We secure your ingenuity and innovation with patent applications, licensing, patent preparation and prosecution and enforcement through the courts or alternative dispute resolution. We advise early on in the invention process, giving you the advice you need to strategically position your product for protection and to avoid disputes. We also can handle reexamination and inter partes review proceedings in the U.S. Patent Office, which have become increasingly significant and strategic components of protecting patent portfolios and defending infringement claims.
Russ manages and prosecutes the extensive patent portfolio of Mueller Water Products, Inc., a multinational corporation of companies producing a wide variety of water system products, such as water meters, valves, fittings, fire hydrants, pipes, leak detection equipment and communication systems, and other various water accessories. Russ has overseen the issuance of dozens of utility and design patents for Mueller over the course of his career.
Russ manages and prosecutes the intellectual property portfolio, including patents and trademarks, of and provides licensing advice for Tie Down, Inc., a Georgia Manufacturer of construction, marine, and agricultural equipment.
Russ manages and prosecutes the extensive patent portfolio of Pratt Industries, Inc., a major manufacturer of corrugated cardboard products and related equipment, including numerous utility and design patents covering home delivery boxes, insulated boxes and bags, plastic wrap dispensers, glass packaging, and bag stands.
Prepared and filed utility and design patent applications to protect the We Leash, a training leash sold by start-up company We For Dogs. Both applications eventually issued into patents.
Prepared, filed, and obtained an issued patent for an optometry eye template for a solo inventor optometrist for the use of easy diagnosis of glaucoma.
Filed and obtained issuances for dozens of design patents covering a wide range of consumer products, such as Christmas ornaments and serving products, hats and hat brims, high-heel shoes, medical bracelets, measurement tools, pipe couplings and gaskets, and clothing.
Tie Down, Inc. v. Rooftop Anchor, Inc.
Initiated lawsuit for Tie Down, Inc. to seek a declaratory judgment of non-infringement for a competitor's design patent relating to a roofing safety product. The case resulted in a favorable settlement for the client. Tie Down, Inc. v. Rooftop Anchor, Inc. (N.D. Ga.)
Keystone Global LLC v. eBay, Inc. et al.
Obtained favorable settlement for HiPacking, Inc., a fulfillment center for products sold on eBay, in patent infringement case brought by license plate bumper manufacturer. Keystone Global LLC v. eBay, Inc. et al. (E.D. New York)
Represented defendant telecommunications conglomerate in patent declaratory judgment action concerning six cable network data prioritization patents it owned. Achieved dismissal of case initially for lack of subject matter jurisdiction under declaratory judgment act and after reversal at the Federal Circuit Court of Appeals, achieved dismissal for lack of personal jurisdiction.
Cooper Lighting, LLC v. Cordelia Lighting, Inc.
Representing Cordelia Lighting, a provider of lighting fixtures and accessories, in defense of a patent infringement action brought by a competitor involving multiple patents relating to recessed, LED lights, and helped to win a dismissal of plaintiff's claims for willful infringement. Cooper Lighting, LLC v. Cordelia Lighting, Inc. (N.D. Ga.)
- 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)
Sprinturf, LLC v. UBU Sports, Inc. and Maumee Bay Landscape Contractors, LLC
Served as counsel to UBU Sports and Maumee Bay Turf Center, premier providers of synthetic turf systems for use in a variety of sporting events, in patent dispute brought by a competitor. Sprinturf, LLC v. UBU Sports and Maumee Bay (N.D. Ga.)
- 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 ...
ModTruss, Inc. v. BattleFrog, LLC
Taylor English handled the successful defense of a motion for a temporary restraining order and preliminary injunction brought against our client, BattleFrog, LLC, a company that organizes and stages obstacle-course races that are televised on ESPN. The stakes in this case were very high, as plaintiff Modtruss, Inc., sought to prevent the airing of a recent BattleFrog race on ESPN and to enjoin our client from putting on additional races based on claims of alleged ...
- 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.
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.
Mission Pharmacal Co. v. Virtus Pharma., LLC
Led the defense of generic pharmaceutical company in a case involving allegations of false advertising and infringement of a patent related to prenatal vitamins and iron supplements. The parties reached a confidential settlement right before trial. Mission Pharmacal Co. v. Virtus Pharma., LLC (W.D. Texas)
- Represented Mueller Water Products in declaratory judgment actions involving patents and alleged trade secrets
Mueller Systems, LLC et al v. Teti et al.
Represented Mueller Water Products, Inc. in suits for declaratory judgments of non-infringement, invalidity and unenforceability of patent held by defendant, non-misappropriation of the defendants’ alleged trade secrets, and validity, inventorship, and ownership of client’s patent. Mueller Systems, LLC et al v. Teti et al. (E.D. Virginia and D. Massachussetts)
Represented several outdoor advertising companies in actions brought by a patent troll, T-Rex Property AB, for infringement of patents related to digital advertising technology. The parties reached a confidential settlement.
- Successful defense of various distributors in patent infringement actions relating to pipe couplings
Successfully transferred, deferred, or achieved dismissal of numerous patent infringement suits brought against a client’s distributors in favor of declaratory judgment suit filed by the client, the product manufacturer.
- USPTO reexamination proceedings related to pipe coupling patents for then-subsidiary of Mueller Water Products.
Obtained rulings from the USPTO’s Patent Trial and Appeal Board finding all challenged claims invalid in reexamination proceedings involving patents of a client’s competitor in the field of mechanical pipe couplings. Rulings resulted in a favorable settlement for the client.
Resolved several cases in which client, a national gift and home goods manufacturer, asserted trade dress and design patent infringement claims against competitors. The cases involved the popular cylindrical packaging for wine glasses.
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.
- 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.
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 the prosecution of U.S. and foreign patent applications in a large patent portfolio relating to identifying humans using antibody profiling processes.
Represented a global leader in mobile communications in a wide-ranging patent dispute against a competitor over patents relating to computer software, wireless communications, and touchscreen technology. The litigation resulted in a favorable settlement and license agreement.
Led defense of patent infringement case involving claimed method to detect autism by analyzing bodily fluids. After we filed two motions for summary judgment, the parties reached a confidential settlement. Great Plains Laboratory, Inc. v. Metametrix Clinical Laboratory
- Achieved dismissal of patent claim and successful resolution of remaining claims in case involving SEC compliance information
Led defense of case involving allegations of patent infringement and related claims based on a method of mapping SEC compliance information into a usable format. We obtained a dismissal of the patent infringement claim and then reached a confidential settlement on the related claims. NewRiver, Inc. v. Prospectus Central, LLC.
Joao Control & Monitoring Systems v. Comverge, Inc.
Handled the defense of a case for Comverge, Inc. in which the plaintiff, a non-practicing entity, claimed that Comverge infringed certain claims of a patent related to premises-monitoring technology. Successfully obtained a stay pending Inter Partes Reviews. The case was ultimately dismissed with prejudice, with no recovery from our client. Joao Control & Monitoring Systems v. Comverge, Inc. (N.D. Ga.)
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)
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.
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.
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.
Activelight, Inc. v. Allure Global, et al.
Handled the defense of Allure Global in a case brought by a non-practicing entity, Activelight, Inc., involving allegations of infringement of patents related to digital signage. The parties reached a confidential settlement. Activelight, Inc. v. Allure Global, et al. (N.D. Ga.)
Led defense of third-party claims for defense and indemnification in patent infringement case involving technology designed to obscure credit card numbers on receipts. The parties reached a confidential settlement. Ware v. Genesco v. Micros Systems, Inc. and Datavantage Corporation.
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 Comverge, Inc. in patent infringement action relating to energy usage management
Nxegen, LLC and Nxegen Holdings, Inc. v. Comverge, Inc.
At the client’s request, we took over the defense of a large and hotly-contested patent infringement case brought by Nxegen LLC and Nxegen Holdings Inc. The patents involved systems and methods for remotely monitoring and adjusting energy usage. Facing a tight discovery schedule, we managed to produce, review and analyze a voluminous number of documents, take and defend approximately 30 depositions in a one-month period, amend the complaint to allege ...
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.
Provided counsel to Bernie Bilski and Rand Warsaw in conjunction with the landmark U.S. Supreme Court case Bilski v. Kappos.
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.
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.
Drafted and prosecuted multiple patent applications for new technologies in the packaging industry and industrial valve industry.
Drafted and prosecuted multiple patent applications for new engine technologies for implementation on small passenger aircraft.
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.
Provided counsel to client Mueller Water Products, Inc. on patent matters, including prosecuting and maintaining the client’s patent portfolio.
Defended nation’s leading provider of health care services in patent infringement litigation concerning electronic medical records systems. The case was ultimately dismissed with prejudice, with no payments from the client.
Represented one of the world’s largest mobile communications companies in a successful defense at trial in an International Trade Commission investigation involving RF circuitry and baseband software in mobile phones.
Represented client in securing settlement of multi-party/multi-patent litigation allowing underwritten sale of publicly traded corporation.
Represented client in securing $2 billion settlement of multi-patent litigation.
Represented patentee in obtaining jury verdict against infringer resulting damages/fees/costs.
Represented patentee in jury trial resulting in multi-million dollar damages after successful defense of client’s patent portfolio.
Represented client in securing settlement in multi-party litigation preserving patentee’s retail market position.
- Taylor English Partner Amanda Hyland recognized in 2020 World Trademark Review 1000, Marietta Daily JournalMarch 5, 2020
- Cobb Business Journal, November 17, 2017
- November 6, 2017
- September 22, 2017
- February 16, 2017
- October 28, 2016
- August 5, 2016
- June 17, 2016
- June 17, 2016
- June 17, 2016
- June 17, 2016
- "Taylor English's Amanda Hyland Recognized Among Up and Coming Lawyers in Georgia," Atlanta Patch, East Cobb Patch, Marietta Patch and Smyrna PatchApril 21, 2016
- "Taylor English's David Hricik Appointed to American Law Institute," East Cobb Patch, Marietta Patch and Smyrna-Vinings PatchFebruary 16, 2016
- June 23, 2015
- November 5, 2020
- Taylor English Expands Intellectual Property Practice in North Carolina With the Addition of Partner Philip McCannOctober 14, 2020
- August 20, 2020
- Taylor English Partner Jeffrey R. Kuester Named Among the World’s Leading Patent Lawyers by Intellectual Asset ManagementJuly 2, 2020
- Taylor English Partners Amanda Groover Hyland and Jeffrey R. Kuester Earn Recognition as Managing Intellectual Property 2020 IP StarsJune 3, 2020
- April 23, 2018
- November 1, 2016
- August 15, 2016
- June 7, 2016
- February 3, 2016
- November 2, 2015
- August 17, 2015
- February 28, 2021
- August 27, 2020
- August 8, 2017
- May 25, 2017
- "Solo Shot: Is Supplying Only One Staple Component of a Patented Invention for Assembly Overseas Enough to Trigger Infringement Liability?" ABA PreviewNovember 21, 2016
- November 9, 2016
- "When a Patent 'Laches' on to Doctrine: Should There be a Patent-Specific Approach to the Defense of Laches?" ABA PreviewOctober 21, 2016
- September 28, 2016
- July 19, 2016
- June 3, 2016
- "What Standard Should the Patent Trial and Appeal Board Apply in Interpreting Patent Claims During Inter Partes Review? Is the Institution of Inter Partes Review Ever Appealable?" ABA Supreme Court PreviewApril 25, 2016
- "Three Years On: What The New Definition of Prior Art Means Today," World Intellectual Property ReviewMarch 18, 2016
- "What is the Proper Standard for Enhancing Patent Damages Under Section 284 of the Patent Act?" ABA PreviewFebruary 22, 2016
- February 9, 2016
- "Georgia’s New Patent Law: Bad Faith Threats of Infringement Create New Liabilities," Georgia Bar JournalDecember 11, 2014
- February 4, 2021
- "Intellectual Property 101 for the Woodworking Professional: Protecting Your IP,"International Woodworking Fair 2020October 26, 2020
- Significant Decisions In Recent Patent Cases And Their Impact On Patent Jurisprudence and Litigation, Patent Litigation 2019: Advanced Techniques & Best Practices, PLI SeminarOctober 15, 2019
- Lanier Islands, April 28-29, 2017
- "Careers in Patent Law," The IP Law Section of the Federal Bar Association and the UGA IP Law SocietyAthens, Ga., March 27, 2017
- "Establishing a Trade Secret Program in View of the DTSA and Patent Ineligibility," Intellectual Property Law InstituteAmelia Island, Fla., September 17, 2016
- "The Impact of Recent Supreme Court, Federal Circuit, and PTAB Decisions and Patent Law Reform Efforts on Patent Litigators, In-House General and Patent Counsel and the Judiciary," Federal Bar Association 2016 Annual Meeting and ConventionCleveland, Ohio, September 15, 2016
- "Beware the Death-Defying Design: IP Rights Can Survive Patent Expiration," Daily Report's In-House Counsel CLE SeminarAtlanta, Ga., March 15, 2016
- Alpharetta, Ga., September 23, 2015