Hudnell Law Group P.C.

 
 
 
Lewis E. Hudnell, III

D: 650.564.7720
F: 347.772.3034
E: lewis@hudnelllaw.com

 

Education


Cornell University, B.S. Operations Research and Industrial Engineering

University of Pennsylvania Law School, J.D.

 

Admissions


  • California
  • New York
  • U.S. Patent &
    Trademark Office
  • Supreme Court of the
    United States
  • Court of Appeals for the
    Federal Circuit
  • Court of Appeals for the Second Circuit
  • Southern District of
    New York
  • Eastern District of
    New York
  • Western District of
    New York
  • Central District of
    California
  • Northern District of
    California
  • Eastern District of Texas

 

Memberships


American Bar Association
California Minority Counsel Program

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LEWIS E. HUDNELL, III

Lewis E. Hudnell, III is an intellectual property attorney specializing in patent litigation and the founding principal of Hudnell Law Group P.C. He works closely with clients to understand their business and their needs in order to develop innovative strategies for helping them achieve favorable results in complex, high stakes patent disputes. Mr. Hudnell’s clients have ranged from individual inventors to major technology companies in the electronics, semiconductor, networking, computer software, electronic commerce, and financial services industries. Mr. Hudnell has successfully represented clients in patent trials in federal court and obtained numerous settlements and dismissals of patent lawsuits in favor of his clients. He has also successfully represented clients in post-grant proceedings before the Patent Trial & Appeal Board.

Mr. Hudnell also counsels clients on strategically protecting their inventions, preparing and negotiating various technology agreements, selling and acquiring intellectual property rights, monetizing intellectual assets, and managing patent litigation risk.

Before founding HLG, Mr. Hudnell was a principal in the New York office of Fish & Richardson P.C.

Mr. Hudnell is a frequent speaker and author in the areas of patent litigation, business method patents, the IP marketplace, and innovations in the practice of law.

Mr. Hudnell was selected to the 2015-2017 Northern California Super Lawyers list and is rated AV® PreeminentTM by Martindale-Hubbell®, its highest rating level, in the practice areas of Patents and Patent Litigation.

Mr. Hudnell earned a B.S. in Operations Research and Industrial Engineering from Cornell University, and a J.D., from the University of Pennsylvania Law School. He is registered to practice before the United States Patent and Trademark Office and is admitted to the bar in California and New York.

 

Litigation Experience

Successfully represented programmable gamma correction licensing company in obtaining favorable settlement in patent infringement actions (Phenix, LLC v. Integrated Memory Logic et al. (E.D. Tx.))

Successfully represented email authentication software company in obtaining favorable settlement in patent infringement action (RPost Holdings, Inc. et al. v. Responsys, Inc. (E.D. Tx.))

Successfully represented email authentication software company in obtaining favorable settlement in patent infringement action (RPost Holdings, Inc. et al. v. Exact Target, Inc. (E.D. Tx.))

Successfully represented email authentication software company in obtaining favorable settlement in patent infringement action (RPost Holdings, Inc. et al. v. Readnotify.com et al. (E.D. Tx.))

Successfully defended major retailer and won summary judgment of inequitable conduct in patent infringement action (Worldwide Home Products, Inc. v. Time, Inc. et al. (S.D.N.Y.))

Successfully represented email authentication software company in obtaining favorable settlement in patent infringement action (RPost Holdings, Inc. et al. v. Zix Corporation (E.D. Tx.))

Successfully represented email authentication software company in obtaining favorable settlement in patent infringement action (RPost Holdings, Inc. et al. v. Telarix, Inc. (E.D. Va.))

Successfully represented email authentication software company in obtaining favorable settlement in patent infringement action (RPost Holdings, Inc. et al. v. CanadaPost Corporation et al. (E.D. Tx.))

Successfully represented qui tam realtor in obtaining favorable settlement in patent false marking action regarding solid state disk drives (Main Hastings, LLC v. SanDisk Corporation (N.D. Cal.))

Won jury verdict of invalidity in patent infringement action involving bill validation technology. (Japan Cash Machine et al. v. MEI, Inc. (D. NV.))

Led litigation team that obtained favorable settlement after trial in patent infringement action involving direct memory access controller technology (Samsung Electronics Co., Ltd. v. Renesas Technology Corporation et al. (ITC))

Defeated Motion for Summary Judgment of Invalidity and obtained favorable claim constructions on almost all disputed terms at Markman hearing in patent infringement action regarding bill validation technology. (Mars et al. v. Japan Cash Machine et al. (D.N.J.))

Defended large financial institution in patent infringement action regarding check imaging technology. (DataTreasury Corp. v. Bank of America Corp. (E.D. Tx.))

Successfully defended semiconductor manufacturer in obtaining dismissal with prejudice of patent infringement action regarding field programmable gate arrays. (Web Chang v. Atmel Corp. (E.D. Tx.))

Obtained favorable settlement on the eve of trial in patent infringement action regarding hard disk drive technology. (Seagate Technology LLC, v. Cornice, Inc. (ITC and D.Del.))

Successfully defended document imaging software manufacturer in obtaining favorable early settlement in patent infringement action. (Millennium, LP v. ScanSoft, Inc. (S.D.N.Y.))

Successfully defended air bag manufacturer in obtaining early dismissal with prejudice of patent infringement action. (Highland Industries, Inc. v. Toyobo Co., Inc. (M.D.N.C.))

Successfully defended semiconductor manufacturer in obtaining favorable settlement in patent infringement action. (Plasma Physics Co. v. LSI Logic Corp. (E.D.N.Y.))

Represented major networking company in patent litigation regarding operating system for networking devices. (Cisco Systems Inc., v. Huawei Technologies, Co., Ltd. (E.D. Tex.))

Won reversal of the District Court's preliminary injunction order on appeal and settled the case favorably to BarnesandNoble.com. (Amazon.com, Inc. v. BarnesandNoble.com, Inc. (W.D. Wash.))

 

Patent Trial and Appeal Board Experience

Defeated two petitions to institute Inter Partes Review of patents relating to verifying delivery and integrity of electronic messages. (Symantec Corporation v. RPost Communications Limited (PTAB))

Partially defeated petition to institute Inter Partes Review of patent relating to verifying delivery and integrity of electronic messages. (Symantec Corporation v. RPost Communications Limited (PTAB))

Defeated two petitions to institute Covered Business Method Review of patents relating to verifying delivery and integrity of electronic messages. (Experian Marketing Solutions, Inc. et al. v. RPost Communications Limited (PTAB))

Defeated petition to institute Covered Business Method Review of patent relating to verifying delivery and integrity of electronic messages. (Epsilon Data Management, LLC et al. v. RPost Communications Limited (PTAB))

 

Transactional and Prosecution Experience

Transactional experience includes conducting patent due diligence and advising clients on intellectual property issues in business transactions and in the intellectual property marketplace.

Transactional experience also includes preparing and negotiating patent license agreements, patent assignment agreements, software license agreements, technology transfer agreements, and online warranty and indemnification agreements.

Prosecution experience includes prosecuting domestic and international patent applications for inventions relating to computer software, business methods, electronic commerce, web sites, Internet browsers, smart cards, cryptography and public key infrastructure, financial products, and financial analysis software.

 

Selected Presentations and Publications

Patent Eligibility Determination in a Post-Alice World, with J. DeCarlo and Dr. O. Lopez, The Knowledge Group Live Webcast (Jun. 29, 2017).

Patentability of Software Patents: Emerging Strategies for Attorneys in 2016, with R. Sachs and Dr. O. Lopez, The Knowledge Group Live Webcast (Feb. 4, 2016).

The Changing Landscape of Intellectual Property Strategies: What Every Firm Needs to Know, with J.Martin, C. Redfield, T. Wimbiscus, The Knowledge Group Live Webcast (Dec. 14, 2015).

The Wonderland of Patent Ineligibility as Litigation Defense, Law360 (June 5, 2015).

Developing and Implementing Successful Corporate IP Strategies, with P. Reyes, M. Cooke, and T. Pompey for the National Bar Association Annual Convention, Corporate Leadership Forum, Las Vegas, Nevada (July 14, 2012).

Patent Portfolio Transfers: Lessons Learned from Google's Acquisition of Motorola Mobility, with G. Sivinski and P. Turner-Brimm for the Minority Corporate Counsel Association CLE EXPO, Chicago, Illinois (March 22, 2012).

The Closing Bell for Business Method Patents?, with D.G. Santos, Law360 (September 9, 2009).

The Closing Bell for Business Method Patents?, National Bar Association Annual Convention, San Diego, California (August 6, 2009).

Managing the Costs of Outside Counsel Effectively, with M. Soloman, C.Forstner, M. Kelley, and L. Renna for the World Research Group’s 6th Annual Patents and the Financial Services Industry Conference (July 29, 2009).

In re Bilski and the Future of the Business Method Patent, moderator, IP Law Review Conference, New York, New York (October 30, 2008).

Patent Licensing and Enforcement Companies and their Societal Impact: A Study of the Model and What Companies Need to Know to Be Prepared, with N. Setty for the National Bar Association Annual Convention, Atlanta, Georgia (August 1, 2007).

The Current Landscape in Intellectual Property Law as it Affects the Financial Services Industry, with C. Macedo, W. Coggins, R. Stewart, D. Alderucci, and R. Hunt for the World Research Group's 4th Annual Patenting Business Methods in the Financial Services Industry Conference, New York, New York (July 24, 2007).

Update on Recent Case Law and its Impact on the Intellectual Property Marketplace, Ocean Tomo's Spring 2007 Live Intellectual Property Auction, Chicago, Illinois (April 18, 2007).

Business Methods Patents: The Need For Legislative and Administrative Reform, with D. Collarulli, W. Hanchuk, and A. Chaclas for the World Research Group's 3rd Annual Patenting Business Methods in the Financial Services Industry Conference, New York, New York (July 27, 2006).