Lewis E. Hudnell, III

Attorney Profile

Top Rated Intellectual Property Litigation Attorney in Mountain View, CA

Hudnell Law Group P.C.
 | 800 West El Camino Real, Suite 180
Mountain View, CA 94040
Phone: 650-564-3698
Fax: 347-772-3034
Selected To Super Lawyers: 2015 - 2020
Licensed Since: 2002
Practice Areas:
  • Intellectual Property Litigation (80%),
  • Intellectual Property (10%),
  • Business Litigation (10%)
    Attorney Profile

    Lewis E. Hudnell, III, the founder and principal of Hudnell Law Group P.C., provides innovative and effective representation to clients ranging from individual inventors to major technology companies in the electronics, semiconductor, computer networking, computer software, electronic commerce, and financial services industries.  His law practice focuses in the areas of patent litigation and intellectual property law, including experience with technology licensing, patents sales and acquisitions, patent procurement, patent portfolio analysis and due diligence, dispute resolution, and post-grant proceedings.

    Mr. Hudnell has obtained many successful results for his intellectual property clients. Representative matters include obtaining numerous favorable settlements in patent infringement cases, successfully defending patents in post-grant proceedings, and successfully representing clients at trial.

    Mr. Hudnell first obtained his Bachelor of Science in Operations Research and Industrial Engineering at Cornell University. After completing his undergraduate studies, he then went on to attend the University of Pennsylvania Law School, from where he graduated in 1998 with his Juris Doctor. Mr. Hudnell is admitted to practice in both California and New York. He is admitted to practice before the U.S. Courts of Appeal for the Federal and 2nd Circuits,  the U.S. District Courts for the Central and Northern Districts of California, the U.S. District Courts for the Southern, Eastern and Western Districts of New York, and the U.S. District Court for the Eastern District of Texas. Mr. Hudnell is also registered to practice before the U.S. Patent and Trademark Office.

    He is a frequent speaker giving presentations to groups of fellow professionals on topics such as patent litigation, law practice, the intellectual property marketplace, and business method patents.

     
    Practice Areas
    • 80%Intellectual Property Litigation
    • 10%Intellectual Property
    • 10%Business Litigation
    Focus Areas

    Patents

    Selections

    Selected to Super Lawyers for 6 yearsbottom-image

    Super Lawyers: 2015 - 2020

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    About Lewis Hudnell, III

    Admitted: 2002, California

    Professional Webpage: http://www.hudnelllaw.com/our-attorneys.html

    Honors/Awards:

    • AV® Preeminent, Martindale-Hubbell®

    Special Licenses/Certifications:

    • Licensed California Realtor, 2018

    Bar/Professional Activity:

    • Western District of New York
    • Eastern District of Texas
    • Supreme Court of the United States
    • United States Patent and Trademark Office, 2002
    • Court of Appeals for the Federal Circuit
    • Eastern District of New York
    • Northern District of California
    • Member, California Minority Counsel Program
    • California, 2002
    • Southern District of New York
    • Central District of California
    • Member, American Bar Association
    • Member, National Bar Association
    • New York, 1999
    • Court of Appeals for the Second Circuit

    Scholarly Lectures/Writings:

    • After the June 2014 Supreme Court's decision in Alice v. CLS Bank, numerous patent eligibility cases have flooded district courts, the Federal Circuit and impacted practice before the U.S. Patent Trademark Office (USPTO). Over the coming weeks and months, patent practitioners and industry anticipate a continuing number of significant patent eligibility decisions that will further reshape and remodel the landscape of patent eligibility law. Mr. Hudnell participated on a panel of key thought leaders and analyzed the recent trends and developments surrounding patent eligibility determinations in a Post-Alice landscape., Speaker, Patent Eligibility Determination in a Post-Alice World, The Knowledge Group Live Webcast, 2017
    • Speaker, Developing and Implementing Successful Corporate IP Strategies, National Bar Association, 2012
    • Speaker, Patent Portfolio Transfers: Lessons Learned from Google’s Acquisition of Motorola Mobility, Minority Corporate Counsel Association, 2012
    • The economic recession is not the only downturn troubling the financial industry. Another downturn is happening in litigations involving business method patents — a principal form of intellectual property for many financial-services companies — following last year’s Federal Circuit In re Bilski decision., Author, The Closing Bell for Business Method Patents?, Law360, 2009
    • The Closing Bell for Business Method Patents?, National Bar Association Annual Convention, San Diego, California, 2009
    • Managing the Costs of Outside Counsel Effectively, World Research Group’s 6th Annual Patents and the Financial Services Industry Conference, 2009
    • In re Bilski and the Future of the Business Method Patent, IP Law Review Conference, New York, New York, 2008
    • Patent Licensing and Enforcement Companies and their Societal Impact: A Study of the Model and What Companies Need to Know to Be Prepared, National Bar Association Annual Convention, Atlanta, Georgia, 2007
    • The Current Landscape in Intellectual Property Law as it Affects the Financial Services Industry, World Research Group's 4th Annual Patenting Business Methods in the Financial Services Industry Conference, New York, New York, 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, 2007
    • Business Methods Patents: The Need For Legislative and Administrative Reform, World Research Group's 3rd Annual Patenting Business Methods in the Financial Services Industry Conference, New York, New York, 2006
    • For accused infringers in software patent cases, the year since the U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank has been like a fantasy. District courts have used Alice to invalidate software patents based on a litigation defense whose statutory basis is nonexistent., Author, The Wonderland of Patent Ineligibility as Litigation Defense, Law360, 2015
    • The fast changing Intellectual Property (IP) landscape creates a more complex environment for companies to cope up with. Such complexity creates numerous challenges on how companies handle their intellectual capital assets and to ensure that they would produce a sustainable competitive advantage over their competitors.  Mr. Hudnell participated on a panel of key thought leaders to present their findings and best practices that would be able to adopt to the Changing Landscape of Intellectual Property Strategies., Speaker, The Changing Landscape of Intellectual Property Strategies: What Every Firm Needs to Know, The Knowledge Group Live Webcast, 2015
    • In following the U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank International, patent owners and applicants must acknowledge the change brought about by the Alice case. Mr. Hudnell participated on a panel of key thought leaders and practitioners entitled Patentability of Software Patents: Emerging Strategies for Attorneys in 2016., Speaker, Patentability of Software Patents: Emerging Strategies for Attorneys in 2016, The Knowledge Group Live Webcast, 2016
    • Presented on best practices and resources for law firm management and operations, case management, marketing and business development, and other aspects of running a minority-owned firm in today’s market., Speaker, Strategies and Tools for Minority-Owned Law Firm Success, California Minority Counsel Program, 2017
    • Although the U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank Int’l set forth a two-part test for determining patent eligibility, both the Supreme Court and the Federal Circuit have drawn on other sections of the patent statute to determine eligibility. As a result, in many instances, patent-eligibility determinations have resembled patentability determinations. By blending different inquiries under the patent statute, Alice and its progeny have made determining what constitutes patent-eligible subject matter unclear and arguably made the patent system weaker., Author, The Post-Alice Blend Of Eligibility And Patentability, Law360, 2017
    • In the later part of 2017, the U.S. Court of Appeals for the Federal Circuit  made clear that the Supreme Court’s decision in TC Heartland v. Kraft Foods dramatically changed the patent venue landscape. An alleged infringer may now argue improper venue “in a judicial district where it is subject to a court’s personal jurisdiction but where it is not incorporated and has no regular and established place of business.” As a result of this Federal Circuit opinion and many other post-TC Heartland decisions, venue is becoming a much more complicated issue.  Mr. Hudnell particpated in a panel of key thought leaders they delve into an in-depth analysis of the current trends and recent court rulings involving determination of Patent Venue in light of the TC Heartland decision. , Speaker, Determining Patent Venue in the Light of TC Heartland Decision, The Knowledge Group Live Webcast, 2018
    • For the first three years following the Supreme Court issued its landmark decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l. , the U.S. Court of Appeals for the Federal Circuit had overwhelming ruled against the patent owner on eligibility challenges. Many have argued that the risk of having a patent declared ineligible under Alice has discouraged investments in innovation, particularly for software companies, and weakened the U.S. patent system. But a recent string of Federal Circuit decisions in favor of patent owners, all issued in 2018, may provide new hope for patent owners and restore balance to the patent-eligibility landscape.  Mr. Hudnell participated in a discussion analyzing the recent developments surrounding this important topic and provided practical insight for in-house decision makers on the impact of these significant developments., Speaker, From Wonderland Back to Reality: A Practical Look at the Recent Changes in Patent-eligibility Jurisprudence, Select Counsel In-House Focus Presentation, 2018

    Verdicts/Settlements:

    • Opticurrent, LLC v. Power Integrations (N.D. Cal.), 2019
    • Phenix Longhorn, LLC v. Wistron Corporation (E.D. Tx. and PTAB) , 2019
    • Next Lighting Corporation v. Cree, Inc. (N.D. Cal.), 2019
    • MEC Resources, LLC v. Apple Inc. (N.D. Cal. and PTAB), 2018
    • Talsk Research Inc. v. Evernote Corporation (N.D. Cal.), 2018
    • Phenix, LLC v. Integrated Memory Logic et al. (E.D. Tx.), 2016
    • Worldwide Home Products, Inc. v. Time, Inc. et al. (S.D.N.Y.), 2013
    • RPost Holdings, Inc. et al. v. Readnotify.com et al. (E.D. Tx.), 2013
    • RPost Holdings, Inc. et al. v. Responsys, Inc. (E.D. Tx.), 2013
    • RPost Holdings, Inc. et al. v. Exact Target, Inc. (E.D. Tx.), 2013
    • RPost Holdings, Inc. et al. v. Zix Corporation (E.D. Tx.), 2013
    • RPost Holdings, Inc. et al. v. Teleraix, Inc. (E.D. Va.), 2012
    • RPost Holdings, Inc. et al. v. CanadaPost Corporation (E.D. Tx.), 2012
    • Main Hastings, LLC v. SanDisk Corporation (N.D. Cal.), 2011
    • Samsung Electronics Co., Ltd. v. Renesas Technology Corporation et al. (ITC)
    • Japan Cash Machine et al. v. MEI, Inc. (D. NV.)
    • Mars et al. v. Japan Cash Machine et al. (D.N.J.)
    • Seagate Technology LLC, v. Cornice, Inc. (ITC and D.Del.)
    • DataTreasury Corp. v. Bank of America Corp. (E.D. Tx.)
    • Millennium, LP v. ScanSoft, Inc. (S.D.N.Y.)
    • Highland Industries, Inc. v. Toyobo Co., Inc. (M.D.N.C.)
    • Web Chang v. Atmel Corp. (E.D. Tx.)
    • Plasma Physics Co. v. LSI Logic Corp. (E.D.N.Y.)
    • Cisco Systems Inc., v. Huawei Technologies, Co., Ltd. (E.D. Tex.)
    • Amazon.com, Inc. v. BarnesandNoble.com, Inc. (W.D. Wash.)

    Representative Clients:

    • Leo India Films, Ltd., 2019
    • Lotus Five Star, Ltd., 2019
    • Endonovo Therapeutics, Inc., 2019
    • Ranker, Inc., 2019
    • VOIP-Pal.com, Inc., 2019
    • Kannuu Pty., Ltd., 2019
    • Volvo Car USA, LLC, 2019

    Educational Background:

    • Cornell University, Bachelor of Science, Operations Research and Industrial Engineering, 1995
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    Office Location for Lewis E. Hudnell, III

    800 West El Camino Real
    Suite 180
    Mountain View, CA 94040

    Phone: 650-564-3698

    Fax: 347-772-3034

    Lewis E. Hudnell, III:

    Last Updated: 4/22/2020

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