Brian Mudge

Hunton Andrews Kurth LLP

$ $$$

Pennsylvania Avenue Northwest 2200
Washington 20052 DC US

Substantial experience in Intellectual Property law and practice, covering litigation, counseling and prosecution involving a variety of technology and business sectors. Brian S. Mudge assists clients with a broad variety of IP matters concerning patents, trademarks, copyrights and trade secrets.

He has counseled clients and provided opinions regarding clearance, scope and validity of patents and trademarks, has assisted clients in acquisition and licensing of patents and patent portfolios, and has defended against claims of infringement of intellectual property rights.

He has represented clients as a key member of litigation teams in cases involving patent, trademark, copyright and trade secret issues, including federal district court litigation and post-grant proceedings before the US Patent & Trademark Office.

Experience:

  • Hewlett-Packard Co. v. YYZ, LLC (PTAB). Led team that prepared two successful petitions on behalf of Hewlett-Packard for postgrant review of covered business method patents relating to computer systems for tracking business processes; these petitions formed the basis for a successful summary judgment motion in parallel district court litigation.
  • Integrated Global Concepts, Inc. v. Advanced Messaging Techs., Inc.(PTAB). Led team that successfully defended j2 Cloud Services and patent owner AMT against two petitions for inter partes review of a patent relating to fax-to-email systems.
  • Pearson v. Mangano (W.D. Tenn.; PTO). Led team that successfully defended Home Shopping Network, Ingenious Designs and Joy Mangano against allegations of patent infringement. Case included successful request for reexamination of the patent in suit.
  • Zimmer v. CooperNeff Advisors, Inc. (E.D. Pa.). Key member of team that helped overturn a TRO and defeat a preliminary injunction motion in a case against BNP Paribas and CooperNeff Advisors involving copyright and trade secret claims over computer software.
  • O2 Micro Int’l Ltd. v. Taiwan Sumida Electronics, Inc. (E.D. Tx.). Key member of team that defended patent infringement claim through trial and posttrial briefing involving patents relating to power converter devices for laptop displays.
  • D. E. Shaw & Co. v. Razor Investment Management (S.D.N.Y.). Key member of team that successfully obtained injunction against foreign hedge fund’s use of infringing fund name.
  • Sightsound.com, Inc. v. N2K, Inc. (W.D. Pa.). Key member of team that successfully enforced patents covering a computer system for purchasing and downloading music on behalf of patent owner.
  • Delphine Software Int’l, SARL v. Electronic Arts, Inc. (S.D.N.Y.). Key member of team that defended EA against allegations of trade secret misappropriation involving software.
  • America Online, Inc. v. AT&T, Inc. (E.D. Va.). Key member of team that successfully defended AT&T against trademark infringement claims by winning a summary judgment ruling that “you have mail” is generic.
  • Philadelphia Orchestra Ass’n v. Walt Disney Co. (E.D. Pa.). Key member of team that successfully defended against summary judgment while obtaining a finding that the motion picture “Fantasia” was a work for hire and not a work of joint authorship.
  • Counseled client corporation regarding potential coverage and value of patent portfolios relating to computer systems for electronic commerce (including search/browse, advertising, security, payments, personalization/recommendations, analytics, and databases).
  • Counseled and defended client corporation regarding patents held by various large patent holding entities, relating to computer systems for electronic commerce (including caching data, switching applications, providing ads, mobile browser redirects, access control, electronic catalogs; HTML forms, web page scripts, cache servers, and search engines; managing information distribution, integration of information and knowledge, web-based shared document repository; and managing electronic and physical resources).
  • Handled ex parte reexamination and inter partes reexamination proceedings for patents relating to fax-to-email systems.
  • Prosecuted or supervised preparation and/or prosecution of patent applications relating to computer systems for various Internet applications and other business methods (including managing a portfolio of securities, and Internet advertising).
  • Supervised preparation of patent applications relating to chemically-sensitive field effect transistors / FET arrays and computerized methods used in DNA sequencing.
    Supervised prosecution of patent applications relating to wireless telecommunications technology.
  • Prepared or supervised prosecution of patent applications relating to telecommunications technology.

EDUCATION:

  • JD, University of Pennsylvania Law School, cum laude, Order of the Coif, Moot Court Board, 1991
  • MS, Systems Engineering, University of Pennsylvania, 1984
  • BS, Electrical Engineering, University of Pennsylvania, magna cum laude, Tau Beta Pi, Eta Kappa Nu, Hexagon Senior Society, 1979

BAR ADMISSIONS:

  • District of Columbia
  • Pennsylvania
  • New Jersey
  • US Patent and Trademark Office

COURT ADMISSIONS:

  • US Court of Appeals, Federal Circuit
  • US Court of Appeals, Third Circuit
  • US District Court, Eastern District of Pennsylvania
  • US District Court, District of New Jersey

Memberships:

  • American Intellectual Property Law Association

Cost

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Pennsylvania Avenue Northwest 2200
Washington 20052 DC US
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Lina Stillman

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Broadway 42
New York 10006 NY US
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