First Admitted: 1999, New York

Professional Webpage: https://www.hudnelllaw.com/attorney/lewis-e-hudnell-iii/

Bar/Professional Activity:

Western District of Texas
Western District of New York
Eastern District of Texas
Supreme Court of the United States
United States Patent and Trademark Office, 2002
Court of Appeals for the Federal Circuit
Eastern District of New York
Northern District of California
Member, California Minority Counsel Program
California, 2002
Southern District of New York
Central District of California
Member, American Bar Association
Member, National Bar Association
New York, 1999
Court of Appeals for the Second Circuit

Verdicts/Settlements (Case Results):

Softvault Systems, Inc. v. Volvo Car USA, LLC (C.D. Cal.), 2020
Michael Grecco Productions, Inc. v. Ranker, Inc. (C.D. Cal.), 2020
Opticurrent, LLC v. Power Integrations (N.D. Cal.), 2019
Phenix Longhorn, LLC v. Wistron Corporation (E.D. Tx. and PTAB) , 2019
Next Lighting Corporation v. Cree, Inc. (N.D. Cal.), 2019
MEC Resources, LLC v. Apple Inc. (N.D. Cal. and PTAB), 2018
Talsk Research Inc. v. Evernote Corporation (N.D. Cal.), 2018
Phenix, LLC v. Integrated Memory Logic et al. (E.D. Tx.), 2016
Worldwide Home Products, Inc. v. Time, Inc. et al. (S.D.N.Y.), 2013
RPost Holdings, Inc. et al. v. Readnotify.com et al. (E.D. Tx.), 2013
RPost Holdings, Inc. et al. v. Responsys, Inc. (E.D. Tx.), 2013
RPost Holdings, Inc. et al. v. Exact Target, Inc. (E.D. Tx.), 2013
RPost Holdings, Inc. et al. v. Zix Corporation (E.D. Tx.), 2013
RPost Holdings, Inc. et al. v. Teleraix, Inc. (E.D. Va.), 2012
RPost Holdings, Inc. et al. v. CanadaPost Corporation (E.D. Tx.), 2012
Main Hastings, LLC v. SanDisk Corporation (N.D. Cal.), 2011
Samsung Electronics Co., Ltd. v. Renesas Technology Corporation et al. (ITC)
Japan Cash Machine et al. v. MEI, Inc. (D. NV.)
Mars et al. v. Japan Cash Machine et al. (D.N.J.)
Seagate Technology LLC, v. Cornice, Inc. (ITC and D.Del.)
DataTreasury Corp. v. Bank of America Corp. (E.D. Tx.)
Millennium, LP v. ScanSoft, Inc. (S.D.N.Y.)
Highland Industries, Inc. v. Toyobo Co., Inc. (M.D.N.C.)
Web Chang v. Atmel Corp. (E.D. Tx.)
Plasma Physics Co. v. LSI Logic Corp. (E.D.N.Y.)
Cisco Systems Inc., v. Huawei Technologies, Co., Ltd. (E.D. Tex.)
Amazon.com, Inc. v. BarnesandNoble.com, Inc. (W.D. Wash.)

Videos:

Do not let the daunting task of starting your own litigation practice deter the entrepreneur in you from branching out on your own. In this webinar, you will learn strategies for starting your own litigation practice, getting your first case, handling large and complex matters, growing your practice, and going toe-to-toe with big firms., Punching Above Your Weight: Strategies for Building a Successful Small Firm Litigation Practice with a Big Firm Presence, 2020

Representative Clients:

US Inventor, 2020
Leo India Films, Ltd., 2019
Phenix Longhorn, LLC, 2018
DoDots Licensing Solutions, LLC, 2020
Lotus Five Star, Ltd., 2019
Endonovo Therapeutics, Inc., 2019
Ranker, Inc., 2019
VOIP-Pal.com, Inc., 2019
Kannuu Pty., Ltd., 2019
Volvo Car USA, LLC, 2019

Special Licenses/Certifications:

Licensed California Realtor, 2018

Honors/Awards:

AV® Preeminent, Martindale-Hubbell®

Educational Background:

Cornell University, Bachelor of Science, Operations Research and Industrial Engineering, 1995

White Papers:

Don't let the daunting task of starting your own litigation practice deter the entrepreneur in you from branching out on your own. In this free guidebook, I cover strategies for starting your own practice, getting your first case, handling large and complex matters, growing your practice, and going toe-to-toe with big firms., Punching Above Your Weight: Strategies for Building a Successful Small Firm Litigation Practice with a Big Firm Presence, 2020

Scholarly Lectures/Writings:

Do not let the daunting task of starting your own litigation practice deter the entrepreneur in you from branching out on your own. In this webinar, you will learn strategies for starting your own litigation practice, getting your first case, handling large and complex matters, growing your practice, and going toe-to-toe with big firms., Speaker, Strategies for Building a Successful Small Firm Litigation Practice, Continuing Education of the Bar, 2020
Educate in-house counsel on the breadth/depth of services that small-mid sized firms can provide to their clients, Moderator, Smallish: Working at or with Small and Mid-sized Law Firms, California Minority Council Program, 2020
After the June 2014 Supreme Court's decision in Alice v. CLS Bank, numerous patent eligibility cases have flooded district courts, the Federal Circuit and impacted practice before the U.S. Patent Trademark Office (USPTO). Over the coming weeks and months, patent practitioners and industry anticipate a continuing number of significant patent eligibility decisions that will further reshape and remodel the landscape of patent eligibility law. Mr. Hudnell participated on a panel of key thought leaders and analyzed the recent trends and developments surrounding patent eligibility determinations in a Post-Alice landscape., Speaker, Patent Eligibility Determination in a Post-Alice World, The Knowledge Group Live Webcast, 2017
Speaker, Developing and Implementing Successful Corporate IP Strategies, National Bar Association, 2012
Speaker, Patent Portfolio Transfers: Lessons Learned from Google’s Acquisition of Motorola Mobility, Minority Corporate Counsel Association, 2012
The economic recession is not the only downturn troubling the financial industry. Another downturn is happening in litigations involving business method patents — a principal form of intellectual property for many financial-services companies — following last year’s Federal Circuit In re Bilski decision., Author, The Closing Bell for Business Method Patents?, Law360, 2009
The Closing Bell for Business Method Patents?, National Bar Association Annual Convention, San Diego, California, 2009
Managing the Costs of Outside Counsel Effectively, World Research Group’s 6th Annual Patents and the Financial Services Industry Conference, 2009
In re Bilski and the Future of the Business Method Patent, IP Law Review Conference, New York, New York, 2008
Patent Licensing and Enforcement Companies and their Societal Impact: A Study of the Model and What Companies Need to Know to Be Prepared, National Bar Association Annual Convention, Atlanta, Georgia, 2007
The Current Landscape in Intellectual Property Law as it Affects the Financial Services Industry, World Research Group's 4th Annual Patenting Business Methods in the Financial Services Industry Conference, New York, New York, 2007
Update on Recent Case Law and its Impact on the Intellectual Property Marketplace, Ocean Tomo's Spring 2007 Live Intellectual Property Auction, Chicago, Illinois, 2007
Business Methods Patents: The Need For Legislative and Administrative Reform, World Research Group's 3rd Annual Patenting Business Methods in the Financial Services Industry Conference, New York, New York, 2006
For accused infringers in software patent cases, the year since the U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank has been like a fantasy. District courts have used Alice to invalidate software patents based on a litigation defense whose statutory basis is nonexistent., Author, The Wonderland of Patent Ineligibility as Litigation Defense, Law360, 2015
The fast changing Intellectual Property (IP) landscape creates a more complex environment for companies to cope up with. Such complexity creates numerous challenges on how companies handle their intellectual capital assets and to ensure that they would produce a sustainable competitive advantage over their competitors. Mr. Hudnell participated on a panel of key thought leaders to present their findings and best practices that would be able to adopt to the Changing Landscape of Intellectual Property Strategies., Speaker, The Changing Landscape of Intellectual Property Strategies: What Every Firm Needs to Know, The Knowledge Group Live Webcast, 2015
In following the U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank International, patent owners and applicants must acknowledge the change brought about by the Alice case. Mr. Hudnell participated on a panel of key thought leaders and practitioners entitled Patentability of Software Patents: Emerging Strategies for Attorneys in 2016., Speaker, Patentability of Software Patents: Emerging Strategies for Attorneys in 2016, The Knowledge Group Live Webcast, 2016
Presented on best practices and resources for law firm management and operations, case management, marketing and business development, and other aspects of running a minority-owned firm in today’s market., Speaker, Strategies and Tools for Minority-Owned Law Firm Success, California Minority Counsel Program, 2017
Although the U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank Int’l set forth a two-part test for determining patent eligibility, both the Supreme Court and the Federal Circuit have drawn on other sections of the patent statute to determine eligibility. As a result, in many instances, patent-eligibility determinations have resembled patentability determinations. By blending different inquiries under the patent statute, Alice and its progeny have made determining what constitutes patent-eligible subject matter unclear and arguably made the patent system weaker., Author, The Post-Alice Blend Of Eligibility And Patentability, Law360, 2017
In the later part of 2017, the U.S. Court of Appeals for the Federal Circuit made clear that the Supreme Court’s decision in TC Heartland v. Kraft Foods dramatically changed the patent venue landscape. An alleged infringer may now argue improper venue “in a judicial district where it is subject to a court’s personal jurisdiction but where it is not incorporated and has no regular and established place of business.” As a result of this Federal Circuit opinion and many other post-TC Heartland decisions, venue is becoming a much more complicated issue. Mr. Hudnell particpated in a panel of key thought leaders they delve into an in-depth analysis of the current trends and recent court rulings involving determination of Patent Venue in light of the TC Heartland decision. , Speaker, Determining Patent Venue in the Light of TC Heartland Decision, The Knowledge Group Live Webcast, 2018
For the first three years following the Supreme Court issued its landmark decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l. , the U.S. Court of Appeals for the Federal Circuit had overwhelming ruled against the patent owner on eligibility challenges. Many have argued that the risk of having a patent declared ineligible under Alice has discouraged investments in innovation, particularly for software companies, and weakened the U.S. patent system. But a recent string of Federal Circuit decisions in favor of patent owners, all issued in 2018, may provide new hope for patent owners and restore balance to the patent-eligibility landscape. Mr. Hudnell participated in a discussion analyzing the recent developments surrounding this important topic and provided practical insight for in-house decision makers on the impact of these significant developments., Speaker, From Wonderland Back to Reality: A Practical Look at the Recent Changes in Patent-eligibility Jurisprudence, Select Counsel In-House Focus Presentation, 2018

Lewis E. Hudnell, III