Walter G. Hanchuk

Partner

Practice Description

Walter Hanchuk is the co-chair of Chadbourne's IP Group, and has over 20 years of experience in nearly all aspects of intellectual property law. For the past five years, he has spearheaded the aggressive expansion of Chadbourne's international IP practice. 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 a consortium of the Regulatory Data Corporation, The American Express Company, Rockwell Automation, and others in the filing of an amicus brief to the U.S. Supreme Court regarding the patentability of business processes and financial systems (in Re Bilski).
• Represented PowerDsine in the enforcement of its copyright and trade secret rights regarding power-over-ethernet software protocols against Texas Instruments.
• Represented PowerDsine in the enforcement and licensing of its patents directed to fundamental power-over-ethernet technology (IEEE 802.03af) against various entities. These patents were ultimately licensed under RAND licensing terms.
• Represented Microsemi & PowerDsine in an action filed against AMI Semiconductor for breach of a nondisclosure agreement covering semiconductor technology. Counterclaims filed against PowerDsine and Microsemi for breach of contract, business defamation and interference with prospective business relations were dismissed on Microsemi and PowerDsine's motion for summary judgment. The case was settled on terms favorable to PowerDsine and Microsemi.
• Represented PowerDsine against two former employees for breach of a confidentiality and non-competition agreement and against their new employer, Broadcom Corporation, for tortious interference with contractual relationships.
• 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 its business processes and computer architecture against Microsoft and expedia.com.
• Represented C.R. Bard in the enforcement of its patent rights on biomedical devices against several entities, including M3 Systems.
• Represented Varilite, Inc. in the enforcement of its 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: Intellectual Property Owners (IPO) Association; 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
• 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

Publications

Speeches and Events