Benjamin M. Stern
Benjamin M. Stern is a partner in Nutter’s Litigation Department. He focuses his practice on patent litigation and has extensive trial experience representing multinational and entrepreneurial companies in federal and state courts nationwide, as well before the U.S. International Trade Commission (ITC) and in inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB).
With a strong background in both intellectual property litigation and complex commercial litigation, Ben assists clients in protecting and enforcing their rights. Ben combines impressive courtroom experience with knowledge of complex technologies that allows him to translate sophisticated subject matter into understandable concepts for judges and juries. He has represented numerous companies in patent litigations, including in the U.S. District Courts for the Eastern District of Texas, District of Delaware, and Northern District of California.
“Ben Stern at Nutter was our focal point throughout the case, and his steady hand and broad knowledge were invaluable. He takes a long-term view of the big picture and strategically puts his clients in the right position to obtain a successful resolution.” – Paul Timmins
Ben has extensive technical experience in numerous industries, including:
- Consumer products
- Data storage systems
- SMS messaging
- Voice over Internet Protocol (VoIP)
- Speech recognition
- Video monitoring products
- Medical devices
Notable Experience and Client Impact
- Represented a software company that sued Fortune 100 computer hardware, software, and services company for copyright infringement, breach of license agreement, and breach of contract (among other causes of action) as a result of unauthorized copying and use of client’s software to design and develop competing product. First chair. Defeated motion to dismiss. Architected and executed discovery strategy that revealed weakness in opposing party’s case. Case settled very favorably shortly thereafter.
- Represented a company that designed and sells reusable smart notebook in patent litigation against Chinese companies attempting to enter the U.S. market with infringing products by filing a declaratory judgment action of non-infringement. Constructed strong infringement argument and convinced declaratory judgment plaintiffs to dismiss case before client had to file an answer or spend significant money.
- Represented a biotechnology company and two academic researchers against a large pharmaceutical company in a dispute over inventorship of several patents relating to mesenchymal stem cells and their uses, and also defended against numerous state law claims regarding alleged improper use of information. Obtained a favorable ruling on all state law claims, including a finding that the defendants were not entitled to any monetary compensation.
- Represented a semiconductor manufacturer against a competitor in patent litigation in D. Delaware, in which both sides asserted patents relating to power management and A-D converters; conducted Markman hearing and obtained a favorable construction, leading to the case being settled on favorable terms shortly after fact discovery began.
- Represented a large provider of IT management solutions in lawsuits in E.D. New York and N.D. California against a competitor alleging infringement of patents relating to object code instrumentation and misappropriation of trade secrets; took the lead in discovery matters, argued several Daubert motions in court and participated in successful settlement negotiations of all matters shortly before trial.
- Represented a large semiconductor manufacturer in an ITC investigation and parallel district court proceeding in N.D. Illinois, defending against two patents owned by a competitor relating to microelectromechanical systems (MEMS) microphones; instrumental in prevailing in a rare initial determination proceeding, in which an administrative law judge found the competitor's patents were invalid, and then in proving invalidity at full merits hearing; ITC affirmed both invalidity determinations.
- Defended a medical device manufacturer against claimed infringement of an expired patent relating to laser hair removal; obtained stay of matter pending reexamination of patent, which resulted in cancelling of all allegedly infringing claims and dismissal of case against the client.
- Defended a large telecommunications company in patent litigation in N.D. Texas brought by a competitor over eight patents relating to encryption, unified communications, messaging, and audio and video codecs; filed four petitions for inter partes review with the Patent Office and obtained institution on all of them. The case settled favorably shortly thereafter.
- Represented a large golf equipment manufacturer in D. Massachusetts against numerous golf ball sellers over patents relating to aerodynamics of golf balls; defeated a motion to dismiss and obtained favorable settlements with all defendants early in proceedings.
- Defended a chemical company involving patents related to termites and animal health, and was involved in expert reports and discovery, as well as Markman and summary judgment motions; obtained favorable claim construction ruling and filed strong summary judgment motion of invalidity, leading to the case being settled hours before argument on summary judgment motion.
- Defended a large golf equipment manufacturer against a competitor who alleged that several golf clubs infringed a patent; obtained summary judgment of non-infringement for all golf clubs and claims from E.D. New York, defended decision on appeal to the U.S. Court of Appeals for the Federal Circuit, and obtained second summary judgment of non-infringement after initial decision was partially vacated on appeal.
- Represented a car sharing company in patent litigation in D. Massachusetts; developed a key non-infringement argument and convinced the plaintiff to dismiss suit with prejudice before deadline.
- Represented a company that developed speech-to-text software in an action against a large software company for patent infringement; successfully transferred case from E.D. Texas to D. Massachusetts; obtained favorable claim construction ruling; and matter settled after business resolution between parties.
- Defended three major telecommunications companies against patent claims relating to VoIP technology in E.D. Texas; took lead in preparing pretrial filings and assisted with trial witness preparation; case settled after the third day of trial for a fraction of the original demand.
- Represented an intelligent video monitoring company who sued a larger competitor in C.D. California for infringement of patent related to video monitoring and for theft of trade secrets; case settled favorably during fact discovery after taking key deposition of the engineering employee of the defendant.
- Defended three telecommunications networking companies in E.D. Texas against accusation of infringement of patents relating to VoIP technology; lead responsibility for witness who testified about key prior art; case settled the next day for a fraction of the original demand.
- Defended a large manufacturer and reseller of telecommunications equipment against copyright infringement, breach of contract and misappropriation of trade secret claims involving Simple Network Management Protocol (SNMP) in numerous cases filed in U.S. District Court in D. Delaware and U.S. Bankruptcy Court in D. Delaware; was responsible for the day-to-day conduct of all cases, took and defended fact and expert depositions, and was instrumental in filing summary judgment and Daubert motions, as well as numerous pretrial motions; all cases settled within days of trial of lead case.
- Defended a national health care consulting firm on misappropriation of trade secrets and contract claims brought by a competitor in Texas state court; defended against preliminary injunction, argued numerous discovery and pretrial motions; settled weeks before trial.
- Represented a large international manufacturer and seller of telecommunications equipment to the major wireless providers against a supplier in a breach of contract, theft of trade secrets, and unfair competition action brought in the Commercial Division of the New York State Supreme Court, a case in which the plaintiff brought two preliminary injunction motions to stop the client from selling key Code-Division Multiple Access (CDMA) hardware and software. The case settled favorably during a hearing on second preliminary injunction when it was clear that plaintiffs’ motion was unlikely to succeed.
- Defended a multiplatform media company in a trademark infringement and unfair competition matter in D. Massachusetts; integral member of trial team; obtained complete defense verdict after bench trial.
Active in the legal community, Ben is a board member of the Federal Bar Association IP Section, and is a member of the Boston Intellectual Property American Inn of Court, and the Boston Bar Association, and the Massachusetts Bar Association.
Ben serves on the board of trustees of Crossroads, which prepares young people in Massachusetts for post-secondary success and empowers them to become leaders, and the Brookline Innovation Fund, which helps develop new classes at Brookline High School. From 2014 to 2020, Ben was on the board of trustees of Temple Israel of Boston.
Prior to joining Nutter, Ben was a partner in the Boston office of a leading New England law firm. He has spent nearly 20 years in private practice at international law firms. Ben also served as a Special Assistant District Attorney in the Middlesex District Attorney’s Office, where he investigated and tried numerous cases. Additionally, Ben was appointed as a Special Assistant Attorney General to represent the Governor of Massachusetts and was named as a Special Counsel to the Massachusetts Board of Bar Examiners. Earlier in his career, Ben clerked for The Honorable Gregory M. Sleet, U.S. District Court of the District of Delaware.
- Smart notebook company in patent litigation
Nutter represented a company that designed and sells reusable smart notebooks in patent litigation against Chinese companies attempting to enter the U.S. market with infringing products by filing a declaratory judgment action of non-infringement. The firm constructed a strong infringement argument and convinced declaratory judgment plaintiffs to dismiss the case before the client had to file an answer or spend significant money.
- Software company in intellectual property litigation
Nutter represented a software company that sued a Fortune 100 computer hardware, software, and services company for copyright infringement, breach of license agreement, and breach of contract (among other causes of action) as a result of unauthorized copying and use of the client’s software to design and develop a competing product. Nutter defeated the motion to dismiss. The firm architected and executed a discovery strategy that revealed a weakness in the opposing party’s case. The case settled very favorably shortly thereafter.
News & Insights
- New England Super Lawyers Rising Star, 2008-2009, 2011-2014
Education & Admissions
New York University School of Law, J.D.
Swarthmore College, B.A., With Distinction, Phi Beta Kappa
- U.S. Court of Appeals for the Federal Circuit
- U.S. Court of Appeals for the First Circuit
- U.S. District Court for the District of Massachusetts
Active in the legal community, Ben is a board member of the Federal Bar Association IP Section, as well as a member of the Steering Committee for the Business and Commercial Litigation Section of the Boston Bar Association, the Boston Intellectual Property American Inn of Court, and the Massachusetts Bar Association.
- New England Super Lawyers Rising Star, 2008-2009, 2011-2014