Paul Haughey is a partner in the San Francisco office of Kilpatrick Townsend and counsels clients in all facets of intellectual property strategy, primarily in the patent area, with an emphasis on strategic counseling, patent valuations, patent opinions and Inter Partes Reviews under the America Invents Act. He has written nearly 100 patent opinions and has been deposed 6 times as an opinion witness. He has handled 10 inter partes reviews under the new America Invents Act. He also handles early phase litigation infringement and validity analysis for settlement evaluation, product clearances (right-to-use studies), and acquisition due diligence. He has guided clients in product design activities to avoid infringement problems.
With more than 30 years of patent experience, Mr. Haughey is familiar with a wide range of technologies, including Internet systems, software, blockchain technology, 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.
Mr. Haughey was listed in The Best Lawyers in America® for Patent Law in 2021 and the five years immediately preceding. He was recommended in 2019 and in 2015 and the three years prior by Legal 500 US in the area of Patent Prosecution. Mr. Haughey was recognized as an "IP Star" in 2020 and the seven years immediately preceding by Managing Intellectual Property magazine. He was recognized by Legal Media Group in its 2013 Guide to the World's Leading Patent Practitioners.
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.
IP due diligence for Visa's acquisition of Cybersource (2010), Playspan (2011), and Fundamo (2011).
Representing First Data in IPR challenges of two patents relating to RAID memory controllers. First Data v. Cardsoft (PTAB Case Nos.: IPR2014-00715, -00720, filed April/May 2014.)
Starbucks Corporation v. Kroy Holdings, LLC, IPR2015-00260.
Represented Oracle and another party in an IPR of a patent involved in litigation and directed to online encryption. This case was terminated after a favorable settlement was negotiated. Oracle et al. v. MAZ Technologies (PTAB Case No. IPR IPR2014-00472, filed March 1, 2014.)
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.
Handled 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.
Sony Network Entertainment International LLC v. William Grecia, IPR2015-00422.
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.
Began representing Unified Patents in IPRs in 2015 with the following IPRs:
-Unified Patents Inc. v. Finnavations LLC IPR2015-1209, relating to online transactions.
-Unified Patents Inc. v. Blitzsafe Texas, LLC IPR2016-00118 relating to car stereo Bluetooth interaction with mobile devices.
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University of California, Hastings College of the Law, J.D. (1980) Order of the Coif
University of California, Irvine, B.S., Electrical Engineering (1976)
U.S. Patent and Trademark Office
American Bar Association
American Intellectual Property Law Association
Bar Association of San Francisco
San Francisco Patent and Trademark Law Association
Volunteer for Community Legal Services in East Palo Alto & East Bay Community Law Center.
Supporter/sponsor of Eastside College Preparatory School in East Palo Alto & Earn.org, & United Cerebral Palsy
Spanish Conversation classes
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