Dean Powell

N. Dean Powell Jr. concentrates his practice on intellectual property matters, including patent litigation and patent prosecution. Mr. Powell has represented companies in patent infringement suits in various United States courts, including in California, North Carolina, Pennsylvania, and Texas.

He has coordinated global patent litigation that resulted in favorable rulings both in the U.S. and abroad. He has also litigated design patent, trade dress, and trade secret issues.

Mr. Powell has litigated and/or analyzed patents in a wide range of technologies, including chemical and metallurgical products, software, electrical and mechanical systems, and financial related technologies.

He has regularly coordinated many aspects of litigation, including discovery practice, taking and defending of depositions, expert discovery, and infringement and validity analyses.

Mr. Powell is a registered patent attorney before the U.S. Patent and Trademark Office. He has prepared and prosecuted patent applications in a wide range of technologies, including chemical, materials science, mechanical, medical device, software, financial systems, manufacturing, consumer products, food production, electrical, power generation, and nuclear-related technologies.

Prior to joining the firm, Mr. Powell worked at GlaxoSmithKline in Research and Development, specifically the New Chemical Entities Department and Inhalation Product Development Department.

While attending law school, he was a member of the Holderness Moot Court Bench and Craven Moot Court Competition Bench.

Experience:

• Assist leading tobacco company in patent preparation and prosecution in the nanotechnology, industrial production processes, plant genetics and packaging technologies.
• Provide a wide range of intellectual property services to Krispy Kreme Doughnuts, Inc., an international doughnut company.
• Assisted a Fortune 200 global consumer goods company in procuring its United States design patent portfolio.
• Provided patent procurement and counseling services to a medical supplies and devices technology company. The company offers diagnostic and therapeutic spinal surgical devices and processes.
• Defended Wells Fargo Bank against Innova Patent Licensing in a patent infringement suit in the Eastern District of Texas. The bank’s systems, services and processes at issue include information security technologies such as spam-blocking software. The plaintiff in this suit sued numerous defendants, including some of the largest banks in the country. Case settled. (Judge Folsom). Innova Patent Licensing, LLC v. 3Com Corp., et al., No. 10-0251 (E.D. Tex filed July 20, 2010).
• Represents a not-for-profit research consortium that organizes and funds collaborative research, providing a wide range of counseling on intellectual property issues and representing the consortium in patent prosecution both in the United States and across the world. Some of the consortium’s innovations relate to the fields of nuclear power production, electric power distribution, metal repair technologies, and pollution control technologies.
• The firm served as lead counsel on behalf of a large financial institution in a patent infringement suit filed by a financial institution services company related to online banking technology. The case settled favorably shortly before trial.
• Representing Celgard LLC in an inter partes review related to separators for high energy rechargeable lithium batteries.
• Representation of Kennametal Inc., a $2 billion per year NYSE company, in a patent litigation action that its biggest global competitor filed in the United States District Court for the Western District of North Carolina, alleging that Kennametal infringed certain metal cutting tool patents. We successfully transferred the case to the United States District Court for the Western District of Pennsylvania – Kennametal’s home jurisdiction – pursuant to 28 U.S.C. §1404(a). We forced a voluntary dismissal of one of the two patents. We then obtained a favorable claim construction ruling in which the remaining patent was found invalid for indefiniteness. The parties later entered an agreement resolving their disputes in this action and other related actions. Also represented Kennametal in a patent litigation matter in the United States District Court for the Western District of Pennsylvania alleging that Kennametal’s largest global competitor and related entities infringe claims of two patents owned by Kennametal. We obtained an agreement for one entity to cease infringing one of the patents. The parties were still litigating the other patent, which related to metal cutting tools, at the time of settlement. Also served as global coordinating counsel in a patent litigation action that Sandvik filed in the High Court of Justice, Chancery Division, Patents Court, United Kingdom. After a bench trial, the Court found Sandvik’s patent invalid for indefiniteness, lack of enablement, and obviousness. Sandvik Intellectual Prop. AB v. Kennametal Inc., No. 09-0163 (W.D.N.C. filed Apr. 27, 2009); Sandvik Intellectual Prop. AB, v. Kennametal Inc., No. 10-654 (W.D. Pa. filed May 13, 2010); Kennametal Inc. v. Sandvik, Inc. d/b/a Sandvik Coromant Co., et al., No. 09-cv-00857, (W.D. Pa. filed June 29, 2009); Sandvik Intellectual Property AB, Claimant and Kennametal UK Limited, Kennametal Inc., Kennametal Europe GMBH, Defendants; Claim No. HC 10 C02090, High Court of Justice, Chancery Division, Patents Court.
• The firm served as lead counsel on behalf of Alfresco Software in a lawsuit involving allegations of patent infringement related to content management systems. The lawsuit involved nine patents from two distinct families of patents, each covering different subject matter. After successfully transferring the case from the Eastern District of Virginia to the Northern District of California, Alfresco invalidated two of the asserted patents at the 12(b)(6) stage under the Supreme Court’s Alice standard for patentable subject matter under 35 U.S.C. 101. The remainder of the case was settled shortly thereafter on confidential terms. Open Text SA v. Alfresco Software Ltd., et al., 13-cv-04843 JD (N. D. Cal., filed October 18, 2013).
• The firm advises a major retailer about potential patent infringement issues associated with hundreds of products sold or considered for sale by the retailer that are being considered for alternative sourcing. The multi-year, fixed fee project provides the retailer a large quantity of sophisticated clearance advice very quickly and efficiently at a known cost. The project provides the firm with an opportunity to deploy unmatched patent identification and evaluation skills in a relationship that encourages sophisticated use of patent searching resources and efficient development and delivery of advice.
• Represent children and/or their best interests in a variety of settings and courts. Lawyers routinely serve as guardians ad litem, representing the best interests of children in a variety of contexts. In Atlanta and in Winston-Salem, lawyers have represented the best interests of hundreds of children whose parents are disputing their custody. The guardian ad litem is charged with getting to know the child, studying the circumstances of the child’s life, interviewing witnesses, reviewing documents and ultimately, making an oral or written recommendation to the appointing court as to what is in the child’s best interests.
• Lead counsel for Wachovia Bank, Branch Banking & Trust Company, M&T Bank and Comerica Bank against DataTreasury in patent infringement suits in the Eastern District of Texas. The patents at issue involved various technologies, including telecommunications, electronic payment and clearing systems, software, business methods, and electrical and mechanical devices. The plaintiff in these cases sued more than 40 defendants, including many leading banks and financial institutions. Cases settled in 2009 and 2010 shortly before trial. DataTreasury Corp. v. Wachovia Corp., et al., No. 05-0293 (E.D. Tex. filed June 28, 2005) and DataTreasury Corp. v. Wells Fargo & Co., et al., No. 06-0072 (E.D. Tex. filed Feb. 24, 2006). (Judge Folsom).

Education:

• University of North Carolina School of Law, J.D. (2006)
• North Carolina State University, B.S., Chemical Engineering (2003) magna cum laude

Admissions:

• North Carolina (2006)

Court Admissions:

• U.S. Patent and Trademark Office (2006)