Aleksander J. Goranin

Partner

  • Aleksander J. Goranin
  • Phone: +1 215 979 1868

    Aleksander J. Goranin - LinkedIn Import to Address Book

  • Duane Morris LLP
    30 South 17th Street
    Philadelphia, PA 19103-4196
    USA

Aleksander J. Goranin is a trial lawyer focusing on high-stakes intellectual property and technology-driven cases in the software, artificial intelligence, web, and life sciences industries. Mr. Goranin regularly represents one of the world’s largest enterprise software companies in patent, copyright, software licensing, and intellectual property disputes, both in the courtroom and at the negotiating table. He recently secured complete victories at the summary judgment stage in two cases seeking tens of millions in damages for alleged copyright and trademark infringement. Mr. Goranin also co-led the successful defense of a start-up medical device manufacturer in hard-fought, bet-the-company patent and trade secret litigation; co-led a five-patent infringement investigation before the International Trade Commission on behalf of a global software company against a competing software platform; and negotiated the redesign of a hotel brand of a top hospitality company to resolve trade dress litigation.

In addition to trial work, Mr. Goranin also regularly advises start-up and established technology clients with data-centric business models on issues concerning proper data acquisition, data use, data ownership, software and data licensing, and potential Computer Fraud and Abuse Act implications. At Duane Morris, he helps lead the firm’s AI Steering Committee and publishes its biweekly newsletter summarizing legal developments in artificial intelligence, The AI Update.

Mr. Goranin is active in the leadership of The Copyright Society, the premier organization for copyright practitioners, and co-chairs its AI series of educational programming. He also created and taught the Trade Secret Law course at Villanova University School of Law.

Respected legal guide Chambers USA has described Mr. Goranin as “adept in representing companies in high-value IP litigation concerning major scientific and technical devices” and noting his “expertise in noncompete and trade secrets issues.” Chambers USA client sources called Mr. Goranin "a wonderful litigator" as well as "a fabulous lawyer and a really smart guy." Mr. Goranin is also consistently ranked as a top intellectual property litigator in Pennsylvania by the Best Lawyers and SuperLawyers publications.

Before entering private practice, Mr. Goranin was as a law clerk to then-Chief Judge Edward R. Becker of the United States Court of Appeals for the Third Circuit. Mr. Goranin earned his law degree in 2000 from the University of Virginia School of Law, where he served on the Virginia Law Review and was elected to the Order of the Coif, and obtained his undergraduate degree, summa cum laude, from the University of Maryland. He is admitted to practice in Pennsylvania, New Jersey, and the District of Columbia.

Areas of Practice

  • Patent Litigation
  • Copyright Litigation
  • Trade Secret Litigation

  • Trademark, Trade Dress, and Unfair Competition Litigation

  • Computer Fraud & Abuse Act Litigation

  • Intellectual Property
  • Licensing

Representative Matters

  • Represented Yahoo, Inc. in a suit brought by Droplets Inc., for alleged patent infringement, seeking $260 million and a finding of willful infringement. An Oakland federal jury found no infringement with respect to four Yahoo products and, on the one remaining product, awarded less than 7% of Droplets’ damages demand. The jury also did not find any willful infringement.

  • Obtained summary judgment on behalf of internationally recognized card payment and financial services company dismissing multimillion dollar claim for software copyright infringement. See Micro Focus (US), Inc. et al. v. American Express Company,1:15-cv-07438-PGG, Docket # 119, Southern District of New York, Sept. 30, 2017.

  • Represented the Commonwealth of Pennsylvania, Department of Labor and Industry in a major breach of technology contract and fraud case against International Business Machines Corp. over failed enterprise software system implementation. The case settled for $33 million.

  • Successfully defended telecommunications company CenturyLink in a three-patent case in which summary judgment of noninfringement was affirmed on appeal to the Federal Circuit. See United Access Technologies LLC v. AT&T Corp., Nos. 21-2002 and 2007, 2022 WL 1124961, Federal Circuit, April 15, 2022.

  • Co-led successful defense of a biomedical device start-up company in parallel bet-the-company patent and trade secret litigation in the District of New Jersey and New Jersey Superior Court.

  • Co-led successful defense of pharmaceutical consulting company in an $18 million dollar trade secret and copyright case concerning incentive compensation reports used in the pharmaceutical industry, pending in the Eastern District of Pennsylvania.

  • Successfully defended leading enterprise software company and its decision-support software in a $40 million case involving a patent to object-oriented programming and relational database technology, in the Southern District of New York. Following a favorable claim construction, the district court entered summary judgment of non-infringement, and the Federal Circuit affirmed on appeal. See Microsoft Corp. v. DataTern, Inc., 1:11-cv-02365-KBF, Docket # 70, Southern District of New York, Mar. 5, 2012; SAP AG and Microsoft Corp. v. DataTern, Inc., 755 F.3d 899 (Fed. Cir. 2014).
  • Successfully represented commercial insurance broker in a six-year copyright infringement case against a competitor, ultimately resulting in a $18.9 million jury verdict, affirmed through two appeals to the U.S. Court of Appeals for the Third Circuit. See The Graham Company v. Thomas P. Haughey and USI MidAtlantic, Inc, 568 F.3d 425 (3d Cir. 2009) and 646 F.3d 138 (3d Cir. 2011).

  • Successfully negotiated settlement and redesign of a hotel brand in a trade dress dispute over hotel lobby décor and design.

  • Defended leading enterprise software company in a five-patent case concerning machine learning and artificial intelligence technology, filed in the Eastern District of Tennessee. Case successfully settled at an early stage.

  • Co-led a five-patent investigation initiated by Microsoft against Barnes & Noble and its Nook e-reader software platform before the U.S. International Trade Commission, resulting in successful settlement after a one-week bench trial. In the Matter of Certain Handheld Electronic Computing Devices, Related Software, and Components Thereof, Inv. No. 337-TA-769 (2011-2012).

  • Defended leading enterprise software company in a four-patent case concerning software development platforms and decision-support software, filed in the Eastern District of Texas. Case successfully settled at an early stage.

  • Successfully defended world-leading computer networking company in a patent infringement case concerning server caching technology, pending in the District of Delaware. Secured early dismissal with prejudice of all claims, with no monies paid to plaintiff.

  • Successfully defended leading enterprise software company in a copyright infringement dispute involving multimillion claims over the use of sales training materials, in the Eastern District of Pennsylvania. Case settled at the end of discovery on favorable terms.

  • Successfully represented well-known online business directory on appeal of a copyright infringement verdict to the Eleventh Circuit, in which the appeals court favorably clarified the framework for calculating statutory damages under the Copyright Act. See Yellow Pages Photos, Inc. v. Ziplocal LP and Yellow Pages Group, LLC,795 F.3d 1255 (11th Cir. 2015).
  • Represented leading beverage can manufacturer on multiple successful appeals to the Federal Circuit in cases involving patents on beverage container technology. See Crown Packaging v. Rexam Beverage Can, 559 F.3d 1308 (Fed. Cir. 2009); Crown Packaging v. Ball Metal Beverage, 635 F.3d 1373 (Fed. Cir. 2011).
  • Defended medical device company and tissue bank in a patent dispute over biologic tissues containing viable stem cells and osteoprogenitor cells; the case settled on favorable terms. NuVasive, Inc. and Osiris Therapeutics, Inc. v. Orthofix International N.V., et al. and Musculoskeletal Transplant Foundation, Civ. No. 10-01995 (2010-2011), District of New Jersey.
  • Defended medical device company Synthes in a patent infringement dispute involving polyethylene-titanium surgical implants; the case settled on favorable terms. Porex Surgical, Inc. and Porex Corporation v. Synthes USA Sales, LLC and Synthes, Inc., Civ. No. 10-00023 (2010), Northern District of Georgia.
  • Represented biotechnology company Centocor in a patent infringement and licensing dispute involving recombinant monoclonal antibody technology. Centocor Ortho Biotech, Inc. v. Genentech, Inc. and City of Hope National Medical Center, Civ. No. 08-03573 (2008-2009), Central District of California.
  • Successfully defended medical device company Cordis Corporation in an arbitration involving a doctor’s claims to intellectual property rights over cardiovascular medical device technology. Dr. Juan Carlos Parodi v. Cordis Corporation, No. 50 133 T 00108 06 (2007-2009), AAA International Centre for Dispute Resolution.

  • Advised multiple start-ups on data acquisition, data usage, and Computer Fraud and Abuse Act issues.

Admissions

  • Pennsylvania
  • New Jersey
  • Washington, D.C.
  • Supreme Court of the United States
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Third Circuit
  • U.S. District Court for the District of Columbia
  • U.S. District Court for the District of New Jersey
  • U.S. District Court for the Eastern District of Pennsylvania
  • U.S. District Court for the Eastern District of Texas

Education

  • University of Virginia School of Law, J.D., 2000
    - Managing Board, Virginia Law Review
    - Order of the Coif
  • University of Maryland, B.A., summa cum laude, 1997

Experience

  • Duane Morris LLP
    - Partner, 2013-present
  • Woodcock Washburn LLP
    - Partner 2006-2013
  • Hangley Aronchick Segal Pudlin & Schiller
    - Associate, 2004-2006
  • Williams & Connolly
    - Associate, 2001-2004
  • U.S. Court of Appeals for the Third Circuit
    - Judicial Clerk to the Honorable Edward R. Becker, 2000-2001

Honors and Awards

  • Named an Influencer of Law by Philadelphia Inquirer

  • Listed in Philadelphia Business Journal Best of the Bar: Top Lawyers in Philadelphia - IP Litigation

  • Listed in Best Lawyers Greater Philadelphia

  • Listed in Chambers USA: America's Leading Lawyers for Business
  • Listed in The Best Lawyers in America
  • Named a Pennsylvania Super Lawyer for Intellectual Property Litigation

  • Listed in the IAM Patent 1000 – The World's Leading Patent Practitioners for Patent Litigation

No aspect of these rankings has been approved by the Supreme Court of New Jersey. Further information on methodologies is available via these links.

Professional Activities

  • Board of Trustees, The Copyright Society 
  • Adjunct Lecturer in Law, Villanova University School of Law - Trade Secrets Law

Civic and Charitable Activities

  • The Copyright Society
  • Philadelphia Volunteer Lawyers for the Arts
  • Philadelphia "CyberLunch" Discussion Group 

Selected Speaking Engagements

  • Speaker, “AI at a Crossroads,” World Trade Center Institute, Baltimore, November 7, 2024
  • Speaker, “Risk Management and Artificial Intelligence,” Law Firm General Counsel Roundtable, Seattle, October 9, 2024
  • Speaker, “Emerging Technology and Artificial Intelligence Challenges,” Law Firm General Counsel Workshop, Washington, DC, September 25, 2024
  • Speaker, "AI Demystified: Essential Insights for Lawyers Representing Artists," Philadelphia Volunteer Lawyers for the Arts, September 11, 2024
  • Speaker, “Generative AI in Action: Exploring Generative-AI Tools for Legal Practice,” U.S. Court of Appeals for the Ninth Circuit Judicial Conference, July 23, 2024
  • Speaker, “AI and New Frontiers in Gaming Technology,” IAGA International Gaming Summit, May 30, 2024
  • Speaker, “Byte-Sized Justice: AI for the Practitioner,” Delaware County Bar Association, April 16, 2024
  • Speaker, “The Future of Artificial Intelligence Through a Legal Lens,” American University, April 11, 2024
  • Speaker, “AI and the Practice of Law, ” University of Pennsylvania Law School, April 5, 2024
  • Speaker, “Transacting Smartly in the New Artificial Intelligence World,” Siemens Digital Legal Summit, February 29, 2024
  • Speaker,“The Full Spectrum of AI Litigation in Life Sciences,” American Conference Institute’s Inaugural Life Sciences AI Summit, NYC, February 22, 2024
  • Speaker, “The Legal Landscape for Generative AI,” Unisys Legal Department CLE, February 6, 2024
  • Panelist, "The Copyright Problem," Emory University School of Law’s 2024 Randolph W. Thrower Symposium, February 8, 2024
  • Panelist, “AI Compliance and Legal Issues,” Credit Union National Association, October 11, 2023
  • Speaker, “Generative AI and the Contracting Process,” Key Client CLE, October 3, 2023
  • Panelist, “Future of AI and Innovation,” National Association of Manufacturers 2023 Innovators Summit, October 2, 2023
  • Panelist, “The Impact of Generative AI on the Legal System,” California Academy of Appellate Lawyers Task Force on Generative AI and the Law, September 23, 2023
  • Moderator, "The Model Train Set: AI Training Models and Their Impact on Copyright Liability," Copyright and Technology 2023 Conference, September 14, 2023
  • Moderator, “Liability Considerations In Enterprise Use of Generative AI,” The Copyright Society, Webinar, June 27, 2023
  • Panelist, “Patent Infringement Litigation in US District Court: Insights from Judges and Trial Attorneys,” Bucks County Bar Association, June 22, 2023
  • Speaker, “IP Protections in Online Data Collection,” Rutgers Law School, February 27, 2023
  • Panelist, "Patent Infringement Litigation in U.S. District Court: Insights from Judges and Trial Attorneys," Bucks County Bar Association CLE, November 3, 2022
  • "Digital Intellectual Property," Rutgers Institute for Information Policy and Law, April 19, 2022 
  • Moderator, "Patent-Litigation Lessons for Copyright Cases," The Copyright Society of the USA, Webinar, April 6, 2022
  • Speaker, "Copyright, Covid-19, and the TRIPS IP Waiver," The Copyright Society of the USA, Webinar, October 27, 2021
  • "Copyright and the Right to Repair," the Copyright Society of the USA, Webinar, April 13, 2021

  • “Leveraging Analytics in Litigation,” The Legal Intelligencer In-House Counsel CLE Seminar 2018, Philadelphia, June 27, 2018

  • "How Best to Use (or Defend Against) Patent Office Trials in Connection with Ongoing Litigation," Pennsylvania Bar Institute 10th Annual Intellectual Property Institute, Philadelphia, April 26, 2016
  • "Interrelationships Between Intellectual Property Doctrines," Rutgers Law School — Camden, November 2015
  • "Bio Bilski: The SDNY's ACLU v. Myriad Genetics Decision," presentation and paper to the 26th Annual Joint Patent Practice Seminar, New York City, April 29, 2010

Selected Publications

Media Hits

Selected Speaking Engagements

  • Speaker, “AI at a Crossroads,” World Trade Center Institute, Baltimore, November 7, 2024
  • Speaker, “Risk Management and Artificial Intelligence,” Law Firm General Counsel Roundtable, Seattle, October 9, 2024
  • Speaker, “Emerging Technology and Artificial Intelligence Challenges,” Law Firm General Counsel Workshop, Washington, DC, September 25, 2024
  • Speaker, "AI Demystified: Essential Insights for Lawyers Representing Artists," Philadelphia Volunteer Lawyers for the Arts, September 11, 2024
  • Speaker, “Generative AI in Action: Exploring Generative-AI Tools for Legal Practice,” U.S. Court of Appeals for the Ninth Circuit Judicial Conference, July 23, 2024
  • Speaker, “AI and New Frontiers in Gaming Technology,” IAGA International Gaming Summit, May 30, 2024
  • Speaker, “Byte-Sized Justice: AI for the Practitioner,” Delaware County Bar Association, April 16, 2024
  • Speaker, “The Future of Artificial Intelligence Through a Legal Lens,” American University, April 11, 2024
  • Speaker, “AI and the Practice of Law, ” University of Pennsylvania Law School, April 5, 2024
  • Speaker, “Transacting Smartly in the New Artificial Intelligence World,” Siemens Digital Legal Summit, February 29, 2024
  • Speaker,“The Full Spectrum of AI Litigation in Life Sciences,” American Conference Institute’s Inaugural Life Sciences AI Summit, NYC, February 22, 2024
  • Speaker, “The Legal Landscape for Generative AI,” Unisys Legal Department CLE, February 6, 2024
  • Panelist, "The Copyright Problem," Emory University School of Law’s 2024 Randolph W. Thrower Symposium, February 8, 2024
  • Panelist, “AI Compliance and Legal Issues,” Credit Union National Association, October 11, 2023
  • Speaker, “Generative AI and the Contracting Process,” Key Client CLE, October 3, 2023
  • Panelist, “Future of AI and Innovation,” National Association of Manufacturers 2023 Innovators Summit, October 2, 2023
  • Panelist, “The Impact of Generative AI on the Legal System,” California Academy of Appellate Lawyers Task Force on Generative AI and the Law, September 23, 2023
  • Moderator, "The Model Train Set: AI Training Models and Their Impact on Copyright Liability," Copyright and Technology 2023 Conference, September 14, 2023
  • Moderator, “Liability Considerations In Enterprise Use of Generative AI,” The Copyright Society, Webinar, June 27, 2023
  • Panelist, “Patent Infringement Litigation in US District Court: Insights from Judges and Trial Attorneys,” Bucks County Bar Association, June 22, 2023
  • Speaker, “IP Protections in Online Data Collection,” Rutgers Law School, February 27, 2023
  • Panelist, "Patent Infringement Litigation in U.S. District Court: Insights from Judges and Trial Attorneys," Bucks County Bar Association CLE, November 3, 2022
  • "Digital Intellectual Property," Rutgers Institute for Information Policy and Law, April 19, 2022 
  • Moderator, "Patent-Litigation Lessons for Copyright Cases," The Copyright Society of the USA, Webinar, April 6, 2022
  • Speaker, "Copyright, Covid-19, and the TRIPS IP Waiver," The Copyright Society of the USA, Webinar, October 27, 2021
  • "Copyright and the Right to Repair," the Copyright Society of the USA, Webinar, April 13, 2021

  • “Leveraging Analytics in Litigation,” The Legal Intelligencer In-House Counsel CLE Seminar 2018, Philadelphia, June 27, 2018

  • "How Best to Use (or Defend Against) Patent Office Trials in Connection with Ongoing Litigation," Pennsylvania Bar Institute 10th Annual Intellectual Property Institute, Philadelphia, April 26, 2016
  • "Interrelationships Between Intellectual Property Doctrines," Rutgers Law School — Camden, November 2015
  • "Bio Bilski: The SDNY's ACLU v. Myriad Genetics Decision," presentation and paper to the 26th Annual Joint Patent Practice Seminar, New York City, April 29, 2010