JEAN-PAUL (J.P.) LAVALLEYE, Ph.D., is a member of the firm's Management Committee and Co-Chairs the Litigation and Opinions and Counseling practice groups. Mr. Lavalleye is actively involved in all areas of patent law, with particular emphasis on patent counseling and litigation.
Fluent in French and with several decades of experience successfully representing foreign companies within the U.S., Mr. Lavalleye is especially skilled at guiding foreign companies through the U.S. intellectual property system. Working with executives and attorneys based in Europe and Japan, Mr. Lavalleye draws upon his cultural understanding and expertise to counsel overseas clients on how to tactically and strategically protect their IP assets and their rights to commercialize their technologies within the U.S.
Mr. Lavalleye not only provides IP law guidance, he provides clients with business advice within the overall patent context. By developing business strategies that utilize patent protection methods, Mr. Lavalleye helps companies optimize the value of their IP assets and enhance their market position.
Additionally, Mr. Lavalleye counsels his clients on risk management and litigation avoidance, assessing the possibilities of patent infringement when companies launch new products or services. To this end, he evaluates his clients' product designs and suggests modifications to minimize the risk that they run afoul of competitor patents. When litigation is necessary, Mr. Lavalleye skillfully represents his clients, applying his litigation and negotiating experience and skills to resolve the conflict cost-effectively and in his clients' best interests.
Mr. Lavalleye is well versed in diverse technologies. Before practicing law, Mr. Lavalleye earned a Ph.D. in organic chemistry from the Massachusetts Institute of Technology (MIT). He also was a Harvard University research fellow, where he continued working with the renowned chemistry professor George Whitesides.
Widely regarded within the legal community for his IP expertise, Mr. Lavalleye often works collaboratively with other U.S. as well as non-U.S. law firms to assist their clients in navigating the intricacies of the United States Patent and Trademark Office (USPTO) in order to obtain patents and broad protection for their intellectual capital. Mr. Lavalleye lectures regularly on U.S. intellectual property litigation, reexamination/reissue strategies, legal developments and trends.
Professional Affiliations
American Association for the Advancement of Science
American Bar Association
American Chemical Society
American Intellectual Property Law Association (AIPLA)
Association of University Technology Managers
International Association for the Protection of Industrial Property (AIPPI)
New York Academy of Science
Experience
Representative Matters
Successfully represented French steelmakers Sollac and Ugine (then subsidiaries of Usinor, now Arcelor) against AK Steel's accusation that Sollac infringed six patents relating to aluminum coated stainless steel, which is highly desirable and profitable for automotive applications due to its appearance and corrosion resistance. Despite the daunting task of defending against this six-patent attack in Ohio, AK's home state and the heart of America's steel industry, Sollac defeated AK with respect to all six patents after district court and appellate court proceedings. Due to the strength of this victory, Sollac then received a monetary settlement from patentee AK to resolve a related antitrust countersuit. AK Steel v. Sollac.
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. Saint-Gobain v. Xinyi (N.D. Ohio Nov. 10, 2009).
Obtained three summary judgment motions filed on behalf of client, French steel maker Usinor S.A., which completely defeated all of the infringement contentions of AK Steel Corporation of Middletown, Ohio, in two separate patent infringement lawsuits brought by AK Steel and its predecessor, Armco, Inc. involving the Usinor AL409 product.
Accolades
Goodwin Medal for excellence in teaching, awarded while a member of the MIT academic staff
Resources
News
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
Japanese Patent Office Deputy Commissioner and Colleagues Visit Oblon, Spivak
Thursday, January 17, 2008
Oblon, Spivak's Moot Court Room Featured on the March 2005 Cover of The Lawyers Magazine
Thursday, March 31, 2005
Oblon, Spivak to Argue Three CAFC Cases In One Week
Thursday, June 26, 2003
Oblon, Spivak Wins Six-Patent Ohio Lawsuits For French Steel Maker Usinor S.A. -- Summary Judgment Motions Granted; Court Rules For Usinor On All Asserted Patents
Tuesday, July 30, 2002
Publications
A Litigation Success Story: The AK Steel v. Sollac Case
Tuesday, March 29, 2005
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
Swiss Pharma Licensing Group Meeting
Sunday, January 21, 2007