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Hunton Andrews Kurth LLP

Paul D. Ackerman

Paul D. Ackerman

Partner

Hunton Andrews Kurth LLP
New York, U.S.A.

tel: +1 212 850 2858
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Local Time: Sun. 19:05

Profile

Paul’s practice involves all aspects of intellectual property law with an emphasis on patent litigation and trial.

He has represented clients in a wide range of popular forums for patent litigation, such as the Eastern District of Texas, the Eastern District of Virginia, the District of Delaware, and the Northern and Central Districts of California, and in “337 actions” before the International Trade Commission. Paul has litigated both utility and design patent cases across a wide range of technologies, including cellular telephony, software, internet technology, semiconductor fabrication and testing, biotechnology, mechanical devices and glassware. He also has considerable experience in contested proceedings before the U.S. Patent & Trademark Office, including inter partes reviews, reexaminations and interferences.

In addition to his extensive experience in patent litigation, Paul has a decade of experience in the business and engineering community, through which he developed a deep appreciation for the business implications of patent litigation, and works closely with his clients to ensure that their business objectives are met in each representation.

Paul regularly speaks and authors articles on topics related to intellectual property (see Insights and Events below) and is a frequent contributor to the firm’s CAFC blog (www.cafcblog.com), reviewing the latest IP decisions at the Federal Circuit.

Representative Experience

  • Keldar v. Baby Brezza Enterprises, LLC, 14-cv-904 (E.D.Tx.). Successfully represented defendant against allegations of patent infringement directed to products for making infant formula. Case was settled favorably following the Markman hearing.
  • Vitro Packaging, LLC v. Saverglass, Inc. IPR2015-00947. Successfully defended patent owner in an IPR proceeding. In view of the patent owner’s preliminary statement, the PTAB denied institution of inter partes review against our client’s patent.
  • Saverglass, Inc. v. Vitro Packaging, LLC. Representing plaintiff in a design patent litigation involving the ornamental design of a bottle.
  • The Trustees of Columbia University in the City of New York v. HiSense USA, 14-cv-4547 (S.D.N.Y.). Successfully represented plaintiff in a breach of contract action in connection with the sale of patents. Settled on favorable terms.
  • Cave Consulting Group v. OptumInsight, Inc. Successfully represented defendant in a patent dispute involving insurance claims processing and physician efficiency measurement. On appeal, the Federal Circuit found no infringement by our client, OptumInsight.
  • Battle Toys LLC v. Lego Systems Inc., 12-cv-928 (D. Del.). Represented defendant in a patent dispute alleging infringement by Lego’s Ninjago spinning top toy. Case settled on favorable terms shortly before trial.
  • In the Matter of Certain Universal Serial Bus (“USB”) Portable Data Storage Devices, 337-TA-788 (I.T.C.). Successfully represented respondents, Imation and IronKey, in an investigation involving allegations of infringement of three utility patents and one design patent directed to USB memory sticks. After months of hard-fought litigation, the complainant withdrew its complaint the night before the hearing was to commence, resulting in an initial determination terminating the investigation in favor of the clients.
  • Effectively Illuminated Pathways v. Aston Martin Lagonda, et al., 11-CV-0034 (E.D. Texas). Representing defendant, Aston Martin, against allegations of infringement of a patent directed to flexible, LED-based automotive lighting assemblies.
  • Kilts Resources v. Robert Bosch LLC, 10-CV-513 (E. D. Texas). Representing Robert Bosch against allegations of false patent marking.
  • In the Matter of Certain Glassware, 337-TA-767 (I.T.C.). Successfully represented the complainant, Boston Beer Corporation, in a 337 enforcement action involving two design patents directed to Boston Beer’s Samuel Adams beer glass. The investigation was resolved with a consent order precluding further importation of the accused glasses.
  • Unique Product Solutions v. Amana Imports, 10-CV-1956 (N.D. Ohio). Defended Amana imports against allegations of false patent marking.
  • SPH America v. Acer, et al. (E.D. Va.). Represented defendants, Casio America, Inc. and Casio Corporation of America, against allegations of infringement of five patents alleged to cover various aspects of CDMA technology employed in cellular telephones and other wireless devices.
  • SPH America, LLC v. Apple, et al. (E.D. Va). Represented defendants, Casio America, Inc. and Casio Corporation of America, against allegations of infringement of two patents alleged to cover various features of cellular telephones.
  • Bid for Position v. AOL, et al. (E.D. Va.). Represented defendant, Miva, Inc., against allegations of infringement of a patent directed to account management and bidding features related to internet advertising.
  • Saverglas v. Tommy Bahama (S.D.N.Y.). Represented the plaintiff, Saverglas, in an action involving design patent infringement and unfair competition.
  • Symbol Technologies v. Harvard Batteries (E.D.N.Y. & E.D.Pa.). Represented the plaintiff, Symbol technologies, in a multi-faceted IP enforcement effort, including utility patents, design patents, copyrights and trademarks.
  • Overture Services v. FindWhat.com (C.D. Cal.). Represented FindWhat.com (now Miva, Inc.) in a patent dispute involving 67 claims directed to FindWhat.com's business model. A three week jury trial resulted in a hung jury, with no liability being found against FindWhat.com.
  • Central Sprinkler Company v. Reliable Automatic Sprinkler Company (S.D.N.Y.). Represented The Reliable Automatic Sprinkler Company as a defendant in a patent infringement action concerning early suppression, fast response automatic fire sprinklers.
  • Reliable Automatic Sprinkler Company v. Central Sprinkler Company (S.D.N.Y). Represented The Reliable Automatic Sprinkler Company as a plaintiff in a patent infringement action concerning automatic fire sprinkler arrangements.
  • Cascade Microtech, Inc. v. Karl Suss America, et al. (D. Ore. and D. Vt.). Represented Karl Suss America and Karl Suss GMBH (now Suss Microtech) as defendants in a patent infringement action concerning semiconductor probe stations.
  • ACTV, Inc., et al. v. The Walt Disney Company, et al. (S.D.N.Y.). Represented ACTV as a plaintiff in a patent infringement action concerning integrating television programming and internet content.
  • Child Craft Industries, Inc. v. Simmons Juvenile Products, Inc. (S.D. Ind.). Represented Simmons Juvenile Products in a declaratory judgment action concerning a design patent for a baby furniture design.
  • Mullinex v. Synaptic Pharmaceutical Corp. (S.D.N.Y.). Represented Synaptic Pharmaceutical in an action concerning breach of contract arising from an employment contract.

Education

BSEE, New York Institute of Technology, cum laude, 1991
Areas of Practice
Articles

  • Samsung v. Apple – The Supreme Court Limits Damages in Design Patent Cases
  • USPTO Updates Examination Guidelines for Patent Eligible Subject Matter
  • Limelight Networks, Inc. v. Akamai Technologies, Inc., et al.
  • Supreme Court Gives Deference to USPTO in Post Grant Proceedings
  • Point of Novelty Blog (pointofnovelty.blogspot.com)
  • Federal Circuit Expands the Definition of Direct Infringement
  • The Federal Circuit Recognizes a Limited Patent Agent Privilege
  • Through the Rabbit-Hole: Alice Corporation Pty. Ltd. v. CLS Bank International: Supreme Court Holds “Merely Requiring Generic Computer Implementation” Cannot Transform an “Abstract Idea into a Patent-Eligible Invention”
  • Factual Questions May Preclude Early Resolution of Invalidity under Section 101
  • Federal Trade Secrets Law Is Now a Reality, Soulier Strategic Lawyering Newsletter
  • Supreme Court Alters Appellate Standard of Review for Claim Construction in Patent Cases
  • USPTO Issues New Rules for Patent Office Trials; Republished by IP Litigator (Wolters Kluwer)
  • Federal Trade Secrets Law Is Now a Reality
  • Nautilus v. Biosig
  • Mandated Simplification of Patent Litigation - Judicial Trends and a new Model Order
  • USPTO Issues New Rules for Patent Office Trials, Republished by IP Litigator (Wolters Kluwer)
  • An Overview of Trade Secrets Law in the United States, NYSBA International Law Practicum, Vol. 32, No. 1, pp. 35-41

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