, financial services, and in vivo medical devices.

Prior to joining Stroock, Colby worked for IBM as a member of IBM’s Intellectual Property Center, where he specialized in patent drafting and prosecution, as well as patent acquisitions and divestitures, and as a member of IBM’s copyright clearance team concerning software authorship and licensing.

Representative Matters

  • Representation of industry-leading human capital management software and services provider in complex litigation concerning claims of trade secret misappropriation, tortious interference, and unfair competition.
  • Representation of a sporting equipment designer and manufacturer in a patent infringement action against primary competitor, resulting in a permanent injunction of competitor’s infringing conduct and settlement on favorable terms.
  • Representation of a software company in a patent infringement action against a well-known multinational computer software, online services and consumer electronics company.
  • Investigated and prepared freedom to operate and non-infringement opinions for clients in the cosmetic device, biomedical device, consumer electronics, and dermatological device industries.
  • Drafted, filed and prosecuted patent applications for clients in the consumer electronic, mechanical device, financial services, and computer software industries.

Publications

  • Co-author, “SAP Ruling’s Curious Approach To Subject Matter Eligibility,” Law360, July 26, 2018

Admitted To Practice

New York

Education

J.D., Benjamin N. Cardozo School of Law, Yeshiva University, 2013

B.S., The Ohio State University, 2009; Mechanical Engineering

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