FROM THE BENCH: LITIGATING PATENT CASES IN THE FEDERAL COURTS Panelist Biographies AMECURRENT 720470531.1 05-May-16 15:13
Alan Grimaldi Partner agrimaldi@mayerbrown.com WASHINGTON DC T: +1 202 263 3255 F: +1 202 263 3300 Alan Grimaldi is co-leader of the firm's Intellectual Property practice. Accomplishments include a jury verdict of non-infringement after a five week trial in the Federal court in Arizona. In addition, he obtained a $76 million judgment against the United States in a breach of contract case for a Midwestern banking client. At his former firm, he was co-chair of a 250 member intellectual property practice and was previously co-chair of that firm's commercial trial group. He has extensive experience in patent and other intellectual property litigation, including mediation and arbitration, and has represented IP clients in the consumer goods, health care, chemical, electronics, automotive, banking, defense, energy & oil, and drug industries. Alan has also had significant experience in all aspects of private and government antitrust and other complex commercial litigation including nationwide class action litigation, multi-district litigation in federal and state courts, federal and state administrative agency litigation, unfair competition, insurance coverage, products liability and litigation dealing with trade-related matters. He was ranked in the 2014 edition of the IAM Patent 1000, which noted that Alan is an extremely popular lawyer whose "client-comes-first philosophy sets him apart." He was named Washington DC Patent Law Lawyer of the Year in the 2015 edition of Best Lawyers. Alan clerked for the honorable Barrington D. Parker, US District Court for the District of Columbia from 1971-1972 and worked at the US Patent and Trademark Office from 1967-1971 (including clerkships to the Board of Appeals, Assistant Commissioner, and Office of International Affairs). Experience DuPont Air Products NanoMaterials v. Cabot Microelectronics. Member of trial team in this patent infringement case representing DA NanoMaterials of Tempe, Arizona, a joint venture between DuPont and Air Products. DA NanoMaterials originally brought suit in federal court in Phoenix, Arizona for declaratory judgment of invalidity and non infringement of several Cabot Microelectronics patents after Cabot had threatened DA Nano with claims of infringement. Cabot unsuccessfully counterclaimed and alleged and argued infringement and willful infringement of four patents. The team secured a declaratory judgment of non-infringement of all asserted claims on all four patents at issue. The jury also found no infringement under the doctrine of equivalents and no willful infringement. The Federal Circuit affirmed the jury verdict. U.S. Philips Corp. v. ATI Technologies, Inc. (S.D.N.Y.). Represented Philips (on behalf of NXP) against ATI for infringement of a patent essential to the practice of the l2c bus specification. The case was settled on behalf of NXP for a substantial confidential payment.
Fifth Third Bank. Represented Fifth Third Bank in a breach of contract case brought against the government for client Fifth Third Bank. Two trials over five weeks and two appeals. Was lead counsel in securing a $76 million judgment for our client. This Court had never awarded more than $75,000 for any plaintiff against the government. SPA Syspatronic v. United States. Represented NXP Semiconductor and Gemalto Inc. with respect to SPA's claim of patent infringement against the U.S. Government in its use of epassports and secure ID cards for sensitive government employees. The patent at issue relates to electronic security measures on semiconductors used in such products. Impulse Technology, Ltd. v. Microsoft et al., Civil Action No. 1:11-cv-00586-GMS (D. Del.). Representing Impulse in assertion of seven patents against nine videogame makers for the Microsoft Kinect videogame system related to interactive exercise gaming technology. Masimo Corp. v. Philips Electronics North America Corp., Civil Action Nos. 1:09-cv-00090-LPS-MPT, 11-742-LPS-MPT. Representing Philips in two patent infringement cases on pulse oximetry algorithms involving 27 patents, fraud and antitrust counterclaims, and $1 Billion in claimed damages. Successfully narrowed the case to two patents and obtained a summary judgment of no willful infringement. In Re Neurografix (D. Mass.). Numerous pending cases alleging infringement of patents related to MRI's. Education The Catholic University of America, Columbus School of Law, JD, Catholic University Law Review, Editor (1969-1971) The City College of The City University of New York, BS, Chemical Engineering Admissions Maryland District of Columbia US Supreme Court US District Court for the District of Columbia US Court of Appeals for the First Circuit US Court of Appeals for the Third Circuit US Court of Appeals for the Fourth Circuit US Court of Appeals for the Sixth Circuit US Court of Appeals for the Ninth Circuit US Court of Federal Claims
US District Court for the District of Maryland US Patent and Trademark Office
Hon. Marilyn L. Huff Federal District Judge, US District Court for the Southern District of California Marilyn L. Huff was appointed in 1991 as a federal district judge for the Southern District of California and was Chief Judge from 1998 to 2005. She is one of the patent pilot judges participating in a 10 year pilot project designed to enhance expertise in patent cases among United States district judges. She is the president-elect of the Federal Judges Association, on the Judicial Advisory Board of the Association of Business Trial Attorneys and on the Executive Committee of the Louis Welsh chapter of the American Inns of Court. She is a member of the United States Judicial Conference Budget Committee and past member of the Standing Rules Committee, the Judicial Resources Committee, and the Ninth Circuit s Education Committee. She received her J.D. from the University of Michigan law school in 1976. She was in private practice in San Diego, California from 1976 to 1991, specializing in civil litigation. She has received the San Diego County Bar Association s awards for Legal Professional of the Year and Service to the Legal Profession.
John J. Tharp, Jr. United States District Judge, Northern District of Illinois Judge Tharp became a United States District Judge on June 4, 2012. On the recommendations of Senators Mark Kirk and Dick Durbin, President Obama nominated Judge Tharp for the Northern District bench on November 10, 2011, and his nomination was confirmed by the United States Senate on May 14, 2012. Before taking the bench, Judge Tharp was a partner in the law firm of Mayer Brown LLP specializing in securities litigation, enforcement actions, and investigations. Before joining Mayer Brown in 1997, Judge Tharp was an Assistant United States Attorney in Chicago, where he prosecuted a wide variety of criminal cases. Judge Tharp earned his J.D. from Northwestern University s School of Law and received his undergraduate degree from Duke University. He attended Duke on a Naval ROTC scholarship and served as an officer in the United States Marine Corps for five years before enrolling in law school. Immediately following law school, Judge Tharp clerked for the Honorable Joel M. Flaum on the United States Court of Appeals for the Seventh Circuit and worked at the law firm of Kirkland & Ellis for a short period before joining the U.S. Attorney s Office.
Theodore R. Essex Administrative Law Judge, US International Trade Commission Judge Essex served as an Administrative Law Judge at the Office of Medicare Hearings and Appeals in Cleveland, Ohio, from November 2006 until his United States International Trade Commission (USITC) appointment. He previously served as a consultant to the Compensation and Pension Service of the Department of Veterans Affairs in Washington, DC from 2005 to 2006. From 1985 to 2005, Judge Essex served in a variety of positions with the U.S. Air Force (USAF), from which he retired in 2005 as a Lt. Col. He was Chief of the General Torts Branch of AFLSA/JACT from 2002-2005. He served as Chief of Aviation Law with the Air Education and Training Command, USAF; as Deputy Staff Judge Advocate with the Air Intelligence Agency, USAF; as Chief, Operations Law and 3AF in the United Kingdom from 1996-1999; as well as numerous other positions. Judge Essex holds a Juris Doctor degree from The Ohio State University and a Bachelor of Arts Degree from Miami University in Oxford, Ohio. He is licensed in Louisiana and is a registered solicitor in England and Wales. Judge Essex is also a professorial lecturer in law at The George Washington University Law School. Judge Essex is the president of the Giles S. Rich American Inn of Court, a Professorial Lecturer in Law at George Washington University and a member of the Judges Committee for AIPLA. He serves on the on the Model Order Committee of the Court of Appeals for the Federal Circuit Advisory Council.