ADR Office of Theo Cheng
295 Princeton Hightstown Road
Suite 11-115
West Windsor, NJ 08550
(917) 459-3669
Resolute Systems, LLC/Veritext
7 Times Square, 16th Floor
New York, NY 10036
(917) 459-3669
Mr. Cheng has been appointed a mediator and arbitrator to several private and public rosters, including the following:
- American Arbitration Association
- International Centre for Dispute Resolution
- Resolute Systems
- CPR Institute (Panel of Distinguished Neutrals)
- Silicon Valley Arbitration and Mediation Center (List of the World’s Leading Technology Neutrals)
- American Intellectual Property Law Association (List of Arbitrators and Mediators)
- FINRA (Financial Industry Regulatory Authority)
- U.S. District Court, District of New Jersey
- U.S. District Court, Eastern District of New York
- U.S. District Court, Southern District of New York
Mr. Cheng is a Past President of the Justice Marie L. Garibaldi American Inn of Court for ADR and a Past Chair of the New York State Bar Association Dispute Resolution Section.
Representative matters as a MEDIATOR include:
- Wrongful discharge claims brought under an internal dispute resolution process maintained by a company in the food and hospitality industry
- Claim for unlawful termination based upon disability discrimination and retaliation brought by an executive in a financial services organization
- Claim for failure to reimburse advanced sales commissions pursuant to an employment contract
- FLSA claims for failure to pay minimum wage and overtime brought by a supermarket employee
- Claim for breach of a restrictive covenant in an employment agreement and counterclaim for tortious interference with economic advantage
- Patent infringement claims arising from the manufacture and sale of a competing furniture product
- Claims for trademark infringement and unfair business practices arising from the breach of a settlement agreement between two pharmaceutical companies relating to their competing skin cream products
- Breach of distributorship agreement for hair care products and accompanying claims of trademark infringement
- Dispute between members of a limited liability company regarding continued funding for the entity and ownership of intellectual property
- Dispute between members of limited liability company regarding allegations of breach of fiduciary duty and other malfeasance
Representative LITIGATED matters include:
- Tried fraud and breach of contract claims on behalf of an exploited investor, resulting in a $2.4 million compensatory and punitive damages jury verdict
- Tried patent damages claim on behalf of a pharmaceutical company over an infringing animal vaccine, resulting in a favorable jury verdict
- Litigated copyright infringement actions brought by classes of songwriters and music publishers against unlicensed Internet file-sharing companies Grokster, Napster, Aimster, and Audiogalaxy, including proceedings in the federal circuit courts and the U.S. Supreme Court
- Briefed and argued a successful appeal before the Guam Supreme Court of a commercial lease dispute involving a worldwide restaurant franchisee
- Defended a test preparation company in resolving a copyright infringement suit brought by a trade association
- Defended a cell phone manufacturer in resolving a lawsuit alleging infringement of a copyrighted ringtone
- Defended and successfully resolved accusations of selling counterfeit goods over the Internet against an on-line retailer
- Successfully defended a software company against allegations of trademark infringement, dilution, and unfair competition brought by a purported senior mark owner
- Represented a manufacturer of a high-end household appliance in a lawsuit against competitor’s false television infomercial
- Represented the patentee in industry-wide infringement lawsuits relating to pioneering methods for locating available real estate properties on a computer
- Represented a telecommunications company in a litigation campaign to enforce a patent relating to data compression algorithms
- Represented a defendant in a suit alleging claims for patent infringement, trademark infringement, copyright infringement, and theft of trade secrets over the design, development, and sale of a mass-marketed medical device
Representative matters as an ARBITRATOR include:
- Chair of panel on $16 million dispute over the alleged unauthorized use by a multi-media company of over 30,000 photographs after the termination of a copyright license
- Sole arbitrator on a $10 million dispute over alleged unpaid licensing fees brought by vendor of software trading platform against a broker-dealer
- Sole arbitrator on a $1.4 million dollar dispute brought by a record company executive for breach of an employment agreement, racial discrimination, and other related claims
- Sole arbitrator on a dispute alleging FLSA claims for failure to pay minimum wages and for compensable time brought by individual truck drivers
- Sole arbitrator on a dispute over the breach of a settlement agreement and trademark infringement and dilution claims pertaining to a collaborative venture to produce and promote a film in the health care industry
- Sole arbitrator on a $400,000 dispute alleging breach of e-commerce services agreements
- Wing arbitrator on a multi-million dollar patent license dispute pertaining to the manufacture and sale of in-vehicle entertainment systems for cars
- Wing arbitrator on a $14 million dispute alleging breach of a consulting agreement relating to a licensing arrangement in the jewelry industry
- Wing arbitrator on a $8.5 million dispute alleging breach of confidentiality and theft of trade secrets arising from a distributorship arrangement and joint venture and sales relationship
For over 20 years, Mr. Cheng was an intellectual property and general commercial litigator with a focus on trademarks, copyrights, patents, and trade secrets, as well as entertainment, labor and employment, corporate investigations, securities, and bankruptcy. He handled a broad array of business disputes in federal and state courts in industries as varied as high-tech, telecommunications, entertainment (music and motion pictures), consumer products, food and hospitality, retail, and financial services. In 2007, he was named one of the Best Lawyers Under 40 by the National Asian Pacific American Bar Association.
Representative NON-LITIGATED matters include:
- Apply for and secure trademark registrations on numerous well recognized brands for clients in a variety of industries, such as fashion, jewelry, physical fitness, health care products, automobile parts and accessories, accounting, consulting, legal services, software, and web-based businesses
- Conducted trademark portfolio due diligence in connection with the acquisition of a pharmaceutical company
- Provided advice on the transfer of patent and trademark assets in connection with the negotiation of a sales and distribution agreement regarding textile and garment products
- Conducted pre-publication review of a book for potential violations of non-disclosure agreements
- Drafted and negotiated a non-exclusive licensing agreement of patent rights owned by a major U.S. technology university (pertaining to ligands for metals and metal-catalyzed processes) to a Japanese commercial manufacturer to develop and sell licensed products and processes
- Drafted and negotiated a joint research and development agreement between German and U.S. manufacturers of scientific instruments
- Drafted and negotiated a sponsored research agreement between a German manufacturer of scientific instruments and a major North American university pertaining to certain licensed patented technology
- Drafted and negotiated a research and testing agreement between a U.S. technology university and a Japanese importer and distributor of specialty chemicals products manufactured by itself and its affiliated companies in Japan
EDUCATION + OTHER BACKGROUND
- J.D., New York University School of Law
- A.B. cum laude, Chemistry and Physics, Harvard University
Bar and Court Admissions/Professional Licenses
- New York, New Jersey, District of Columbia (inactive)
- Supreme Court of the United States
- U.S. Courts of Appeals: Second, Third, Sixth, Seventh, Ninth, and Federal Circuits
- U.S. District Courts: E.D.N.Y., N.D.N.Y., S.D.N.Y., D.N.J., W.D. Mich.
- Chartered Life Underwriter (CLU) (1993-present)
- Chartered Financial Consultant (ChFC) (1994-present)
- Series 7 General Securities Representative (1993-1994)
Mr. Cheng was previously a marketing consultant at MetLife Insurance Company, with experience in life and health insurance, annuities, brokerage sales, structured settlements, and investments. During his tenure, he obtained his Chartered Life Underwriter (CLU), Chartered Financial Consultant (ChFC), and Series 7 General Securities Representative designations. Mr. Cheng also previously served as a law clerk to the Honorable Julio M. Fuentes of the U.S. Court of Appeals for the Third Circuit and the Honorable Ronald L. Buckwalter of the U.S. District Court for the Eastern District of Pennsylvania.