Paul C. Haughey

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San Francisco,  CA  U.S.A.
Phone415.273.4787

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Experience & Credentials
 

Practice Areas

  • Intellectual Property
  • Patent Prosecution & Counseling
  • Due Diligence
  • Transactional Intellectual Property
  • Patent Reexamination & Inter Partes Disputes
  • Patent Valuation
 
University University of California, Irvine, B.S., Electrical Engineering, 1976
 
Law SchoolUniversity of California, Hastings College of the Law, J.D., 1980 Order of the Coif
 
Admitted1980, California; U.S. Patent and Trademark Office
 
Biography

Paul Haughey counsels clients in all facets of intellectual property strategy, primarily in the patent area, with an emphasis on product clearances (right-to-use studies), Inter Partes Review under the America Invents Act, early phase litigation infringement and validity analysis for settlement evaluation, and acquisition due diligence. He also handles reexaminations, reissues and basic patent prosecution. He has guided clients in product design activities to avoid infringement problems.

With more than 25 years of patent experience, Mr. Haughey is familiar with a wide range of technologies, including Internet systems, software, financial systems, mobile phones, microprocessors, computer peripherals, analog and digital circuit design, optics and medical instrumentation.

Mr. Haughey has successfully filed reexaminations that allowed stays of litigation and cost savings for clients, making it financially viable to fight a patent. He has successfully convinced patent owners to significantly reduce settlement demands, or to drop infringement claims altogether against clients without the need for court or Patent Office proceedings.

Mr. Haughey previously worked as a corporate attorney working on financings. With that corporate understanding he is uniquely experienced to deal with patent infringement allegations on the eve of an IPO. He quickly investigated patent infringement allegations filed against a number of companies after filing with the SEC for an IPO, and successfully satisfied the underwriters with non-infringement opinions and appropriate prospectus language.

Prior to entering the field of law, Mr. Haughey was a circuit design engineer at Hughes Aircraft Company.

In 2012 and 2013, Mr. Haughey was recommended by Legal 500 US in the area of Patent Prosecution. He was recognized as a 2013 "IP Star" by Managing Intellectual Property magazine. Mr. Haughey was recognized by Legal Media Group in its 2013 Guide to the World's Leading Patent Practitioners.

Professional & Community Activities

American Bar Association

American Intellectual Property Law Association

Bar Association of San Francisco

San Francisco Patent and Trademark Law Association

Industries

Financial Services; Semiconductors & Electronics; Technology & Software; Telecommunications

Experience

Ex-parte reexam for Visa U.S.A. Inc., Prepared a draft ex-parte reexam for client Visa, against Restricted Spending Solutions Pat. 6,044,360. This patent related to spending limits on classes of goods and services in connection with periodic transfers from an account. Because of the limited attorney involvement in an ex-parte reexam, we instead provided the materials to litigation counsel, where it was used in a successful summary judgment motion of invalidity in 2010, with the litigation being dismissed in 2011.

Inter partes reexaminations for Logitech Inc., Successfully prosecuted to final rejections in 2012 three inter partes reexaminations on behalf of our client Logitech, at which time the underlying litigation involving these and other patents settled. The three patents were UEI Pat. 7,782,309, Pat. 7,821,504 and Pat. 7,821,505. The patents related to universal remote controls with both touch sensor gestures and button icons. The reexams involved successfully contesting hundreds of additional claims added by UEI during the reexams.

Inter Partes Review relating to Internet video calls, Successfully obtained the institution of Inter Partes Review of Pat. 6,108,704 with a holding of a reasonable likelihood of prevailing. The '704 patent relates to Internet video calls, and had survived previous ex parte reexamination and multiple litigations, including against Skype.

Patent reexamination for Austin Hughes Electronics Ltd., Successfully obtained a final determination for our client Austin Hughes Electronics Ltd., rejecting the claims in an inter partes reexamination of Epicenter Pat. 6,609,034 relating to server racks with KVM (Keyboard, Video, Mouse) switches. A successful stay of litigation was obtained.

Universal Electronics Inc. v. Logitech Inc. et al., Served as lead counsel for Logitech, a global leader in the development of innovative personal peripherals, in defense and counterclaims of a patent infringement action involving universal remote controls. Case settled.
Universal Elec., Inc. v. Logitech, Inc., et al., No. 11-1056 (C.D. Cal. filed July 15, 2011).

*Experience gained by attorney prior to joining Kilpatrick Townsend

 
ISLN906627097
 
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Office Information

Paul C. Haughey


San FranciscoCA 94111




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