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Jeffrey R. Kuester

Partner

678.336.7225

Atlanta

Profile

In my mind, TED is not only an abbreviation for Taylor English Duma, it also stands for this innovative firm that is more Trustworthy, Efficient and Distinctive than any firm I have ever encountered.

Jeff Kuester co-chairs Taylor English’s Intellectual Property Department and leads its Patent Department, and he handles all types of intellectual property issues, including litigation, preparation and counseling. He is ranked as one of the top 100 lawyers in Georgia and as one of the top 1,000 patent attorneys in the world. As a registered patent attorney, he has been preparing and prosecuting patents for more than 20 years, and also has extensive trademark and copyright experience.

Mr. Kuester currently serves as a special assistant attorney general for the State of Georgia for intellectual property matters. Mr. Kuester also is a former adjunct professor of intellectual property law at Georgia State University College of Law, where he serves as vice chair of the Intellectual Property Advisory Board and Organizer of the Corporate IP Institute.

In addition to being listed in the prestigious Best Lawyers in America for Intellectual Property, Mr. Kuester was recently voted as one of the top 5 percent of all attorneys in Georgia in the area of intellectual property. He also was selected as a Super Lawyer, and was rated by Chambers USA as one of America’s Leading Business Lawyers. Chambers described him as a “smart, responsive lawyer,” “never flustered by hard work,” who “proves an excellent team manager.” He has also been listed as one of Atlanta’s Top Patent Attorneys by the Atlanta Business Chronicle and as one of the leading patent attorneys in the world by IAM Patent 1000.

As a Board of Governors member of the State Bar of Georgia, Mr. Kuester has served as chair of the Technology Advisory Committee and as a member of the Next Generation Courts Commission. Mr. Kuester also served the State Bar of Georgia as chair of the Intellectual Property Law Section and as chair of the Technology Law Section, both of which won the coveted “Section of the Year Award” under his leadership. He was also the communications director for the Atlanta Section of the Institute of Electrical and Electronics Engineers (IEEE), serving as webmaster and editor of The Atlanta Circuit.

Mr. Kuester is married and has five children.

Memberships

American Intellectual Property Law Association

ABA Intellectual Property Law Section

International Federation of Intellectual Property Attorneys

State Bar of Georgia, Member of Board of Governors, 2011-present

State Bar of Georgia, Intellectual Property Law Section, Chair, 2002-2003

State Bar of Georgia, Technology Law Section, Chair, 1999-2000

Community Involvement

State Bar of Georgia Lawyer Assistance Program, Chair, 2017

American Bar Association, Commission on Lawyer Assistance Programs, Advisory Committee, 2017

Georgia State Intellectual Property Advisory Board, Vice-Chair, 2003-2015

Practice Highlights

Experience

Counsel to distillery and bottle designer in defense of action alleging breach of contract and design patent infringement
Gillespie v. Prestige Royal Liquors, et. al.
Led defense of Fusion Glassworks, a custom glass designer, and Private Label Distillery, a provider of distillery services, in litigation brought in California involving alleged design patent infringement. Successfully obtained early dismissal for our clients. Gillespie v. Prestige Royal Liquors, et. al. (N.D. California)
Led defense of patent infringement suit brought by patent troll relating to check scanning and processing
Lyssa Networks, LLC v. VeriCheck, Inc.
Represented VeriCheck, Inc., a leading ACH payment processor, in E.D. Texas litigation against a patent troll. As part of our defensive strategy, we prepared and filed a petition with the USPTO for Covered Business Method review and argued that the asserted patent claims were invalid under Section 101 for being directed to patent ineligible subject matter. The parties reached a confidential settlement shortly after the CBM petition was filed. Lyssa Networks, LLC ...
Defense of international consumer product manufacturer in suit alleging patent and trade dress infringement
Led defense of Georgia-based company in patent and trade dress litigation involving a consumer product. After initial aggressive discovery and a mediation, we achieved a favorable settlement for the client.
Patent infringement defense for boat dock ladder manufacturers and distributors
Adair v. Boat Dock Innovations, LLC, et. al.
Led the defense against an inventor/patentee in a case involving claims of infringement of a patent related to a boat dock ladder. Successfully petitioned the USPTO to reexamine the asserted patents—resulting in cancellation of all claims of one patent and significant narrowing amendments to the remaining patent’s claims. After a favorable claim construction ruling from the Special Master, the case was dismissed with prejudice, with no payments from the ...
Defense of patent infringement claims asserted by patent troll ICH Intellectual Capital Holdings, Inc
Led defense of Mueller Water Products, Inc. in a case brought by a non-practicing entity, ICH Intellectual Capital Holdings, Inc., for infringement of patents related to automated meter reading technology. The client reached a favorable confidential settlement with the plaintiff and the case has been dismissed. ICH Intellectual Capital Holdings, Inc. v. Badger Meter, Inc., et. al.
Brought patent infringement action against Datamatic Ltd. for Advanced Metering Infrastructure (AMI) systems
Represented Mueller Water Products, Inc. in action against Datamatic Ltd. alleging patent infringement of Mueller’s patents for technology relating to Advanced Metering Infrastructure (AMI) systems. Negotiated a favorable settlement with defendant. Mueller International, LLC et al v. Datamatic Ltd.
Achieved favorable outcome for medical device company defending patent infringement and false marking claims
Represented Byrne Medical in patent infringement and false marking case relating to endoscopic devices. Negotiated favorable confidential settlement.
Brought patent infringement action against Singer Valve entities for water distribution system
Represented Mueller Water Products, Inc. in action against Singer Valve, Inc. and Singer Valve, LLC alleging patent infringement of Mueller’s patent for an apparatus for the enhancement of water quality in a subterranean pressurized water distribution system. Negotiated a favorable settlement with defendants. Mueller Water Products, Inc. v. Singer Valve, Inc. and Singer Valve, LLC.
Expanded Technologies, Inc. v. Wallner Tooling/Expac, Inc
Represented Expanded Technologies, a leading manufacturer of expanded metals for the HVAC filter industry, in a suit for declaratory judgments of non-infringement, invalidity and unenforceability of patent held by competitor. The litigation resulted in in a favorable confidential settlement.
Managed international patent portfolio for Georgia-based biotech company
Managed the prosecution of U.S. and foreign patent applications in a large patent portfolio relating to identifying humans using antibody profiling processes.
Defense of patent infringement claims asserted by patent troll Endeavor MeshTech
Endeavor MeshTech, LLC v. Mueller Water Products
Led defense of Mueller Water Products, Inc. in a case brought by a non-practicing entity, Endeavor MeshTech, for infringement of a patent related to premises-monitoring technology. The client reached a favorable confidential settlement with the plaintiff and the case has been dismissed. Endeavor MeshTech, LLC v. Mueller Water Products (D. Delaware)
Defense of patent infringement claim involving excavator teeth and related trademark claims
Led the defense of H-E Parts against ESCO Corporation in a case involving allegations of trademark infringement and infringement of a patent related to excavator teeth on heavy equipment. We negotiated a favorable settlement with plaintiff. Esco Corporation v. H-E Parts et al.
Defense of patent infringement claim involving industrial package assemblies
Led the defense of Royal Metal against an inventor/patentee in a case involving claims of infringement of a patent related to industrial package assemblies. We negotiated a favorable settlement with plaintiff. Gray v. Royal Metal et al.
Defense of patent infringement claims involving medical device technology
Handled two cases for separate defendants, Ascendx Spine and Sintea Plustek, LLC, in the District of Delaware. Both cases were brought by Orthophoenix, LLC, a non-practicing entity, and involved claims of infringement of certain patents involving medical device technology. The parties in both cases reached confidential settlements. Orthophoenix, LLC v. Ascendx Spine; Orthophoenix, LLC v. Sintea Plustek.
Patent and trademark prosecution and licensing matters
Provided counsel to one of the largest providers of in-home residential delivery services in the United States on all intellectual property matters. These matters range from prosecuting and maintaining the client’s patent and trademark portfolio, to counseling the client on protecting its trade secrets, to anonymously negotiating and obtaining a licensing agreement with a prolific non-practicing entity with a history of targeting businesses in the ...
Successful defense of patent infringement lawsuit over client’s manufacture of crackle nail polish
Handled the defense of Expression Beauty Works in a case involving claims of infringement of a patent related to crackle nail polish. Negotiated a favorable settlement with plaintiff. Kirker Enterprises v. Expression Beauty Works.
Seagate Technology patent prosecution and IP counseling matters
Provided counsel to client Seagate Technology LLC on IP matters and provided patent prosecution services. Seagate, headquartered in Ireland and one of only a few major manufacturers of hard disc drives and other complex storage products, has an excellent reputation for intellectual property management. We have provided counsel to this client on IP matters and provided patent prosecution services.
Landmark U.S. Supreme Court case Bilski v. Kappos
Provided counsel to Bernie Bilski and Rand Warsaw in conjunction with the landmark U.S. Supreme Court case Bilski v. Kappos.
Patent application for manufacturer of fastening products
Prepared and filed a utility patent application for a new fastening technology and a machine and process for implementing the technology in an automobile industry application. The client, a multinational manufacturer of fastener products, developed the technology.
Patent applications for small inventor
Prepared a utility patent application and two design patent applications for a new consumer product. The product was developed by a local Atlanta resident who developed the product as a side business with the help of local business partners.
Prosecution of patent applications for corporate clients
Drafted and prosecuted multiple patent applications for new technologies in the packaging industry and industrial valve industry.
Prosecution of patent applications for a manufacturer of aircraft engines
Drafted and prosecuted multiple patent applications for new engine technologies for implementation on small passenger aircraft.
Patent and trade dress litigation defense involving drop prevention products
Led defense of New Hampshire-based company in patent and trade dress litigation involving drop prevention products. Assisted prosecution counsel with successful petition for Inter Partes Review at USPTO and successfully deferred related litigation, resulting in a favorable settlement for the client.
Mueller Water Products patent prosecution and licensing matters
Provided counsel to client Mueller Water Products, Inc. on all patent and trade secret matters. These matters range from prosecuting and maintaining the client’s patent portfolio, to counseling the client on protecting its trade secrets.