Lewis E. Hudnell III

Lewis E. Hudnell III

Founding Principal
Location:
Mountain View, California
Phone:
650-564-3698
Fax:
347-772-3034
Email:

Lewis Hudnell 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 2015-2018 Northern California Super Lawyers list and is rated AV® Preeminent 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.

Areas of Practice

  • Patent Litigation
  • Patent Trials
  • Patent Licensing
  • Patent Prosecution
  • IP Counseling

Bar Admissions

  • California
  • New York
  • U.S. Patent and Trademark Office
  • U.S. Supreme Court
  • U.S. Court of Appeals Federal Circuit
  • U.S. Court of Appeals 2nd Circuit
  • U.S. District Court Northern District of California
  • U.S. District Court Central District of California
  • U.S. District Court Southern District of New York
  • U.S. District Court Eastern District of New York
  • U.S. District Court Western District of New York
  • U.S. District Court Eastern District of Texas

Education

  • University of Pennsylvania Law School, Philadelphia, Pennsylvania
    • J.D.
  • Cornell University - Operations Research and Industrial Engineering
    • B.S.

Representative Cases

  • Opticurrent, LLC v. Power Integrations (N.D. Cal.), Won jury verdict of infringement of patent relating to circuit for minimizing power leakage
  • Next Lighting Corporation v. Cree, Inc. (N.D. Cal.), Obtained favorable settlement in patent infringement action involving lighting unit design
  • MEC Resources, LLC v. Apple Inc. (N.D. Cal. and PTAB) Obtained favorable settlement in patent infringement action and dismissal of petition for inter partes review in matters involving semiconductor technology
  • Talsk Research Inc. v. Evernote Corporation (N.D. Cal.)Successfully represented internet archiving company who obtained favorable settlement in patent infringement action
  • Phenix, LLC v. Integrated Memory Logic et al. (E.D. Tx.)Successfully represented programmable gamma correction licensing company in obtaining favorable settlement in patent infringement actions
  • 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 represented email authentication software company in obtaining favorable settlement in patent infringement action
  • Worldwide Home Products, Inc. v. Time, Inc. et al. (S.D.N.Y.)Successfully defended major retailer and won summary judgment of inequitable conduct 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 email authentication software company in obtaining favorable settlement in patent infringement action
  • Main Hastings, LLC v. SanDisk Corporation (N.D. Cal.)Successfully represented qui tam realtor in obtaining favorable settlement in patent false marking action regarding solid state disk drives
  • Japan Cash Machine et al. v. MEI, Inc. (D. NV.) Won jury verdict of invalidity in patent infringement action involving bill validation technology
  • Samsung Electronics Co., Ltd. v. Renesas Technology Corporation et al. (ITC)Led litigation team that obtained favorable settlement after trial in patent infringement action involving direct memory access controller technology
  • Mars et al. v. Japan Cash Machine et al. (D.N.J.)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.
  • DataTreasury Corp. v. Bank of America Corp. (E.D. Tx.)Defended large financial institution in patent infringement action regarding check imaging technology
  • Web Chang v. Atmel Corp. (E.D. Tx.)Successfully defended semiconductor manufacturer in obtaining dismissal with prejudice of patent infringement action regarding field programmable gate arrays
  • Seagate Technology LLC, v. Cornice, Inc. (ITC and D.Del.)Obtained favorable settlement on the eve of trial in patent infringement action regarding hard disk drive technology
  • Millennium, LP v. ScanSoft, Inc. (S.D.N.Y.) Successfully defended document imaging software manufacturer in obtaining favorable early settlement in patent infringement action
  • Highland Industries, Inc. v. Toyobo Co., Inc. (M.D.N.C.)Successfully defended air bag manufacturer in obtaining early dismissal with prejudice of patent infringement action
  • Plasma Physics Co. v. LSI Logic Corp. (E.D.N.Y.) Successfully defended semiconductor manufacturer in obtaining favorable settlement in patent infringement action
  • Cisco Systems Inc., v. Huawei Technologies, Co., Ltd. (E.D. Tex.)Represented major networking company in patent litigation regarding operating system for networking devices
  • Amazon.com, Inc. v. BarnesandNoble.com, Inc. (W.D. Wash.)Won reversal of the District Court's preliminary injunction order on appeal and settled the case favorably to BarnesandNoble.com
  • Wistron Corporation v. Phenix Longhorn, LLC (PTAB), Defeated petition to institute Inter Partes Review of patent relating to programmable gamma integrated circuits
  • Symantec Corporation v. RPost Communications Limited (PTAB)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
  • Experian Marketing Solutions, Inc. et al. 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
  • Epsilon Data Management, LLC 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

Classes/Seminars

  • From Wonderland Back to Reality: A Practical Look at the Recent Changes in Patent-eligibility Jurisprudence, with U. Dubal, Select Counsel In-House Focus Presentation
  • Determining Patent Venue in the Light of TC Heartland Decision, with J. Choa, P. Ou, and G. Forbis, The Knowledge Group Live Webcast
  • Strategies and Tools for Minority-Owned Law Firm Success, with M. Maurice, S. Kumagai, R. Salinas, and T. Suh, California Minority Counsel Program Annual Business Conference
  • Patent Eligibility Determination in a Post-Alice World, with J. DeCarlo and Dr. O. Lopez, , The Knowledge Group Live Webcast
  • Patentability of Software Patents: Emerging Strategies for Attorneys, with R. Sachs and Dr. O. Lopez, The Knowledge Group Live Webcast
  • 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
  • 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
  • Patent Portfolio Transfers: Lessons Learned from Google's Acquisition of Motorola Mobility, with G. Sivinski and P. Turner-Brimm , Minority Corporate Counsel Association CLE EXPO
  • Closing Bell for Business Method Patents?, National Bar Association Annual Convention
  • Managing the Costs of Outside Counsel Effectively, with M. Soloman, C.Forstner, M. Kelley, and L. Renna, World Research Group’s 6th Annual Patents and the Financial Services Industry Conference
  • In re Bilski and the Future of the Business Method Patent, IP Law Review Conference, New York
  • 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, National Bar Association Annual Convention, Atlanta, Georgia
  • 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 , World Research Group's 4th Annual Patenting Business Methods in the Financial Services Industry Conference, New York, New York
  • Update on Recent Case Law and its Impact on the Intellectual Property Marketplace, Ocean Tomo's Spring 2007 Live Intellectual Property Auction, Chicago, Illinois
  • Business Methods Patents: The Need For Legislative and Administrative Reform, with D. Collarulli, W. Hanchuk, and A. Chaclas, World Research Group's 3rd Annual Patenting Business Methods in the Financial Services Industry Conference, New York, New York

Honors and Awards

  • Northern California Super Lawyers, 2015 - 2018
  • AV® PreeminentTM, Martindale-Hubbell®

Professional Associations and Memberships

  • American Bar Association, Member
  • California State Bar Association, Member
  • California Minority Counsel Program
  • National Bar Association, Member