Finding IP Value
Assembling the Pieces: Practical Lessons from Recent IP Posts
May 03, 2021
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Practices and Industries
Emerging BusinessesIntellectual Property Protection & LitigationPatent LitigationPatentsComputer Hardware and SoftwareStephen Hall is a registered patent attorney, and he serves as leader of the Firm’s Intellectual Property Protection & Litigation Service Team. His practice addresses both patent filing/prosecution before the United States Patent and Trademark Office as well as patent litigation in the federal courts. A former research chemist, Steve has obtained patents for clients in a broad range of technical fields, including: alternative energy, catalysts, chemical detection, electrical transmission line safety, electro-mechanical devices, ergonomic products, explosion-proof engines and pumps, filter testing, food safety and testing, genetic expression, home security, machine diagnostics, medical devices, missile countermeasures, plant chemistry, sample collection, sample pre-concentration, sporting goods, styrene recycling and water quality testing and treatment.
Among various facets of patent litigation, Steve handles pre-filing investigation into competitors’ infringement, patent validity disputes, claim construction and dispositive motions. Steve frequently advises clients about infringement issues, including product clearance, freedom to operate and licensing. As a registered patent attorney before the USPTO, a significant part of Steve’s practice involves obtaining patents for clients, and this experience enhances his ability to provide effective advice regarding infringement issues.
Steve has spoken at seminars for a variety of audiences. A representative listing of his talks is shown under “Presentations.” He is primarily a visual thinker and communicator who sees his cases as stories that must be developed and told well.
Show MoreREPRESENTATIVE MATTERS
- Obtained multiple patents for our client, a company that makes equipment to amplify motion in machines with moving parts, allowing problems at the sub-pixel level to be detected quickly and addressed.
- Obtained multiple patents for our client, a large metropolitan research University, in a broad range of fields that includes bioengineering, chemical, and engineering.
- Obtained foreign patents for our client, a University with strong multidisciplinary research programs, covering water quality testing and analyte detection.
- Obtained sporting goods patents for various clients including baseball equipment, bowling balls, fitness exercise, and motor sports.
- Represented our client, the plaintiff, in a patent infringement lawsuit involving electronic safes and related devices with cash management features.
- Defended our client in a patent infringement lawsuit related to drop safes and mechanical locking safes.
- Defended our client in a patent infringement lawsuit involving computer-to-plate printing methods.
- Represented our client, a developer of proprietary formulations in the animal feed industry, in the negotiation of several license agreements with large animal feed companies.
- Represented our client, the Estate of a well-known inventor and television personality, in a patent licensing program.
- Represented the petitioner, a commercial truck seller, before the state Supreme Court, successfully briefing and arguing that arbitration provisions in commercial contracts are valid and enforceable under the Constitution’s commerce clause.
EDUCATION
- J.D., University of Cincinnati College of Law, 1992
- B.A. (Chemistry), magna cum laude, University of Louisville, 1988
ADMISSIONS
- Kentucky
- United States Patent & Trademark Office
- United States Court of Appeals, Federal Circuit
- United States Court of Appeals, Sixth Circuit
- United States District Court, Eastern and Western Districts of Kentucky
HONORS
- Chambers and Partners USA 2012 – present in the area of Intellectual Property
- Woodward/White’s Best Lawyers in America® Biotechnology Law, 2007-2021, and Trade Secrets Law, 2017-2021
- Highest Professional AV Rating by Martindale-Hubbell Law Directory
- Kentucky Super Lawyers® 2013 – present in the area of Intellectual Property
- Recognized as one of the “Top Lawyers” in the area of Patent Law by Louisville Magazine, March 2014
PUBLICATIONS
- “Assembling the Pieces: Practical Lessons from Recent IP Posts,” Finding IP Value (May 2021)
- “Probing Questions by Courts Foretold Ruling of Patent Invalidity,” Finding IP Value (April 2021)
- “DoorDash Patent Shows Some Patents Are Granted for Incremental Advances,” Finding IP Value (April 2021)
- “Patent Invalidated Due To “Impossibility” In The Claims,” Finding IP Value (April 2021)
- “Is Inter Partes Review Unconstitutional?,” Finding IP Value (December 2017)
- “The Impact of President Trump’s IP-Related Appointments,” Finding IP Value (January 2017)
- Quoted in “Intellectual Property Law Has a Real-World Impact on Businesses,” Louisville Business First (March 2016).
- Quoted in “Many Options to Protect Intellectual Property,” The Lane Report (February 2016).
- “Changes in U.S. Patent System Bring a Fundamental Shift,” (January 2013).
- “An Overview of a Recent Court Challenge to the Protection of Biomarkers as Intellectual Property,” Hall SC, et al, Clin Chim Acta (2011), doi:10.1016/j.cca.2011.01.024.
- “Law and Medicine: Federal Appeals Court rules that Biomarker Tests are patent eligible, expect to see tests promoted, commercialized and integrated into healthcare,” (March 2010).
- “Risk Management Applications from TGN 1412 Clinical Trial,” Biotech Briefing of the American Bar Association / Section of Science and Technology, Vol. 2, No. 4, p. 3 (July 2006).
- “The Physician’s Duty and Role in Communicating with Family Members’ Regarding Results of Patients’ Genetic Testing,” April 2005.
- “Kentucky Supreme Court Adopts Separability Doctrine For Agreements to Arbitrate,” American Bar Association Section of Business Law Newsletter, Vol. 12, Issue 2, Spring 2004.
- “Court Prohibits Experts From Testifying that Cell Phones Can Cause Brain Cancer,” February 2003.
- “The Impact of Genetic Medicine on Civil Litigation,” January 2003.
- “Defending the Product Liability Action,” April 2002.
- “The Defendant’s Right to Compel Genetic Testing,” For the Defense, October 2000.
- Mr. Hall is also a regular contributor to Wyatt’s IP blog “Finding IP Value.”
PRESENTATIONS
- “Envisioning Success: Visual Thinking Strategies for Avoiding Intellectual Property Problems,” Wyatt In-House Counsel Institute, June 22, 2016.
- “Using the AIA’s First to File Rule and the Written Description Requirement to Invalidate Patents,” Defense Research Institute’s Intellectual Property Seminar, May 6, 2016.
- “Clearing the Hurdles: Patent Examination at the USPTO,” Nucleus LaunchIt Program, October 30, 2014.
- “The Changing Landscape of Patent Litigation: Fee Awards and Exceptional Case Status,” June 17, 2014.
- “Fee Awards in Exceptional Cases,” June 10, 2014.
- “Building Fences: Creating the Right IP to Protect Your Most Important Ideas,” LaunchIt Series, November 4, 2013.
- “Protecting Your Ideas: The Importance of Breadth, Clarity, and Strategy,” XLerateHealth, October 9, 2013.
- “Protecting Your Ideas: What Every Inventor Should Know About ‘First-to-File’ and The America Invents Act,” March 19, 2013.
- “The America Invents Act: Are You and Your Business Prepared?” Tennessee Bar Association, Memphis, February 19, 2013.
- “Protecting Your Intellectual Property,” Nucleus’ Kauffman TechVenture FAST-TRAC®, April 10, 2012.
- “The American Invents Act,” November 18, 2011.
- “Protecting Your Intellectual Property,” Nucleus’ Kauffman TechVenture FAST-TRAC®, October 25, 2011.
- Commercializing Your Idea: “Protecting Intellectual Property,” October 13, 2011.
- “The America Invents Act,” October 4, 2011.
- “Protecting Your Intellectual Property While Commercializing It,” May 26, 2011.
- “Protecting Your Life Sciences Company,” May 18, 2011.
- “Patenting Diagnostic Methods and Compositions,” The Diagnostic Conference, Boston, March 22, 2011.
- “Patent Law Essentials: Why, What, Who, When, and How,” February 16, 2011.
- “Managing the Ripple Effect of “Public” Activities Surrounding Your Technology.” May 20, 2010.
- “Recognizing and Avoiding the Pitfalls of a Joint Research Program,” April 23, 2010.
- “Starting Up: Balancing Your Roles / Things You’d Wish You Knew,” April 15, 2010.
- “There’s a Doc for that: Legal Documents for Commercializing Your Invention,” International Society for Automation, March 15, 2010.
- “Risk Management for Clinical Trials: What’s in Your Forms?,” April 18, 2006.
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