Walter G. Hanchuk

Partner

Practice Description

Walter Hanchuk has more than 15 years of experience in nearly all aspects of intellectual property law. He has been actively involved in all phases of patent, trademark and copyright litigation, both at the trial and appellate levels.

In addition to his litigation experience, Mr. Hanchuk has extensive licensing and transactional experience. He regularly conducts extensive IP due diligence investigations and has conducted strategic reorganizations of existing patent portfolios. He also frequently advises clients on the scope and validity of third-party patent rights, including risk assessments and guidance for designing around competitive patent rights.

Early in his career, he served as a U.S. Patent Examiner at the U.S. Patent & Trademark Office. In recent years, he has been particularly successful in obtaining, licensing and enforcing worldwide intellectual property rights in the telecommunications, information technology and financial service sectors. Having been actively involved in various “pioneering” business processes and computer software patents, he continues to publish and speak widely on the topic.

Representative Matters

Represented PowerDsine in the enforcement of its copyright and trade secret rights regarding Power over Ethernet software protocols against Texas Instruments.

Represented The American Express Company in the filing of an amicus brief to the U.S. Supreme Court regarding the patentability of business processes and financial systems.

Represented Fujitsu in a patent infringement suit involving the Firewire/IEEE 1394 standard (Dynacore v. Phillips Electronics, Compaq, Dell, Epson America, Fujitsu America, Kodak, Motorola, NEC, and Apple Computer).

Represented priceline.com in the assertion of their pioneering patent rights on their business processes and computer architecture against Microsoft and expedia.com.

Represented C.R. Bard in the enforcement of their patent rights on biomedical devices against several entities, including M3 Systems.

Represented Varilite, Inc. in the enforcement of their patents on theater lighting and control equipment against High End Systems.

Represented the Research Foundation of the State University of New York in a suit involving the ownership of IP rights with ID Biomedical Corp.

Represented the Nature Company in a suit regarding the copyrights and trademarks of author James Lipton.

Honors

Activities and Affiliations

Advisory Board Member: Alley Way, New York Law Journal Press, 2000-2002; E-Commerce Law Journal, Aspen Law & Business, 2000-2002

Member: American Bar Association; New York Intellectual Property Law Association; American Intellectual Property Law Association

Committee Memberships: New Information Technologies Committee, I.P. Section of the American Bar Association; Copyright Committee, Intellectual Property Owners Association; E-Commerce Committee, New York Intellectual Property Law Association; AIPLA International Education Committee

Publications

"New U.S. Patent Rules Face Court Challenges; The Result Is The State Of Patent Practice Is In Flux," Metropolitan Corporate Counsel, February 2008
"Court Order Temporarily Stops New U.S. Patent Rules," November 2, 2007
"New U.S. Patent Rules Notice," October 25, 2007
"Supreme Court Decision Allows a Patent Licensee to Dispute the Patent and Seek a DJ without First Breaching the Patent License," Client Alert, January 16, 2007
"Forgot to Scrub the IP? Forget the Deal," (co-author), Financier Worldwide, September 2005
"Reviewing Document Retention Policies: In Managing Paper Pile-up, Businesses Must Also Keep Material Needed to Preserve IP Rights," New York Law Journal, October 21, 2002
"The Effect of the First-Filed Rule on Motions to Transfer," E-Commerce Law Journal, September 2002
"How to Read a Patent," Ideas to Assets, John Wiley & Sons, 2002
"The Single Entity Requirement for Patent Infringement," E-Commerce Law Journal, September 2001
"AIPA Creates Potent New Patent Right – Owners Collecting Damages Based on Published US Patent Applications," New York Law Journal, July 9, 2001
"Click-Through Agreements: Securing Their Enforceability," E-Commerce Law Journal, November 2000
"Are you Secure? Beware Provisional Patent Applications," New York Law Journal, June 19, 2000
"Assessing the Real Impact of State Street," New York Law Journal, April 24, 2000

Speeches and Events

"The Changing International Face of Intellectual Property Law," Ukrainian American Bar Association Annual Meeting, Washington, DC, September 21, 2007
ALI-ABA Conference on Financial Services Patents, New York, NY, September 18, 2007
"Accelerated Examination Before the U.S. Patent & Trademark Office," Intellectual Property Owners Association Annual Meeting, New York, NY, September 9-11, 2007
"What is Grokster and What are the Implications in the Short Term?," Copyright Post-Grokster, London, United Kingdom, November 22, 2005
"The Current Landscape of the Validity and Enforceability of Click-Wrap and Shrink-Wrap Agreements; Non-Disclosure Agreements and Other Safeguards for Licensed Intellectual Property," ACI Conference on Software License Agreements, New York, NY, June 2004

"The Changing International Face of Intellectual Property Law," Ukrainian American Bar Association Annual Meeting, Washington, DC, September 21, 2007
ALI-ABA Conference on Financial Services Patents, New York, NY, September 18, 2007
"Accelerated Examination Before the U.S. Patent & Trademark Office," Intellectual Property Owners Association Annual Meeting, New York, NY, September 9-11, 2007
"What is Grokster and What are the Implications in the Short Term?," Copyright Post-Grokster, London, United Kingdom, November 22, 2005
"The Current Landscape of the Validity and Enforceability of Click-Wrap and Shrink-Wrap Agreements; Non-Disclosure Agreements and Other Safeguards for Licensed Intellectual Property," ACI Conference on Software License Agreements, New York, NY, June 2004
"What Hath State Street Wrought," Licensing Executive’s Society (LES) Meeting, New York, NY, May 2004
"Non-Disclosure Agreements and Other Safeguards for Licensed Intellectual Property," ACI Conference on Software License Agreements, San Francisco, CA, October 2, 2003
"Cross Border Management Issues for Intellectual Property Assets," Infonex Conference, Toronto, Canada, January 2003
"Cross Border Trade Secret Issues," Infonex Conference, Toronto, Canada, January 2002
"The Impact of the Festo Decision on Procuring Cyber Patents," Dayton Cyberlaw Conference, June 8, 2001
"Patenting Computer Software and Business Methods in the United States; Copyright Issues in Cyberspace," AIPLA International Education Committee presentations to the Russian Patent Office, June 2001
"Patenting Business Method Inventions," Association of University Technology Managers (AUTM) Annual Convention, March 2, 2001
"The New IP World of Business Method and E-commerce Patents," DuPont’s 2000 CLE Intellectual Property Law Seminar, Wilmington, DE, October 31, 2000
"Patenting Computer Software and Business Methods in the United States; Copyright Issues in Cyberspace," AIPLA International Education Committee presentation to the Czech Patent Office, October 25-26, 2000
"Patenting E-commerce and Software Inventions," Partnering with the Multinational Corporation: Marketing Your Technology and Intellectual Property Implications, Long Island High Technology Incubator, April 7, 2000