BARRY J. HERMAN is a member of the firm's Litigation Management Team and Co-Chair of the ITC Litigation practice group, which he helped create and develop. A chemical engineer by training, Mr. Herman litigates matters across a wide array of technologies in the chemical, mechanical, and electrical arts. He represents both domestic and foreign clients in a full range of patent, trademark and other intellectual property disputes before the United States Federal District Courts and the International Trade Commission (ITC).
Mr. Herman served as first-chair litigator in a landmark patent infringement case for client Saint-Gobain, one of the world's largest glass companies and the leading windshield manufacturer for European cars. Saint-Gobain won a $10.9 million damages award against a Chinese windshield manufacturer, and the jury found the infringement was willful. The district court subsequently doubled the damages award and awarded Saint-Gobain attorney fees and costs for a total award of over $24 million.
Mr. Herman is currently serving as lead counsel for Solvay in a patent infringement suit against Honeywell in the United States District Court for Delaware after a remand from the Federal Circuit. In a seminal case involving the applicability of Section 102(g), Mr. Herman successfully argued that United States reproduction of technology conceived overseas does not qualify a United States manufacturer as a prior inventor under the statute. Solvay S.A. v. Honeywell Int'l, Inc., 622 F.3d 1367 (Fed. Cir. 2010). He has also represented other industry leaders such as ArcelorMittal, SMC, and Mirowski Family Ventures in various matters in district courts across the country and before the ITC.
While his focus is litigation, Mr. Herman's practice also includes drafting opinions and advising clients with respect to patent portfolio development, management and optimization.
Prior to joining Oblon, Spivak, Mr. Herman worked at a large general practice firm in Washington, D.C., where he practiced patent litigation. Prior to law school, he worked for several years as a chemical engineer, first in a hydrosulfuric acid manufacturing plant, and then in various oil refineries on the East Coast, where he specialized in anti-foulant and anti-corrosion chemical technology.
In early 2009, Mr. Herman was instrumental in launching the leading legal blog devoted exclusively to intellectual property actions in the ITC-the ITC 337 Law Blog. The site provides insights about the ITC's daily activities and significant decisions, and also provides practice tips to ITC practitioners and in-house counsel who are interested in intellectual property matters at the ITC.
Professional Affiliations
American Bar Association
American Intellectual Property Law Association (AIPLA)
Federal Circuit Bar Association
ITC Trial Lawyers Association
Lehigh Lawyers Association, Board of Directors
Experience
Representative Matters
Serving as first chair, represented Saint-Gobain in a patent infringement action involving windshields in which the jury returned a $10.9 million verdict in favor of Saint-Gobain and found that Xinyi willfully infringed the two patents-in-suit. On March 31, 2010 Judge Sara Lioi doubled the damages Xinyi must pay Saint-Gobain Autover for its willful infringement of Saint-Gobain's patents, and ordered payment of attorney fees and costs for a total award of over $24 million. Saint-Gobain v. Xinyi, No. 1:06-cv-2781 (N.D. Ohio 2010).
Represented SMC in a patent infringement action brought by Tokyo Keiso concerning an ultrasonic flow meter. The district court held the patent invalid as obvious on summary judgment and the Federal Circuit affirmed the holding. Tokyo Keiso v. SMC Corporation, 2009 U.S. App. LEXIS 302 (Fed. Cir. Jan. 9, 2009)
Currently representing SMC in a § 337 proceeding before the ITC involving connectors used in pneumatic control systems. SMC prevailed at the ITC on non-infringement. The case is currently on remand after a decision by the Federal Circuit. In the Matter of Certain Connecting Devices, 337-TA-587.
Represented co-plaintiff MFV in patent infringement action concerning an implantable cardioverter defibrillator. After the district court held the patent infringed but invalid, the Federal Circuit reversed the invalidity finding and found in favor of the plaintiffs, remanding the case to the district court for a determination of damages. Cardiac Pacemakers, Inc. and Mirowski Family Ventures, LLC v. St. Jude Medical, 576 F.3d 1348 (Fed. Cir. 2009).
Accolades
Best Lawyers in America (2012)
Martindale-Hubbell® AV® Preeminent™ 4.9 out of 5
Resources
News
Seven Oblon Spivak Attorneys Named To Best Lawyers 2012
Thursday, September 15, 2011
Oblon, Spivak's Barry Herman quoted in Managing Intellectual Property (MIP) on Global-Tech v. SEB
Thursday, February 24, 2011
Oblon, Spivak's Barry Herman quoted in Law360 on Global-Tech v. SEB
Wednesday, February 23, 2011
Oblon, Spivak's Barry Herman quoted in National Law Journal on Solvay S.A. v. Honeywell International Inc.
Wednesday, October 20, 2010
Federal Circuit Rules for Solvay Against Honeywell in Patent Infringement Lawsuit
Wednesday, October 13, 2010
Saint-Gobain Wins Enhanced Damages of $21.9 Million, Plus Attorney Fees and Costs Against Xinyi
Wednesday, March 31, 2010
Saint-Gobain Wins $10.9 Million Verdict Against Xinyi
Wednesday, November 11, 2009
Oblon, Spivak Forms Two New Practice Groups
Thursday, March 12, 2009
Oblon, Spivak Launches ITC 337 Law Blog
Wednesday, February 11, 2009
Federal Circuit Finds In Favor Of SMC Affirming Summary Judgment Of Obviousness
Monday, January 12, 2009
Publications
Patent Trolls Hiding in the Intl. Trade Commission?
Friday, April 13, 2012
What Non-US Companies Should Know About the ITC
Friday, April 3, 2009
There Are Limits to How Tricky One's Questioning Can Be
Wednesday, February 22, 2006
Events
Current Trends in Intellectual Property Litigation
Monday, June 8, 2009
Current Trends in Intellectual Property Litigation
Monday, June 1, 2009
Current Trends in Intellectual Property Litigation
Wednesday, May 27, 2009
Blog
Non-Practicing Entity Walker Digital Files New 337 Complaint Regarding Certain Blu-Ray Disc Players, Relying Solely on Licensing Activities For Alleged Domestic Industry
Thursday, December 08, 2011
On December 5, 2011, Walker Digital, LLC ("Walker Digital") filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.
Federal Circuit Reverses and Remands in Coaxial Cable Connectors Appeal (2010-1373)
Thursday, April 28, 2011
On April 28, 2011, the Federal Circuit issued a non-precedential opinion in John Mezzalingua Associates, Inc. (d/b/a PPC, Inc.) v. Int'l Trade Comm'n, No. 2010-1373. This was an appeal from the ITC's final determination in Certain Coaxial Cable Connectors...
Federal Circuit Affirms in SiRF Appeal (2009-1262)
Monday, April 12, 2010
Further to our October 29, 2009 post, on April 12, 2010, the Federal Circuit issued its opinion in SiRF Technology, Inc. v. ITC...
ITC Grants Amgen's Motion For Partial Termination And Requests Additional Briefing In Certain Products Containing Recombinant Human Erythropoietin (337-TA-568)
Thursday, April 08, 2010
On April 6, 2010, the ITC issued a notice granting Amgen, Inc.'s motion for partial termination of the investigation in Certain Products and Pharmaceutical Compositions Containing Recombinant Human Erythropoietin (Inv. No. 337-TA-568).