Overview

Tiffany Williams is a registered patent attorney, who focuses her practice on counseling public and private companies in areas of domestic and foreign patent portfolio management, intellectual property evaluation and licensing, and patent litigation. Ms. Williams practices in a wide range of technologies, such as aerospace, athletic equipment, software, telecommunications, Internet technology, medical devices, and architectural products.

In her practice, Ms. Williams works intimately with in-house patent counsel and the inventors to understand inventions and their importance in the company’s overall business strategy. Through these efforts, she counsels key personnel regarding tactics to protect their innovations and achieve corporate goals.

Ms. Williams has been involved in all aspects of trial activity, including motion practice, preparing expert witnesses, conducting depositions, and preparing trial outlines and exhibits. She also has substantial experience in successfully attacking the validity of patents before the U.S. Patent Trial and Appeal Board through both a variety of post-grant mechanisms, including both inter partes and ex parte reexamination procedures, as well as the new inter partes review procedure.

Prior to practicing law, Ms. Williams worked as an engineer and certified Six Sigma Black Belt for eight years in the coated paper, plastics, and ceiling tile industries. In 2006, she competed in the National Moot Court Competition, Region V and received first place, best oralist, best brief.

Ms. Williams has been named as one of Georgia Trend's 2012 "Legal Elite" in the area of Intellectual Property Law. She was recognized in 2017 and the four years immediately preceding as a Georgia "Rising Star" in the area of Intellectual Property by Super Lawyers magazine.

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Experience

Represents numerous defense contractors and a major government defense organization in obtaining and exploiting patents in the United States and abroad.

Achieved early favorable resolution of patent infringement claim brought against adidas America for athletic footwear. Cummings v. adidas USA, No. 1:08-cv-9860 (S.D.N.Y. filed Nov. 14, 2008).

Represented Oldcastle Inc. in comprehensive patent and trademark portfolio management, including counsel and administration relative to both litigation and non-contentious matters. Provided strategic counsel relative to patent portfolio management and equip key personnel to make calculated decisions relative to the pursuit and maintenance of patent protection. Worked closely with the technical and business personnel in various Oldcastle companies to form strategies to protect their innovations and achieve corporate goals.

Represents adidas in providing comprehensive and aggressive patent protection. The firm works intimately with in-house patent counsel and the inventors to understand the inventions and their importance in the company’s overall business strategy. We routinely conduct patentability and clearance searching to assist the client in avoiding potential patent infringement and to help us identify the truly novel features of our client’s inventions and focus prosecution on those features. Through these efforts, we provide strategic counsel to key personnel regarding strategies to protect their innovations and achieve corporate goals.

Over the past several years, has drafted and/or negotiated the majority of IP agreements entered into by the client, working closely with in-house IP counsel and business leaders in connection with the same; successfully defended multiple patent infringement cases brought against the company.

Represents one of the world's leading providers of lighting fixtures in providing comprehensive and aggressive patent protection. The firm works intimately with in-house patent counsel and the inventors to understand the inventions and their importance in the company’s overall business strategy. We endeavor to secure multiple layers of patent protection for key products and consider both utility and design patents when deciding how best to protect a product. We routinely conduct patentability and clearance searching so that we have a clear understanding of the state of the art. Such searching assists the client in avoiding potential patent infringement and helps us identify the truly novel features of our clients' inventions and focus prosecution on those features. By streamlining the patenting process, we control costs and obtain patents as quickly as possible for our client so that they may be put to good use.

The firm represented adidas AG in a successful petition for inter partes review ("IPR") of U.S. Patent No. 7,347,011 assigned to Nike, Inc. (Case Number IPR2013-00067). In response, Nike canceled all issued claims in favor of proposed new claims. In 2014, the USPTO Patent Trial & Appeal Board determined that all of the proposed new claims were invalid. In 2015, the Federal Circuit affirmed the Board's decision in part, and has remanded to the Board to formally address evidence of secondary considerations.

Representing third party requester in challenging a significant patent portfolio relating to binders for formaldehyde-free insulation products through multiple inter partes and ex parte reexaminations. The examiner agreed that our client’s prior patents and publications were invalidating prior art, and ordered reexamination of each patent based on the client’s prior art references. The cases are currently on appeal to the United States Patent and Trademark Office Patent Trial and Appeal Board.

Represents Global Green Power, Inc. in corporate and intellectual property matters relating to the production of electricity generators powered by alternative energy sources.

Provide patent procurement and counseling services to Zodiac Aerospace, a world leader in aerospace equipment and systems for commercial, regional and business aircraft, as well as helicopters and space applications. The firm works intimately with in-house patent counsel and the inventors to understand the inventions and their importance in the company’s overall business strategy. Through these efforts, we take an active role in shaping the company’s overall patent and trademark strategy, including identifying and protecting innovations, as well as evaluating and designing around third-party intellectual property rights.

Defended ScentAir against competitor Prolitec in E.D. Wisconsin patent infringement case filed in 2012 related to commercial scent diffusion products (Case No. 12-CV-483-RTR). Successfully petitioned for inter partes review of both patents-in-suit, resulting in stay of litigation in 2013. In 2014 the USPTO Patent Trial & Appeal Board invalidated both patents and denied Prolitec's motion to amend. The Federal Circuit upheld both decisions in 2015. http://www.law360.com/articles/734448/fed-circ-backs-ptab-s-air-freshener-patent-invalidation

The firm served as lead counsel on behalf of Chrysler Group and Mercedes-Benz USA LLC in connection with a string of successes in the United States District Court, Western District of Wisconsin and the United States District Court, Eastern District of Texas against related entities Orion, Taurus and ST Sales Tech. The plaintiff entities, who had asserted several patents against Chrysler and Mercedes after a settlement agreement was in place, were put on the defensive when we asserted counterclaims for breach of a previous settlement agreement. The United States District Court, Western District of Wisconsin granted summary judgment for Chrysler and MBUSA finding non-infringement, invalidity and dismissing all the patent-related claims. Later a jury returned a verdict on liability in favor of Chrysler and MBUSA on the breach of contract claims. After a finding that the plaintiff had not acted in good faith, the court then awarded contract damages and legal fees. Related suits were later dismissed. The Federal Circuit affirmed the finding of no liability and the award of attorney fees to our client. (Judge Crabb and Judge Davis). Taurus IP, LLC v. Chrysler, LLC and Mercedes-Benz USA, LLC, No. 07-0158 (W.D. Wis. filed Mar. 20, 2007); Orion IP, LLC v. DaimlerChrysler (E.D. Tex.) and Orion IP, LLC v. MBUSA (E.D. Tex.).

Counselled petitioner ScentAir in 2013 inter partes review challenging validity as to two patents of competitor Prolitec related to liquid diffusion methods and systems. The USPTO's Patent Trial and Appeal Board ruled in favor of client ScentAir in 2014, finding all challenged claims unpatentable. The Federal Circuit affirmed both rulings in 2015.
U.S. Patent and Trademark Office Patent Trial and Appeal Board, Case Numbers IPR2013-00179 and IPR2013-00180.
U.S. Court of Appeals for the Federal Circuit, Appeal Nos. 2015-1017 and 2015-1020. http://www.law360.com/articles/734448/fed-circ-backs-ptab-s-air-freshener-patent-invalidation

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Education

Mercer University Walter F. George School of Law, J.D. (2007) magna cum laude

Georgia Institute of Technology, B.S., Chemical Engineering (1996) summa cum laude

Admissions

Georgia (2007)

Court Admissions

U.S. Patent and Trademark Office (2006)

U.S. District Court for the Northern District of Georgia (2008)

Georgia Court of Appeals (2011)

Georgia Supreme Court (2011)

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Professional & Community Activities

Metropolitan Counseling Services, Co-Chair and Board Member

State Bar of Georgia, Intellectual Property Section, Litigation Committee, Member

State Bar of Georgia, Intellectual Property Section, Patent Committee, Member

Association of Corporate Counsel, Intellectual Property Committee, Quick Counsel Publication Contributor and Liaison

Atlanta Intellectual Property Inn of Court, Member

Federal Circuit Bar Society, Member

Professional Women’s Information Network (ProWIN), Member

Georgia Tech Alumni Association, Member and Student Mentor

Georgia Tech Bar Association, Member

Metro Atlanta Public Schools, Volunteer

Cobb County Youth Sports, Volunteer

Sunday School Teaching Team

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