IP Due Diligence
International Dispute Resolution
Patent & Trade Secret Litigation
Patent Preparation & Prosecution
Trademark & Copyright Protection
U.S. Supreme Court
U.S. District Court, Southern District of New York
U.S. Court of Appeals, 2nd Circuit
U.S. District Court, Eastern District of New York
U.S. Patent and Trademark Office
New York University School of Law - J.D.
New York University - B.S., cum laude
Christopher Hughes is the head of Cadwalader's Intellectual Property Practice. Chris has more than 40 years’ experience in complex patent, trade secret, and trademark trials and litigation, as well as licensing, intellectual property counseling and IP due diligence in corporate transactions, bankruptcies, etc. Chris has been particularly successful in spearheading dispositive motions and Markman hearings, which result in early, successful terminations of cases. Drawing on his extensive litigation experience and (early-career) experience of preparing and prosecuting patent applications, Chris also provides strategic counseling for clients on key patent acquisition and avoidance efforts, and advises litigation funding companies on the viability of potential patent litigation funding. His experience spans myriad industries, including computer hardware and software, cellular phones and mobile technology, semiconductors, consumer products e-commerce and financial services matters, and a variety of sophisticated medical devices as well as alternative energy technology such as wind turbine and other renewable energy systems. Chris has also spear-headed efforts by luxury goods and consumer products companies to protect and enforce their valuable trademarks and trade-dress rights through anti-counterfeiting and infringement actions in courts and before U.S. Customs.
He has represented clients in patent litigation and trials in Federal District Courts, in the ITC and in arbitrations before WIPO tribunals as well as trade secret enforcement actions in state and federal court. For example, he has represented IBM in patent litigations in several U.S. district courts and in the ITC on a variety of computer software and hardware technologies and has represented Qualcomm in district court litigation. He also represented Priceline.com in litigation involving the famous "Priceline Patent" and has handled patent infringement actions regarding cardiovascular stent technologies on behalf of Medinol Ltd. and on orthopedic implants for Stryker/Osteonics. He has been appointed the Federal District Court Special Master for the purpose of assisting with complex discovery issues and motions in limine in computer technologies and has been serving on the District of Delaware IP Law Advisory Committee.
Chris' international experience includes coordinating patent infringement trials and hearings throughout Europe (including trials seeking preliminary relief and cross-border injunctions), as well as nullity, cancellation, and opposition proceedings on important patent rights in European courts and the EPO. In these matters, he has coordinated the corresponding activities in the United States with respect to the counterpart patent litigations throughout Europe.
He has handled significant matters for AT&T Corporation, Eastman Kodak Company, Heidelberger Druckmaschinen AG, IBM Corporation, Lucent Technologies, Medinol, Ltd., Osteonics Corporation, Priceline.com, Qualcomm, Robert Bosch GmbH, Stryker Corporation and Symbol Technologies, Inc., among others.
Chris has been elected as a Fellow of the American Bar Foundation and has been consistently recognized as an outstanding attorney by numerous peer-review publications, including:
- Benchmark Litigation: The Guide to America’s Leading Litigation Firms and Attorneys (Designated a national "Litigation Star" since 2010)
- Chambers USA: America’s Leading Lawyers for Business
- Chambers Global
- The Best Lawyers in America (Distinguished 10-Year Designation)
- United States Lawyer Rankings (ranked first in the Intellectual Property category since 2012; named among the top 10 since 2008)
- The Legal 500 US (since 2014)
- Super Lawyers (5-Year Designation, Blue Ribbon Panelist)
- The World's Leading Patent Litigators (IAM - Publications)
- Managing Intellectual Property: IP Stars (each year since the inaugural issue in 2012) (Euromoney)
- LMG Life Sciences 2012 (Selected as a "Life Sciences Star" in the publication's inaugural edition) (Euromoney)
- Guide to the World's Leading Patent Law Experts (Legal Media Group)
- The Corporate America Legal Elite 2015 (Best for IP Due Diligence - New York)
A frequent lecturer, Chris has spoken throughout the U.S., Japan, China, and Korea on such topics as:
- Summary Judgment After Berkheimer; IPO Chat Channel (webinar; 01/31/19)
- A Search For The Best Practices: Conflict Solution Disputes - Litigation, Arbitration and Trans-Atlantic Comparisons; Joint Program by LES-Germany, WIPO and Federal Circuit Bar Association (Germany; 5/18/11)
- Claim Construction--International Perspectives; Fordham IP Law Institute (New York City; 4/28/11)
- Presenting An Effective Markman Case - Winning Strategy For Managing A Pivotal Point in Patent Litigation
- ACI Medical Device Patent Litigation Program (New York City; 1/31/11)
- Panelist: High Tech Miracle -The American-Israeli Chamber of Commerce and Industry Program (New York City, 2/1/11)
- Strategies for Defending (and Advising) Respondents in ITC Investigations (Forum on Foreign Intellectual Property-Related Issues, Beijing - 2010)
- Best Practices for Managing IP in the US (Forum on Foreign Intellectual Property-Related Issues, Suzhou - 2010)
- Patent Trials in WIPO Arbitrations (Managing Intellectual Property China-International IP Forum, Beijing - 2010)
- Strategies for Defending in "Rocket Docket" Jurisdictions (Suzhou Forum - 2010)
- Key Patent Issues for 2010 (Annual Dental Convention at Javits Convention Center)
- Impact of the U.S. Supreme Court's decision in eBay on injunctions in patent cases (2007 AIPLA Annual Meeting)
- Attorney-client privilege
- Contributory and induced infringement
- Means-plus-function claim elements
- Various aspects of Markman claim construction proceedings
- The doctrine of equivalents, including the impact of the Federal Circuit and U.S. Supreme Court decisions in the Festo case
- U.S. trade secret law
- "New Patent Litigation Tactics for the Post-Festo World" (Lawcast presentation)
- "Strategies For Litigating Against Patent Holding Companies" (AIPLA 2004 Spring Meeting)
- "Securing Ownership of Employee Innovations" (2004 IP Strategies in Deals Conference)
- "Protecting and Embracing Your IP" (2004 IP Strategies in Deals Conference)
Chris has authored numerous articles on the foregoing topics, and, more recently, co-authored the following articles, "Product-By-Process Patent Claims: Contrasting United States and Europe," New York Law Journal, (2009, co-authored with Bert Oosting); "Healthcare Statute Signals Major Change for Biosimilar Products," IAM Life Sciences 250, (2010, co-authored with Michael P. Dougherty); "Patentable Subject Matter I the US: Past, Present and Future," International Asset Management Magazine(2009, co-authored with Daniel Melman); "Doctrine of Equivalents: Protection Beyond the Literal Patent Claims," Intellectual Asset Management Magazine(2008, co-authored with Regina Lutz, and cited by at least one commentator as an "extremely useful" explanation of the concept); "Post-'e-Bay' Injunctions: The Scoreboard and the Trend," New York Law Journal, Outside Counsel (2008, co-authored with Avshalom Yotam).
Chris is Past President of the New York Intellectual Property Law Association (2007-08), where he has served on the Board of Directors since 2001, and a member of the American Intellectual Property Law Association; Licensing Executives Society; American Judicature Society; Intellectual Property Owners; New York State Bar Association, where he is a member of the Litigation and Intellectual Property Sections; and American Bar Association, where he is also a member of the Litigation and Intellectual Property Sections. He is also a founding Board Member of the New York University Lawyer Alumni Mentoring Program (LAMP) and serves on the Executive Advisory Board (1998 to date). He served as an adjunct instructor at New York Law School from 1980 to 1982.
A graduate of the New York University School of Engineering and Science, Chris received his B.S., cum laude, and was a member of Tau Beta Pi and Sigma Gamma Tau Honor Societies, a recipient of the Founder's Day Award, and a member of the National Fraternity Hall of Fame. He received his J.D. from New York University School of Law, where he was awarded the Donald Brown Fellowship in Patent Law, served as a member of the Moot Court Executive Board, and was a co-author of the Patent Law Annual Survey of American Law (New York University, 1972-73).
Chris is admitted to practice in New York and before the U.S. District Courts for the Southern and Eastern Districts of New York, the U.S. Courts of Appeal for the Second and Federal Circuits, and the U.S. Supreme Court. He is also licensed to practice before the U.S. Patent and Trademark Office.
Counsel to the Plaintiff
In The Matter of Certain Computer Products, Computer Components And Products Containing Same, No. 337-TA-628 (U.S.I.T.C. 2008).
Representing complainant IBM in patent infringement proceeding against respondents ASUSTek Computer, Inc. and ASUS Computer International in the ITC.
Medinol, Ltd. v. Guidant Corp. and Advanced Cardiovascular Systems, Inc., (S.D.N.Y., 03 Civ. 2604 (SAS)) (Patent Infringement).
Represent Medinol in patent infringement action involving several patents relating to cardiovascular stents; significant decisions include 2004 U.S. Dist. 19705 (S.D.N.Y. 9/30/04) (Favorable Markmann decision); 2005 U.S. Dist. LEXIS 35866 (S.D.N.Y. 2005). (Defeating summary judgment of invalidity); 2006 U.S. Dist. LEXIS 5812 (S.D.N.Y. 2/10/06); (Granted summary judgment of patent infringement.)
IBM v. Compuware, (04-cv-000357 (CM)(LMS) (S.D.N.Y. 2004).
Represented plaintiff IBM in asserting several patents related to database management, distributed computing and data processing. (Now settled)
Robert Bosch GMBH v. Applied Materials, Inc., (Patent Infringement).
Represented Bosch in action involving two patents covering silicon plasma etching technology. Obtained favorable settlement after pursuing aggressive pre-trial schedule and motion practice. (D. Del., 2003-2004)
Heidelberger Druckmaschinen AG v. Corel Corp., (Patent Infringement).
Represented Heidelberger in asserting patents covering digital color-image storage technology. (S.D.N.Y., 2003-05; settled favorably by creative use of Court mediation process)
Symbol Technologies, Inc. v. Bell Data Software Corp., 56 USPQ2d 1534 (E.D. Mich. 2000) (Summary Judgment of Invalidity).
Represented Symbol in declaratory judgment action seeking invalidity of defendant's patent covering encoded identification cards. Succeeded in establishing subject matter jurisdiction to challenge patent validity, despite withdrawal of infringement charges by alleging novel theory based on Lanham Act violations. Grant of summary judgment of patent invalidity disposed of case favorably.
Priceline.com, Inc. v. Expedia, Inc., et al., (D. Conn. 1999-2000) (Patent infringement).
Represented Priceline.com in asserting the famous "Priceline Patent" against Expedia. Case settled on favorable terms to client.
Lucent Technologies Inc. v. Micron Technology, Inc., (Patent Infringement and Breach of Patent License).
Represented Lucent in Delaware Federal Court in assertion of several Lucent patents covering semiconductor devices and semiconductor fabrication technologies and in declaratory judgment of invalidity/non-infringement of several Micron patents covering complex telecommunications systems; plus countersuit filed in E.D. Va. which was successfully transferred to D. Del. (D. Del.; settled)
Stryker Corp. and Osteonics Corp. V. Intermedics Orthopedics, Inc. and Marli Medical Supplies, Inc., 891 F. Supp. 751 (E.D.N.Y. 1995) (Patent infringement).
For orthopedic hip replacement patent, award of $72 million in damages after trial, based on novel lost profits theory, plus increased damages and attorneys' fees, after willful infringement was established. Affirmed. 96 F3d. 1409 (Fed. Cir. 1996).
Stryker Corp. and Osteonics Corp. v. Zimmer, Inc., 741 F. Supp. 509 (D.N.J. 1990) (Patent Infringement).
Represented plaintiffs asserting patent for orthopedic hip replacement and defending charge of patent infringement asserted by way of counterclaim; summary judgment dismissing defendants' counterclaim patent for laches and estoppel. Case then settled for $22 million payment to plaintiffs.
Procter & Gamble Co. v. Nabisco, Keebler & Frito Lay, (Patent/Trade Secret) (1984-1989).
Represented P&G in highly complex patent and trade secret/industrial espionage case involving food chemistry. Settled on eve of trial for payment to P&G of $125 million, which, at the time, represented the largest settlement in a patent case. Interlocutory published decisions: 604 F. Supp. 1485 (D. Del. 1985); 109 F.R.D. 673 (D. Del. 1986); 711 F. Supp. 759 (D. Del. 1988); 111 F.R.D. 326 (D. Del. 1986); 697 F. Supp. 1360 (D. Del. 1988); and 125 F.R.D. 405 (D. Del. 1987)
Slater Electric, Inc. v. Thyssen-Bornemisza, Inc., 650 F. Supp. 444 (S.D.N.Y. 1986) (Patent Infringement).
Represented plaintiff-patentee on patent covering electrical outlet boxes. Prevailed on rarely issued affirmative grant of summary judgment of patent infringement.
IBM Corp. v. Babcock & Wilcox,(Trademark Cancellation).
Represented IBM in securing rights to Power PC mark; settled with full relief sought by IBM following heated motion practice. (PTO, unpublished)
Engelhard Corp. v. Zimmerman, et al., (Trade Secret).
Represented Engelhard in trade secret misappropriation action. Temporary restraining order and preliminary injunction granted. (N.J. State Court, unpublished)
Engelhard Corp. v. Dorr Oliver (Patent Interference).
Represented Engelhard in Patent Office Interference proceeding involving patent covering electrolytic filtration. All significant interference counts awarded to Engelhard. (PTO, unpublished)
Symbol Technologies, Inc. v. PSC, Inc., (Patent License).
Represented Symbol Technologies in breach of patent license and successfully negotiated new license. (S.D.N.Y., unpublished, settled)
General Electric v. Sanvik, (Patent Interference No. 99,433).
Represented G.E. in Patent Office Interference proceeding involving patent covering precision carbide tools. All counts awarded to G.E. (PTO, unpublished)
Delta Funding Inc. v. Delta Airlines, (Internet Domain Name Dispute) (E.D.N.Y., settled)
Chris has been handling confidential international arbitration trials for patent infringements under the rules of the World Intellectual Property Organization (WIPO). These arbitrations involved litigation and trial of both U.S. and European patents before a single tribunal.
Chris has been directing several patent litigations on behalf of Medinol Ltd., a medical device innovator and manufacturer, against companies such as Boston Scientific, Cordis and Abbott Vascular (and affiliates) in Germany, Ireland, Italy, Netherlands and United Kingdom. He has also been directing numerous opposition, nullity and invalidity proceedings in various European courts and in the EPO.
Counsel for Defendant
C.R. Bard Inc. et al v. AngioDynamics Inc., 1:15-cv-00218 (D. Del., 2015).
Defending AngioDynamics against charges of infringing three (3) Bard patents. Filed a motion to dismiss the complaint on the pleadings for patent ineligibility based on 35USC § 101 and the U.S. Supreme Court Alice decision. That motion remains pending and awaiting decision. The court found in favor of AngioDynamics on Step 1, but the case went to trial (jury) on step 2; the court then granted JMOL, invalidating all three asserted patents as patent ineligible at the close of Bard’s affirmative case.
Adaptix Inc. v. AT&T Mobility LLC, (N.D. Cal.).
Represented AT&T Mobility in successfully defending allegations of patent infringement related to 4G/LTE wireless networks. Successful in receiving relatively rare grant of motion to transfer from the Eastern District of Texas to the Northern District of California. District court granted summary judgment of non-infringement of all seven asserted patent claims from the two patents-in-suit on January 20, 2015, and, further, invalidated four of those seven patent claims in a separate opinion on January 23, 2015.
C.R. Bard v. AngioDynamics, 2:12-cv-00035-TS-EFJ (D. Utah, 2012).
Defending AngioDynamics against charges of infringing three (3) Bard patents. Filed successful inter partes re-exam requests in the USPTO for all three asserted patents and subsequently obtained complete stay of entire litigation pending completion of those proceedings. (The patents asserted in this action are different from those asserted in the above Delaware action.)
Adaptix, Inc. v. AT&T , Inc. et al., 6:12-cv-00125-LED (E.D. Tx.) and 6:13-cv-028 (E.D. Tx.).
Defending AT&T Mobility in a patent infringement action filed by Adaptix, Inc., concerning 4G wireless technology and various IEEE and like industry standards; successfully moved to transfer from E.D. Texas to N.D. Cal. (April 2013)
ParkerVision, Inc. v. Qualcomm Incorporated, 3:11 cv-719-J-37-JBT, (M.D. Fla.).
Defending Qualcomm against charges of infringement in six (6) patents related to RF cellular technology.
Development Innovation Group, LLC v. AT&T Mobility, et al., 3:11-cv-02150-DMS-DLS (S.D. Cal.).
Defended AT&T Mobility against charges of infringing three (3) patents related to device synchronization, voice commands and power conservation.
CYBERsitter, LLC (d/b/a Solid Oak Software) v. The People's Republic of China, et al., CV10-0038 JST (SH) (C.D. Cal.).
Defended co-defendant Zhengzhou Jinhui Computer system Engineering, Ltd. in copyright infringement and trade secret action.
Ganas LLC v. IBM, et al., 2:10-cv-320(E.D. Tx.).
Defended IBM in multi-defendant patent infringement suit in E.D. Texas for patents dealing with various aspects of operating systems; case settled.
Catheter Flushing LLC v. Angiodynamics, et al., 2:10-cv.00963 (D. Utah).
Defending Angiodynamics in patent infringement suit on patent relating to catheter devices.
ASUSTek Computer, Inc., ASUS Computer International v. International Business Machines Corporation, Civil Action No. C08-CV-1168-MMC (N.D. Cal.).
Represented IBM as declaratory judgment defendant and counterclaim plaintiff patentee. Case settled on favorable terms.
Broadcom Corp. v. Qualcomm, Inc., Civil Case No. SACV05-0467-JVS (C.D. Cal. 2005) (Patent).
Defended Qualcomm Inc., a world-leading provider of wireless technology and services, against allegations of patent infringement brought by Broadcom Corp. The case settled on favorable terms.
Medtronic Vascular, Inc. v. Boston Scientific Corp., Scimed Life Systems, Inc. Boston Scientific Scimed, Inc. and Medinol, Ltd., District of Delaware, Civil Action No. 98-478-SLR (Patent).
Defending Medinol against charges of infringement of several patents relating to cardiovascular stents. Obtained summary judgment of no direct infringement and no contributory infringement. Medtronic, 348 F. Supp. 2d 316 (D. Del. 2004); received favorable Markman ruling and grant of summary judgment of no infringement, including no active inducement of infringement. Medtronic, Civ. No. 98-478-SLR, 2005 U.S. Dis. LEXIS 822 (D. Del. 2005) (Markman); Medtronic, Civ. No. 98-478-SLR, 2005 U.S. Dist. LEXIS 1157 (D. Del. 2005) (no infringement). (D. Del., 2004-2005)
SCO v. IBM, 03-cv-0294 (DAK) (D. Utah 2003).
Represented defendant IBM in patent counterclaim involving three patents related to high availability and encoding.
Compuware v. IBM, 02-cv-70906 (E.D. Mich. 2002).
Represented defendant IBM against claims of trade secret theft, copyright infringement and antitrust violations and in asserting counterclaims of infringement of six patents related to graphical user interfaces, error detection and system monitoring.
TM Patents, L.P. v. IBM Corp., 97 Civ. 1529 (CM) (S.D.N.Y. 1997) (Patent Infringement).
Represented IBM against allegations of infringement of four complex computer patents in the area of data storage, memory control and parallel processing data routing. In a case of first impression, the Court ruled that a patentee is collaterally estopped from challenging claim construction rulings obtained in a prior action that was settled before appeal. 72 F. Supp. 2d 370 (S.D.N.Y. 1999) (includes favorable Markman rulings). Our lawyers succeeded in obtaining a ruling that the patent holder lost his rights to the parallel processing data router patent for which he had received government funding when he failed to comply with the government-grant license requirements, resulting in the Government acquiring title. 121 F. Supp. 2d 349 (S.D.N.Y. 2000). IBM won summary judgment dismissing some of the patents following Markman ruling. 121 F. Supp. 2d 349 (S.D.N.Y. 2000). The case settled on the eve of trial on terms highly favorable for the client.
Marketel Int'l v. Priceline.com, et al., C-99-0161 (N.D. Cal. 1999) (Trade Secret and Patent Inventorship/Ownership Dispute).
Represented Priceline.com against charges of trade secret misappropriation and a patent inventorship dispute including demands for ownership of the famous "Priceline Patent." Summary judgment granted in favor of Priceline.com dismissing all counts. 2001 U.S. Dist. LEXIS 10495 (N.D. Cal. 1/23/01)
Data General v. IBM Corp., (Patent Infringement - three actions).
Represented IBM against charge of infringing a dozen complex computer patents, including patent infringement counterclaim for infringement of seven (7) IBM patents in various aspects of computer technology. Favorable Markman decision at 93 F. Supp. 2d 89 (D. Mass. 2000)
Square D. v. Slater Electric, Inc., (Patent/Trademark/Unfair Competition).
Invalidated all six patents-in-suit at jury trial, judgment dismissing trademark and unfair competition claims. Court granted partial aware of attorneys' fees for establishing four of six patents procured by inequitable conduct. 223 USPQ 804 (E.D.N.Y. 1983).
Digital Development Corp. v. IBM Corp., 03cv2909(JGK) (S.D.N.Y.)(Patent Infringement)
Defend IBM against patent infringement claims relating to Virus Detection patents.
E. Boselli v. Boselli Industrie Tessili S.p.A. (Trademark Infringement)
Reached favorable settlement after dissolving temporary restraining order. (Unpublished, S.D.N.Y.)
Burlington Indus., Inc. v. Litton Business Sys., Inc. (Design Patent Infringement)
Invalidated two patents-in-suit at bench trial; patents directed to desk designs. 370 P.T.C.J. A-21 (S.D.N.Y. 1978)
Representative Proceedings in the Federal Court of Appeals
Move, Inc., v. Real Estate Alliance Ltd.
Retained to appeal claim construction rulings from District Court; obtained complete reversal of claim construction rulings. (Fed. Cir. 2010-1236 (2010))
Medtronic Vascular, Inc. v. Medinol, Ltd. et al.
Summary judgment of no-infringement in favor of client - Medinol - affirmed by Federal Circuit; 182 Fed. Appx. 994, 2006 WL 1478513 (Fed. Circ. 2006)
Marketel Int'l v. Priceline.com, et al.
Dismissal of all claims (trade secret and patent inventorship/ownership) against client - Priceline.com - affirmed by Federal Circuit; 36 Fed. Appx. 423, 2002 U.S. App. LEXIS 7843 (Fed. Cir. 2002)
Stryker, et al. v. Intermedics Orthopedics, et al.
Widely cited decision on lost profits and willfulness. 96 F.3d 1409 (Fed. Cir. 1996)
Counsel for Amicus Curiae before the U.S. Supreme Court and Federal Circuit For Court of Appeals
eBay v. MercExchange, LLC, (January 2006).
Filed amicus brief in the U.S. Supreme Court as lead counsel on behalf of IBM 126. S. Ct. 733 (2005). See, Supreme Court decision 126 S. Ct. 1837 (2006)
Lab Corporation of America v. Metabolite Labs, Inc., (December 2005).
Filed amicus brief in the U.S. Supreme Court as lead counsel on behalf of IBM. 126 S. Ct. 543 (2005). See, Supreme Court decision 548 U.S. 124 (2006)
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., (2001).
Lead counsel on amicus brief filed in U.S. Supreme Court on behalf of IBM, Kodak, Ford, DuPont, Agere Systems and the Financial Services Roundtable. 533 U.S. 915 (2001)
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., (December 1999).
Lead counsel on Brief for Amici IBM, Eastman Kodak and Ford Motor Co. in connection with en banc rehearing. Decision tracks position proposed in our amicus brief which was specifically cited with approval in majority opinion. 234 F. 3d 558, 575 (Fed. Cir. 2000)
UMC Electronics Co. v. United States (Oct. 1987).
Co-authored Amicus brief on behalf of American Intellectual Property Law Association (AIPLA) in support of Petition for Writ of Certiorari. (Petition granted). 484 U.S. 1025