PAUL R. JUHASZ (e-mail: pjuhasz@wmalaw.com)
PRACTICE AREAS
Patent litigation, licensing, counseling and prosecution involving complex technical issues
EDUCATION
J.D., University of Dayton School of Law (1983)
B.S.E.E., University of Washington (1978)
B.S.Chem.E., University of Washington (1978)
LEGAL & TECHNICAL EXPERIENCE
· Chief IP Counsel, Flextronics, 2004
· Vice-President Intellectual Property & Assistant General Counsel, Symbol, 2003
· Director IP Americas, Nokia, 1999-2003
· Of Counsel, Thompson & Knight, 1997-1999
· Patent Counsel, Timex, 1995-1997
· Patent Counsel, International Paper, 1991-1995
· Patent Counsel, W.R. Grace, 1987-1991
· Associate, Pennie & Edmonds, 1983-1987
· Captain, U.S.A.F., 1979-1983
Mr. Juhasz’ practice emphasizes all facets of intellectual property litigation, counseling, licensing, and prosecution particularly in highly complex technology in the electrical and chemical industries. He has handled cases involving computer systems, microprocessors, computer bus architecture, memory products, digital recorders, telecommunications systems, controller circuits, antennas, electronic components, semiconductors, encoding/decoding methods, software, automation systems, internet-based methods, video and image compression, power management, specialty chemicals and medical implants. He has extensive IP contracting experience with emphasis on commercial and government licensing, and mergers and acquisition, and R&D agreements. He brings extensive prosecution, licensing, global IP counseling, best practices, industrial standards, and litigation experience into prosecuting and leveraging patents. A former chief IP counsel for several large companies, a former electrical design engineer, a licensed professional electrical engineer, Mr. Juhasz brings unique in-house and engineering experience into every engagement.
REPRESENTATIVE MATTERS
Mr. Juhasz has done extensive work in global cross-licensing and technology deals involving companies like IBM, Texas Instruments, Qualcomm, Abbott Laboratories, Johnson & Johnson, and Kyocera. He has extensive global IP counseling, prosecution, and large department management experience. He is published and a speaker on such topics as “Patent Exhaustion, Implied License, and the Use of Nonasserts in Agreements”; “Responding to Patent Assertions, Cease & Desist Letters and Indemnity Demands; “IP Scorecarding – Demonstrating & Maximizing Returns On IP Investment”; “The Art Of Intellectual Property - - Patent, Copyright, Trademark, and Trade Secret Essentials for Professionals”; “Paralegals, The Unsung Heroes of IP Law”; “Enhancing Shareholder Value Through Intellectual Property”; and ABC’s Of Patents – What Every Entrepreneur Should Know”. Representative litigation experience includes: Hewlett-Packard Company v. Acer, Incorporated et al.; International Printer Corp. v. Hewlett-Packard Company et al.; O2 Micro International Limited v. Samsung Electronics Co. Ltd. et al.; In the Arbitration of Dow Corning Corp. v. Wright Medical Technology, Inc.; In Re Compression Labs, Inc., Patent Litigation; Symbol Technologies v. Lemelson; Symbol Technologies v. Proxim; GTE v. Nokia; Bell Atlantic Network Services, Inc. v. Covad; Nokia Inc. and Nokia Mobile Phones, Inc. v. Hypercel Corporation; Milliken Research Corp. v. International Paper Co.; and American Standard v. Pfizer. He was the chairman of the Lemelson Joint Defense Group which was a consortium of companies that defeated the Lemelson patents. A Captain in the Air Force, he was awarded Air Force “Best Paper Award” by Secretary of Air Force Hans Mark for “Computer Velocity Control of a Sled Used in Impact Studies”.
ADMITTED
Mr. Juhasz is a member of the Texas, New York, Washington State and New Jersey Bars. He is admitted to practice in several federal district courts, the United States Courts of Appeal for the Second Circuit and Federal Circuit, and the United States Patent and Trademark Office.
BAR & PROFESSIONAL ASSOCIATIONS
American Corporate Patent Counsel Association, American Intellectual Property Law Association, Licensed Professional Engineer State of Ohio