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Fundamentals of Patent Litigation 2013

 
Author(s): Gary M. Hnath, Ian Feinberg
Practice Area: Intellectual Property
Published: Apr 2013
PLI Item #: 41833
CHB Spine #: G1136

Gary Hnath is a Partner in Mayer Brown’s Washington DC office, where he focuses his practice on intellectual property litigation and counseling, including disputes involving patent, trademark and copyright infringement and trade secrets. He has participated in numerous District Court cases, several Federal Circuit appeals, and over 40 investigations at the International Trade Commission under Section 337 of the Tariff Act of 1930, one of the principal forums for litigating intellectual property disputes involving imported articles.

A leading authority in the area of Section 337 litigation, Gary is a former president of the ITC Trial Lawyers Association and Chair of the ITC Committee of the American Intellectual Property Law Association. He has lectured throughout the United States and Asia and written widely on the subject of Section 337 investigations. While working at the ITC, Gary was lead counsel for the government in Certain Concealed Cabinet Hinges, which raised issues of first impression as to what constitutes a “domestic industry” under the 1988 amendments to Section 337. His position on this issue was adopted by the Administrative Law Judge and the Commission in a decision which is still cited as one of the leading cases in the field.

Gary has successfully represented both patent holders and companies accused of infringement in cases involving a variety of technologies, including high-intensity sweeteners; coenzyme Q10; toner cartridges; sleep apnea products; laminated packaging; linear actuators; medical devices for vein harvesting; personal computers; acetic acid; wireless local area networks; ground fault circuit interrupters; agricultural vehicles; multiplexers used in space satellites; gear couplings used in industrial machinery; and neodymium-iron-boron magnets, to name just a few. He was lead counsel for the first company in China to win a Section 337 case after trial at the ITC. His recent notable victories for clients at the ITC include the successful defense of two manufacturers in China accused of infringing four process patents for the manufacture of sucralose. In this high profile case, the Commission found all of the asserted patents not infringed, and one of the patents invalid, after a hotly contested trial.

Gary has also represented numerous clients on a pro bono basis. For example, in a case for a Washington DC public school bus aide fired from her job as a result of an erroneous drug test, Gary was successful in obtaining a ruling that his client’s constitutional rights had been violated and an order reinstating her with back pay. The court’s decision in that case was cited for several years as one of the leading decisions in the US discussing the constitutionality of random drug testing.

In addition to private practice, Gary has served as law clerk to the Honorable Walter E. Black Jr., US District Court for the District of Maryland and a senior trial attorney with the ITC’s Office of Unfair Import Investigations.


Ian Feinberg has more than 30 years of experience focused on patent, copyright, trademark and trade secret litigation with deep expertise in licensing, unfair competition and antitrust , primarily focused in the software and semiconductor industries. He has represented such famous companies as Adobe , Monster Cable, Sony, SWIFT, Trident, Visa, and Vodafone in patent litigation, as well as much smaller companies.

Significant Engagements

IpVenture, Inc. v. Sony Corporation., et al., United States District Court – Delaware
Represented Sony Corporation and two other Sony entities in an action alleging infringement of more than 100 claims in four patents involving power and thermal management for notebook computers that allegedly read on all notebook computers using Microsoft Windows operating system. Result: favorable confidential settlement.

Technology Patents LLC v. Deutsche Telekom AG, et al., United States District Court-Maryland
Represented approximately 15 Vodafone entities in a patent infringement action against some 131 defendants alleging infringement of patents on international text and SMS messaging. Result: dismissal on the ground of lack of personal jurisdiction based on oral argument made on behalf of all (115) foreign mobile telephone carriers.

Cryptography Research, Inc. v. Visa International Service Association, United States District Court – San Jose
Represented Visa in an action alleging infringement of more than 100 claims in eight-patents in addition to a Sherman Act Section 1 conspiracy claim and a Sherman Act Section 2 Walker Process monopolization counterclaim involving patents on countermeasures to cryptographic attacks on smart card. Result: favorable confidential settlement.

Agfa Monotype Corporation and International Typeface Corporation v. Adobe Systems Incorporated, United States District Court – Chicago
Represented Adobe in a case asserting that a “circumvention device” in violation of the Digital Millennium Copyright Act. Result: summary judgment for Adobe.

FreecycleSunnyvale v. The Freecycle Network, United States District Court – San Francisco and Ninth Circuit
Obtained declaratory judgment in district court, affirmed by the Ninth Circuit, that “freecycle” and related terms were nakedly licensed to client, FreecycleSunnyvale, by The Freecycle Network and thus abandoned as trademarks. In addition, obtained reversal in the Ninth Circuit of a preliminary injunction issued in a separate case brought by The Freecycle Network enjoining Mr. Oey from “tending to disparage” the validity of  the alleged “freecycle” trademarks and from encouraging others to use the word “freecycle” in its generic sense, on the ground, among others, that the there is no cognizable claim for trademark disparagement under the Lanham Act.