Paul T. Qualey has experience in a variety of areas of intellectual property law with a particular emphasis on patent litigation at the International Trade Commission and in the Federal Courts.
Paul has represented both plaintiffs and defendants in patent infringement cases involving a broad range of technologies in the software, telecommunications, automotive and construction industries.
He has frequently appeared in Section 337 disputes at the International Trade Commission representing both complainants and respondents. His clients have included Lenovo, Sony, GAF Materials Corp., and DaimlerChrysler, among others.
Paul is registered to practice before the US Patent and Trademark Office and has argued inter partes reviews before the Patent Trial and Appeal Board. Paul has also prosecuted patent applications in the software, information technology and telecommunications fields for a variety of large and small companies.
He also has experience in intellectual property licensing and due diligence, and has counseled and prepared opinions for clients regarding patent infringement and validity.
Before becoming an attorney, Paul spent four years doing software development and systems integration for a variety of commercial and government entities.
- Sweet Green Fields Co. in an ITC investigation related to artificial sweetener food additives resulting in an early favorable settlement for our client. Glucosylated Steviol Glycosides, 337-TA-1085 (ITC).
- Sony as plaintiff in a patent litigation regarding digital cable set-top box technology. Case settled on favorable terms for our client after the close of fact discovery and a favorable Markman ruling. Sony Corp. v. Arris Global Ltd. (D. Del.).
- Sony in an ITC investigation, appeal, and inter partes reviews involving Bluetooth headset technology. Settled on favorable terms after inter partes review hearing. Wireless Headsets, 337-TA-943 (ITC).
- Sony Mobile in an inter partes review (and subsequent appeal) against B.E. Technology regarding certain patent claims being asserted against Sony Mobile in district court. The Patent Office ruled for our client, finding that the claims were invalid and the Federal Circuit affirmed on appeal. B.E. Technology v. Sony Computer Entertainment America (W.D. Tenn., Fed. Cir.).
- Sony in an ITC investigation brought by Pragmatus Mobile alleging that certain Sony phones and tablets infringed patents related to smart phones and GPS location systems. On the eve of trial, the case settled on favorable terms for our clients. Wireless Devices including Mobile Phones and Tablets 337-TA-905 (ITC).
- Sony in a patent litigation that was successfully transferred from the Eastern District of Texas to the Northern District of California. The court entered a stipulated summary judgment of non-infringement following a favorable Markman decision, which was upheld on appeal at the Federal Circuit. Optimum Power Solutions v. Sony Electronics (N.D. Cal., Fed. Cir.).
- Sony in a series of ITC investigations and patent litigations against LG Electronics directed to telecommunications standards, cell phone features, Blu-ray DVD technology and televisions and computer monitors, as well as advising on multiple cases in Germany, the UK, the Netherlands, Spain and Korea. Resulted in a favorable settlement on behalf of Sony. Certain Mobile Telephones and Modems, 337-TA-758, Digital Televisions, 337-TA-764, Sony Corporation v. LG Electronics U.S.A. Inc., et al., and LG Electronics, Inc. v. Sony Corporation, et al. (ITC, S.D. Cal., C.D. Cal.).
- Sony in an ITC investigation brought by Technology Properties Limited alleging that certain Sony products infringed patents related to flash memory card readers. Administrative Law Judge granted Sony’s motion to terminate the investigation. Certain Digital Photo Frames, 337-TA-807 (ITC).
- GAF Materials Corporation as plaintiff in a trademark, copyright, trade secret and patent licensing dispute with a former GAF business partner. Secured a favorable settlement after defeating an antitrust counterclaim. Building Materials Corporation v. Rotter et al. (E.D. Pa.)
- Sony in a patent infringement suit filed against it by Illinois Computer Research, LLC. With a motion by Sony for summary judgment of non-infringement pending, ICR dismissed its claims against Sony with prejudice. Illinois Computer Research LLC v. Harpo Productions Inc., et al. (N.D. Ill.).
- GAF Materials Corporation in a patent litigation relating to roofing shingles. Defended against a competitor’s patent infringement claims while countersuing on GAF’s own patents, resulting in a favorable settlement for our client. CertainTeed Corp. v. Building Materials Corporation et al. (E.D. Pa.)
- The Knot against patent infringement allegations relating to its online registry tools. Case resolved upon merger of the companies. WeddingChannel.com v. The Knot (S.D.N.Y.).
- DaimlerChrysler in patent litigation related to side view mirrors on Mercedes-Benz automobiles. Secured summary judgment and affirmance at Federal Circuit of no patent infringement and dismissal of unjust enrichment claims. Taylor v. DaimlerChrysler AG (E.D. Mich., Fed. Cir.).
- JD, The George Washington University Law School, with honors, AIPLA Quarterly Journal, 2000
- BS, Electrical Engineering, University of Maryland, cum laude, Phi Beta Kappa, Tau Beta Pi, Eta Kappa Nu, 1994
- BA, Economics, University of Maryland, 1994
- District of Columbia
- New York
- US Patent and Trademark Office
- US District Court, Eastern District of Michigan
- US District Court, Eastern District of New York
- US District Court, Southern District of New York
- US District Court, Western District of Tennessee
- US Court of Appeals, Federal Circuit
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