Overview

Martin Zoltick ("Marty") is an experienced patent prosecutor, a seasoned litigator, a skilled negotiator, an intellectual property (IP) strategist, and a trusted legal advisor to his clients. He is a technology and IP lawyer that has been representing inventors, innovators, and entrepreneurs, early-stage, emerging, middle market, and mature companies, as well as investors and venture capitalists, for more than 30 years. He is also a devoted husband and father (and soon to be grandfather), an accomplished pool and open water swimmer, environmental advocate, and thalassophile. 

Marty has prosecuted hundreds of U.S. and international patent applications, served as lead trial counsel in major IP disputes in U.S. Federal District Courts and in inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB), negotiated hundreds of transactional matters involving IP rights, and provided strategic counseling and opinions to clients on IP strategies, due diligence, and portfolio development, valuation, and acquisition. Through his decades of experience, Marty has developed and employs a cross-disciplinary approach to the legal advice he provides based on his client’s business goals and objectives, the specific type of technology, and the legal considerations and issues identified. He understands the importance of aligning his legal advice with his client’s business goals and objectives, and takes the time to learn and understand the client’s business and technology. 

He has a degree in computer science and, prior to attending law school, worked for several years as a software developer and engineer at leading technology development companies and institutions, including Charles Stark Draper Laboratory, Digital Equipment Corporation, Eunice Kennedy Shriver Center, and Data General Corporation. Ever since this beginning, he has been interested in the intersection of law and technology and has observed and influenced the evolution of both. As a result, he has an exceptional level of hands-on knowledge of a broad range of technologies and fields, including operating systems, networking, telecommunications, client/server, peer-to-peer (P2P), real-time systems, virtual networking, software-defined networks, cloud computing, edge computing, the Internet of Things (IoT), digital twin, image analysis, visualization, streaming audio/video, data analytics, big data, artificial intelligence (AI), machine learning (ML), neural networks (NN), blockchain, quantum computing, and gaming. His formal training and industry experience enable him to handle complex software-related legal matters successfully in a cost-effective and efficient manner. He has also developed a particular expertise in the legal aspects of open source software (OSS), including licensing, due diligence, compliance programs, and IP protection.

Marty has more than 30 years of experience handling all aspects of transactional matters, including drafting, negotiation, due diligence, and enforcement involving licensing, strategic alliances, joint ventures, mergers and acquisitions, and reseller, OEM, ISV, technology development, consulting, and employment agreements. Representative transactional matters he has handled involve the full spectrum of clients, ranging from Fortune 500 to middle market and early-stage companies.

For years, Marty has advised tech startups on IP strategy, and implementing those strategies to secure IP rights, build a portfolio of IP assets, and monetize those assets through strategic investments, licensing, enforcement, and acquisition. For early-stage companies, IP is often a key asset. Marty ensures that his clients maximize its value.

Finally, when there are potential disputes and litigation, he has represented clients in district court cases, in administrative proceedings before the U.S. Patent and Trademark Office (USPTO), International Trade Commission (ITC), Federal Trade Commission (FTC), and the National Advertising Division (NAD) of the Better Business Bureau (BBB), and in various forms of alternative dispute resolution, such as arbitration and mediation. For both attorneys and clients, litigation is, and should be, a last resort. However, when it’s unavoidable, Marty is a tough, inventive, and zealous advocate for his client’s interests.

As a practitioner, Marty is an exceptional communicator, transparent and focused on ensuring that his clients are both informed, and receive candid assessments, even if they’re occasionally challenging to hear. He’s sensitive to the timing and cost of his work and stays involved in every aspect. Clients hire lawyers, not firms, and the fact that many of Marty’s clients have been with him for decades speaks to that fact. The most accurate characterization of Marty’s practice is as a unique kind of inside-outside counsel. He operates as a genuine trusted advisor, integrating the roles of advocate, strategist, and advisor, to offer clients for whom IP and tech are pillars of their competitive strategy, an unrivaled, cohesive form of legal and business counsel.

Experience

Proceedings Before the U.S. Patent Trial and Appeal Board

Lowe’s Companies, Inc., Lowe’s Home Centers, LLC and LG Sourcing, Inc. v. Nichia Corporation, Cases IPR2017-02011 & -02014, IPR2018-00601 & -00699

Vizio, Inc. v. Nichia Corp., Cases IPR2017-01608 & -01623, IPR2018-00386, -00437, & -00893

Stingray Digital Group, Inc. v. Music Choice, Cases IPR2017-00888, -01191, -01192, -01193, -01450, & IPR2018-00114

BigCommerce, Inc. v. Express Mobile, Inc., Case IPR2018-00750

Toshiba Samsung Storage Technology Korea Corporation v. LG Electronics, Incorporated, Cases IPR2014-00204 & -00205

Facebook, Inc., LinkedIn Corp., and Twitter, Inc. v. Software Rights Archive, LLC, Cases IPR2013-00478, -00479, -00480, & -00481

SAP America, Inc. and SAP AG v. Versata Development Group, Inc., Case CBM2013-00042

Volusion, Inc. v. Versata Software, Inc. and Versata Development Group, Inc., Cases CBM2013-00017 & -00018

SAP America, Inc. et al.  v. Versata Development Group, Inc., Case CBM2012-00001

Johnson v.  Ryan, Interference No. 105,522

Cording v. Richardson et al., Interference No. 105,224

Uddenfeldt v. Sainton, et al., Interference No. 105,076

Christ et al. v. Blake, Interference No. 103,434 and No. 103,435

Kawaguchi V. Kelly et al., Interference No. 103,063

Davidson et al. v. Cannon v. Goodman v. Buckley et al., Interference No. 102,872

English et al. v. Toedter, Interference No. 102,473

Helferich v. Bennett et al., Interference No. 102,558

Federal District  Court

Finite State Machine Labs, Inc. v. Spectracom Corporation et al, No. 1:17-cv-01040 (W.D. TX)

Nutrition Distribution LLC v. Nexxt Level Nutrition LLC et al, No. 2:17-cv-01870 (D. AZ)

Nichia Corporation v. Vizio, Inc., No. 8:18-cv-362-AG-KES (C.D. CA)

Nichia v. Feit Electric Company, Inc., No. 2:18-cv-01390 (C.D. CA)

Nichia Corporation v. Lowe’s Home Centers, LLC et al, No. 2:16-CV-01455 (E.D. TX)

Nichia Corporation v. Lowe’s Home Centers, LLC et al, No. 2:16-CV-00613-JRG (E.D. TX)

Music Choice v. Stingray Digital Group Inc., No. 2:16-cv-00586 (E.D. TX)

Nichia Corporation v. Vizio, Inc., No. 2:16-cv-01453-JRG (E.D. TX)

Nichia Corporation v. TCL Multimedia Technology Holdings Limited et al, No. 2:16-cv-01452-JRG (E.D. TX)

Nichia Corporation v. TCL Multimedia Technology Holdings Limited et al, No. 2:16-cv-00875-JRG (E.D. TX)

Nichia Corporation v. Feit Electric Company, Inc., No. 2:16-cv-01454 (E.D. TX)

Nicha Corporation v. Feit Electric Company, Inc., No. 2:16-cv-00616 (E.D. TX)

Nichia Corporation v. Vizio, Inc., No. 2:16-cv-00246 (E.D. TX)

Nichia Corporation v. Mary Elle Fashions, Inc. d/b/a Meridian Electric, No. 2:16-cv-00615 (E.D. TX)

Music Choice v. Stingray Digital Group Inc., No. 2:16-cv-00876 (E.D. TX)

Nichia Corp. v. Everlight Everlight Electronics Co., Ltd., Everlight Americas, Inc., Zenaro Lighting, Inc., & Zitroz Llc, C.A. No. 2:13-cv-702 JRG (E.D. TX)

National Cheng Chung Univ.  v.  Nichia Corp & Nichia Am. Corp., No. 13-cv-467 (E.D. TX

Music Choice  v.  Viacom Int’l, Inc. & MTV Networks, No. 08-cv-130 (D. DEL)

Armacell Enterprise Gmbh & Armacell United States Holdings, Inc.  v.  K-flex USA, LLC & L’Isolante K-flex Srl, No. 09-cv-102 (E.D. NC)

AFGD, Inc. v. Tristar Glass, Inc., Kely Ransom, Paul Sullivan, John D. Williams, Lora Cloyd, Blake Neafus, and Kevin Livingston, Case No. 05 CV 300T CK-PJC, N.D. OK.

NetRatings, Inc. v. Visual Sciences, LLC, Civil Action No. 2:05-CV-349, E.D. VA.

Guardian Industries Corp., et al. v. AFG Industries, Inc., Case No. 03-73722, E.D. Mi.

Merck and Company, Inc. v. Mylan Pharmaceuticals, Inc., Civil Action No. 03-CV-1953 (NRW), S.D. N.Y.

NaPro BioTherapeutics, Inc. and Abbott Laboratories v. Mylan Laboratories, Inc. et al., Civil Action No. 01-CV-1048, W.D. Pa.

Abbott Laboratories v. City of Hope, Civil Action No. 00 C7970, N.D. Ill.

Victor Yodaiken and Finite State Machine Labs, Inc. v. Lineo, Inc., C.A. No. 01417, D.Del.

Techsearch, LLC v. ESchool.com, Inc., et al., Civil Action No. H-01-126, S.D. Tx.

Dr. Bradley S. Fordham v. Onesoft Corporation, et al., Civil Action No. 00-1078-A, E.D. Va.

Inline Software Corporation v.Tendril Software Inc., C.A. No. 00-213, D. Del.

General Signal Power Systems, Inc. v. American Power Conversion Corp., Civil Action No. 99-C-0510-S, W.D. Wis.

Chantal Cookware Corp. v. Vitrex Gourmet Corp., et al., Civil Action No. H-97-3978, S.D. Tx.

Hockerson-Halberstadt, Inc. v. Nike, Inc., et al., Civil Action No. 91-1720, E.D. La.

Neles-Jamesbury, Inc. v. Fisher Controls International, Inc. and Fisher Service Company, C.A. No. 94-40200-NMG, D. Mass.

Catalina Marketing International, Inc. v. Credit Verification Corporation, Civil Action No. 98-4135-SAC, D. Kan.

Credit Verification Corporation v. Catalina Marketing International, Inc. and Catalina Marketing Corporation, Civil Action No. 198-CV-1072C, N.D. Tx.

Mitsubishi Chemical America, Inc. and Mitsubishi Chemical Corporation v. AEG Elektrofotografie Gmbh, Civil Action No. 2:98cv483, E.D. Va.

Relume Corporation v. Dialight Corporation, et al., Civil Action No.98-72360, E.D. Mi.

Foam Innovations, Inc. v. Truly Nolan of America, No. CV-95-8857 JGD (RNBx), C.D. Calif.

Glaxo Wellcome, Inc., et al. v. Geneva Pharmaceuticals, Inc., et al., Civil Action No. 94-1921 and 94-4589 (NHP), D. N.J.

In Re Recombinant DNA Technology Patent and Contract Litigation, MDL Docket No. 912, and The Regents of the University Of California v. Eli Lilly and Company, Civil Action No. IP-92-224-C, S.D. Ind.

Personal Computer Peripherals Corp. v. Arcada Software, Inc. et al., Civil Action No. 95-301-SLR, D.Del.

Interchem Corporation and Orion Corporation Fermion v. Marion Merrell Dow Inc. and Tanabe Seiyaku Co., Ltd., Civil Action No. 93-427 (DRD), D. N.J.

Scitex America Corp. and Printing Technologies Associates, Inc. v. Aldus Corporation and V.I.P. Systems, Inc., Civil Action No. 94-214-A, E.D. Va.

Kuhn, S.A. v. Allied Products Corporation, Civil Action No. 3:91-CV-7098, N.D. Oh.

PPG Industries, Inc. v. AFG Industries, Inc. and Gemtron Corporation, Civil Action No. IP92-1401 C, S.D. Ind.

State Court

Minilec Services, Inc., Richard J. Helferich, and Martin A. Schwartz v. Motorola, Inc., Court of Chancery, State of Delaware in and for New Castle County, C.A. 19958

Section 337 Actions

In The Matter Of Certain Laser Imageable Lithographic Printing Plates, Investigation No. 337-TA-636

In The Matter Of Certain Organic Photoconductor Drums And Products Containing The Same, Investigation No. 337-TA-411

In The Matter Of Certain Salinomycin Biomass And Preparations Containing Same, Investigation No.:  337-TA-370

In The Matter of Certain Diltiazem Hydrochloride and Diltiazem Preparations, Investigation No.337-TA-349

Arbitration Proceedings

AGC Flat Glass North America, Inc. v. Guardian Industries Corp., Case No. 51 125 00285 10

AutoBid Systems, Inc. v. Next Tier Concepts, Inc., Case No. 16 117 00667 06

AFG Industries, Inc. v. TruSeal Technologies, Case No. 30 181 00571 02

Fitness MX.com Inc. v. Unibex, Inc., Case No. 16 117 00444 01

Vivus, Inc. v. AndroSolutions, Inc., Case No. 51 E 161 00437 00

Honors & Recognitions

Washington, D.C. Super Lawyers (2013-2022)

Intellectual Asset Management’s (IAM) Patent 1000 – The World’s Leading Patent Professionals (2014-2021)
Ranked bronze in Litigation in the D.C. Metro Area; ranked for Prosecution in the D.C. Metro Area; ranked for Post-Grant Proceedings nationwide

Managing Intellectual Property (MIP) IP Stars (2014-2022)
Ranked as a Patent Star in the District of Columbia and in the U.S. (National)

Newsroom

News

Speaking Engagements

Lexology webinar, "IP protection strategies for AI: keep them secret or go for the patent?" (March 2021).

IEEE Radio & Wireless Week Internet of Things (IoT) Vertical and Topical Summit, Presenter, "Feeling Insecure? What the IoT Community Needs to Know to Navigate the Evolving Legal and Regulatory Landscape Requiring 'Reasonable Security' Features for IoT and Connected Devices" (January 2021).

Lexology Webinar, "Employee privacy and security considerations in the age of COVID-19" (September 2020). 

American Bar Association (ABA) Webinar Sponsored by the Section of Science & Technology Law, Panelist, "Connected Healthcare - Navigating the Patchwork of US Privacy Laws and Developing a Platform that Promotes Trust" (September 2020).

Standards for IoT Week at IEEE Virtual World Forum on Internet of Things (WFIoT), Presenter, “Legal and Regulatory Framework: Internet of Things and AI-Enabled Technologies” (August 2020).

Federal Communications Commission (FCC) Technology Advisory Council Working Group on Artificial Intelligence and Computing, Presenter, “Legal and Regulatory Considerations: Application of Artificial Intelligence to Telecommunications and the FCC” (July 2020).

Northern Virginia Technology Council (NVTC) "Back to Work" Virtual Roundtable, Presenter and Panelist, "Employee and Customer Health Data: Back to Work in the Age of COVID-19" (June 2020).

Internet of Things (IoT) Day Slam 2020, Panelist, “Managing the Hidden Imperatives of IoT: Software and Application Quality, Teamwork, and Legal Compliance" (April 2020).

Internet of Things (IoT) Day Slam 2020, Presenter, “Evolving Legal Landscape: Privacy, Data Protection and Cybersecurity for IoT, Big Data, and AI-Enabled Technologies” (April 2020).

Licensing Executives Society Japan (LES Japan) Monthly Seminar, Presenter, “The Evolving Legal Landscape: Privacy, Data Protection, and Cybersecurity” (November 2019).

IEEE Radio & Wireless Week The Internet of Things Meets the Internet of Space Summit, Presenter, "IoT and IoS Technologies and the Evolving Data Privacy and Cybersecurity Legal Landscape: “Danger, Will Robinson!” (January 2019).

Northern Virginia Technology Council (NVTC) International Committee Event, Presenter and Panelist, "Complying with General Data Protection Regulation (GDPR) and the California Consumer Privacy Act (CCPA) - What Companies Need to Know" (November 2018).

Bloomberg BNA and the International Intellectual Property Institute AIA Post-Grant Patent Practice Conference, Participant in Mock Inter Partes Review Proceeding (February 19-20, 2014).

2013 International Series, Korea-US IP Judicial Conference Program, Panel Member, Recent IP Related Legislation (October 2013).

Japan Intellectual Property Association, Leahy-Smith America Invents Act (AIA), Working Committee Participant (March 2012).

District of Columbia Bar Continuing Legal Education Program, Faculty Member, "Software Patent Primer: Acquisition, Exploitation, Enforcement, and Defense" (August 2004-2009).

The 2001 Intellectual Property Conference, Amelia Island Plantation, Amelia Island, Florida, Invited Speaker, "Counseling Clients on Licensing and Marketing IP" (May 2001).

Georgetown University, Graduate School of Business, Entrepreneurship, Invited Lecturer (Spring Semester 2000).

District of Columbia Bar Continuing Legal Education Program, "Software Patent Primer: Acquisition, Exploitation, Enforcement, and Defense," August 2004 and August 2005.

Publications

Zoltick, M. and Colgate, J., Privacy, Data Protection, and Cybersecurity: A State-Law Analysis, International Comparative Legal Guide (ICLG) to: Data Protection 2020 (July 2020).

Zoltick, M. and Colgate, J., The Application of Data Protection Laws in (Outer) Space, International Comparative Legal Guide (ICLG) to: Data Protection 2019 (July 2019).

Zoltick, M. and Parker, R., Are US patents losing value? A practitioner's perspective, IAM: Japanese (September 2018).

Zoltick, M. and Maisel, J., Data privacy and cyber security: the importance of a proactive approach, Financier Worldwide (June 2018).

Zoltick, M. and Rawls, M., The evolving cryptocurrency patent landscape: who is winning the race?, Financier Worldwide (March 2018).

Intellectual Asset Management Issue 83 Co-published feature, Five years of the Patent Trial and Appeal Board, Interviewee (May/June 2017).

Intellectual Asset Management Issue 76 Co-published feature, A closer look at the PTAB’s new post-issuance review procedures, Interviewee (March/April 2016).

Zoltick, M. and Orange, D., "On the Open-Source Frontier," Legal Times (October 2006).

"Like It or Not -- E-Patents Are For Real", Internet Law Update (Fall 1999).

Zoltick, M. & Green, P., "Calculating Damages the Rite Way: Applying the Federal Circuit's Decision in Rite-Hite Corp. v. Kelley Co., Inc.", Intellectual Property Today (July 1997).

Zoltick, M. & Green, P., "Calculating Damages the Rite Way: Applying the Federal Circuit's Decision in Rite-Hite Corp. v. Kelley Co., Inc. (Japanese Language)", International Legal Strategy, Vol. V-12 (December 1996).

Community & Professional

Certified Information Privacy Professional in the United States (CIPP/US)

Member of the Ad Hoc Legal Counselors Committee

Director of The National Council of Northeastern University (inducted Spring 2004)

Education

J.D., Catholic University of America, Columbus School of Law

B.S., Computer Science, Northeastern University, College of Computer Science (cum laude)

Bar & Court Admissions

Bar Admissions

  • District of Columbia
  • Virginia
  • New Jersey
  • U.S. Patent and Trademark Office
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