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Fundamentals of Patent Litigation 2013

Author(s): Ian Feinberg, Gary M. Hnath
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 30 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  echnologies, including high-intensity sweeteners; 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. 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.


Harvard Law School, JD, cum laude, 1983
Michigan State University, 1980; BA, philosophyand psychology


  • District of Columbia
  • Virginia
  • Maryland
  • US Court of Appeals for the District of Columbia Circuit
  • US Court of Appeals for the Federal Circuit
  • US District Court for the Central District of Illinois
  • US District Court for the District of Columbia
  • US District Court for the Eastern District of Virginia
  • US District Court for the District of Maryland
  • US Supreme Court
  • Supreme Court of Virginia
  • Court of Appeals of Maryland


  • Former member, Prince George’s Philharmonic Orchestra’s Board of Directors
  • Former member, ACLU of Maryland's Board of Directors
  • Member and officer (including past president), ITC Trial Lawyers’ Association
  • Former chairman, ITC Committee of the American Intellectual Property Association
  • Former member, Tally-Ho Swim Club’s Board of Directors
  • Lead counsel, Jones v. McKenzie (pro bono representation of plaintiff through National Capital ACLU in case successfullychallenging dismissal of D.C. school bus transportation aide based on faulty drug test; successfully filed suit on other D.C. public school employees that were wrongfully fired based on faulty drug tests)
  • Lead counsel, Senior Resources v. Dep’t of Defense, et al. (pro bono representation of plaintiff through Litigation Assistance Partnership Project of the ABA; successfully obtained temporary exclusion order, preliminary injunction, and summary judgment on behalf of Senior Resources, a nonprofit organization attempting to obtain property at former military base in Texas for use in program to assist the homeless)
  • ITC Trial Lawyers Association
  • American Intellectual Property LawAssociation/ITC Committee
  • IPO (Intellectual Property Owners), ITC Committee

 News & Publications

  • "Federal Circuit Upholds Trade Secret Exclusion Order In Section 337 Investigation," Mayer Brown Legal Update, 1November 2011
  • "Federal Circuit Provides Guidance on What Constitutes a Domestic Industry Based on Licensing Under Section 337," MayerBrown Legal Update, 21 October 2011
  • "Safeguarding Your IP, Part II,"January/February 2011
  • "Section 337 Investigations at the USInternational Trade Commission: A Powerful Weapon Toy
  • Companies Can Use to BlockUnfair Imports," 30 June 2010
  • "US Supreme Court Addresses Issue ofPatentable Subject Matter in Bilski," Mayer Brown Legal
  • Update, 29 June 2010
  • "Bilski v. Kappos Decided by the UnitedStates Supreme Court," 29 June 2010
  • "Section 337 Investigations at the USInternational Trade Commission Provide a Powerful
  • Remedy Against Misappropriationof Trade Secrets," 1 June 2010
  • "Litigation Expenses Can Be Used toEstablish a Domestic Industry Under Section 337," Mayer
  • Brown Legal Update, 15April 2010
  • "Federal Circuit Confirms Separate Written Descriptionand Enablement Requirements for
  • Patents," Mayer BrownLegal Update, 23 March 2010
  • "Redefining induced infringementliability," Portfolio Media, 4 March 2010
  • "US International Trade Commission IssuesExclusion Order in Trade Secret Case Involving Cast
  • Steel Railway Wheels," MayerBrown Legal Update, 22 February 2010
  • "US Federal Circuit Holds SpecificKnowledge of Patent Not Required for Induced Infringement
  • Liability," Mayer BrownLegal Update, 17 February 2010
  • "The Use of Section 337 in Non-PatentMatters," BNA International Trade Reporter, 24 December 2009
  • "The Use of Section 337 in Non-PatentMatters," International Trade Reporter, 26 ITR 1766, 24
  • December 2009
  • "The Roles of Judges and Juries in PatentLitigation," Federal Circuit Bar Journal, Vol. 19, Number
  • 1, Fall 2009
  • "Section 337 Remedies - Getting YourExclusion Order Is Just the Beginning," IP Litigator, Volume
  • 15 Number 3, May/June2009
  • "IP Enforcement Under Section 337: 2008Year End Review,", 2009
  • "Use of Section 337 to Protect IntellectualProperty Rights and Enhance Global Competitiveness," AIPLA Mid-WinterMeeting, 2009
  • "Protecting Your American IntellectualProperty Rights: How Foreign Companies Can Utilize the
  • U.S. International TradeCommission and Section 337 Investigations," NCCU Intellectual Property
  • Review, 2006
  • "General Exclusion Orders Under Section337," Northwestern Journal of International Property
  • Review, 1 January 2005
  • "Changes in Section 337 as a Result of theGATT-Implementing Legislation," AIPLA Quarterly
  • Journal , Vol. 22, Nos. 3-4,Summer/Fall 1994
  • "Litigating Trade Secret Cases at theInternational Trade Commission," AIPLA Quarterly Journal, 1 January1991


  • Fundamentals of Patent Litigation 2013, 22 April2013
  • Fundamentals of Patent Litigation 2012, 23 April2012
  • Fundamentals of Patent Litigation 2011, 10 June2011
  • Border Enforcement in the US and Europe -Putting the Customs Authorities to Work to Protect
  • Your Intellectual PropertyRights, 22 September 2010
  • In Re Bilski and its Implications for UKInstitutions, 10 July 2010
  • Business Method Patents - Just Cocktail Talk?Plus Other Hot Litigation Topics in the United States, 19 May 2010
  • ITC’s Decision in Coaxial Cable Connectors andthe Use of Litigation Expenses to Establish a Domestic Industry Under Section337, 26 April 2010
  • New cross-border IP issues affecting thechemicals industry, 14 April 2010
  • Section 337 Investigations (PLI), 9 March 2010
  • Strategies and Tactics for Litigating Section337 Investigations - Part 3, 10 December 2009
  • Strategies and Tactics for Litigating Section337 Investigations: Part 2, 18 November 2009
  • Section 337 Investigations: What They Are andHow To Win Them, 4 November 2009
  • Strategies and Tactics for Litigating Section337 Investigations, 29 October 2009
  • In-House Counsel Seminar: Intellectual PropertyStrategies - Avoiding Risks and Creating Opportunities, 25 September 2009
  • Law and Practice on US Section 337, 22 September2009
  • Section 337 Investigations (BFTECG), March 2009
  • Stopping Goods at the Border: When & How toDo It, January 2009
  • IP Enforcement Under Section 337: A MidyearReview, August 2008
  • Litigating Cases at the ITC Under Section 337,July 2008
  • How to Develop a Winning Strategy When Preparingfor a Section 337 Investigation at the
  • International Trade Commission,July 2007
  • Litigation Strategies in Section 337 ProceedingsBefore the International Trade Commission, July 2006
  • Federal Circuit Appeals of Section 337Decisions, July 2006
  • Strategies in Putting Through a Section 337Action, July 2004
  • Section 337 Investigations at the InternationalTrade Commission, February 2004
  • Enforcement of Consent Orders Under Section 337,November 2003
  • Patent Litigation in the U.S.: The Section 337Process, October 2003
  • U.S. Patent Litigation post-Festo, October 2003
  • So What Does a Practice Group Leader Do?,October 2003
  • Federal Circuit Appeals: A Case Study, July 2003
  • Practice Group Leadership: Up, Down &Sideways Leadership Issues, March 2003
  • Section 337 Litigation, December 2002
  • Enforcing Intellectual Property Rights, November2000
  • New Reexamination Procedures, November 2000
  • Issues Related to Trade Secret and AntitrustLaws in the United States, September 1999
  • Enforcing Intellectual Property Rights andDefending Against Claims of Infringement in the United States, September 1999
  • Issues in Intellectual Property Law, May 1997
  • Recent Developments In Section 337 Litigation,November 1995

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.