Gene W. Lee

Partner

  • JD, Cornell Law School, 1992
  • BS (Mechanical Engineering), Columbia University, 1989

Qualifications

  • New York
  • U.S. Patent and Trademark Office

Court Admissions

  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Southern District of New York

Gene W. Lee

Partner

Gene is an experienced lead counsel in patent litigations involving a wide range of technologies, including computer systems and software, telecommunications, medical devices, videogames, financial services, chemistry, semiconductors, and geoscience. In addition to patent litigation, Gene regularly represents clients in patent licensing, post-grant proceedings in the USPTO, and trade secret and copyright matters. He also works with the firm’s corporate department in advising clients on IP-related aspects of corporate transactions. 

Experience

  • Worlds, Inc. v. Activision Blizzard (patent litigation relating to videogame software), court allowed motion of summary judgment of invalidity prior to correction of asserted patents, court allowed motion of summary judgment of invalidity prior to correction of asserted patents; Worlds.com v. NCsoft Corp. (patent litigation relating to videogame software successfully transferred out of the E.D. Texas)
  • In re Products Having Laminated Packaging, Laminated Packaging, and Components Thereof (Inv. No. 337-TA-874; co-lead counsel for Respondent Diageo North America). This investigation was the first of the ITC’s pilot program for possible early disposition of cases. Following an accelerated trial on the economic prong of domestic industry, the Commission found that the complainant (a non-practicing entity) failed to satisfy the economic prong and terminated the investigation.
  • Rotatable Technologies v. major Korean electronics company (patent litigation relating to user interface technology), resulting in a stipulated judgment of noninfringement following claim construction, which was affirmed on appeal, which was affirmed on appeal.
  • NCsoft Corp. v. Bluehole Studios, Inc. (co-lead counsel for plaintiff in trade secret misappropriation, copyright, and unfair business practices litigation relating to videogames)
  • Rydex Ltd. v. Hyundai Motor America and Kia Motors America; Rydex Ltd. v. Discover Financial Services and American Express Company (lead counsel in patent lawsuits involving fuel systems)
  • Auction Management Solutions v. Live Global Bid and ADESA (lead counsel in patent lawsuit involving computer systems used in live auctions)  
  • Wi-LAN v. LG Electronics (patent litigation concerning CDMA and Wi-Fi technology)
  • TransAct Technologies v. FutureLogic (lead counsel in patent litigation concerning multi-port printers)
  • One of the world’s largest chemical companies v. Chevron Phillips Chemical Company (patent litigation relating to chemical processes) 
  • Sofamor Danek v. Surgical Dynamics and U.S. Surgical (patent litigation involving spinal fusion devices)

Awards

  • Chambers Global: The World's Leading Lawyers for Business (2013-2014)
  • Who’s Who Legal: Patents (2014)
  • Managing IP – “IP Star” (2013-2014)
  • PLC Which Lawyer (2012)
  • IAM Patent 1000 – The World's Leading Patent Practitioners (2013-2014)

Publications

Publications

  • Quoted, “Supreme Court rules for Limelight in patent infringement appeal,” Inside Counsel (June 3, 2014)
  • Quoted, “SCOTUS provides more light for patent reformers; Justice Alito scolds CAFC,” Intellectual Asset Management (June 3, 2014)
  • Quoted, “Inducement Ruling Invites Multiparty-Infringement Review,” Law360 (June 2, 2014)
  • Quoted, “Supreme Court Slaps Loose Business-Method Patents, Federal Circuit In Rulings,” Forbes (June 2, 2014)
  • Quoted, “Justices Take Aim At Fed. Circ. Induced Infringement Rule,” Law360 (April 30, 2014)
  • Gene Lee, “Some Recent Developments and Cases in Patent Law – A Review of Joint Infringement, Willful Infringement, and Invalidity Challenges Before The Patent Trial and Appeal Board,” The Impact of Recent Patent Law Cases and Developments (Inside the Minds Series), 2014
  • Gene Lee and Julian Moore, “Splitting Joint Infringement: Understanding Akamai and McKesson,” PLI Patent Litigation 2013 Program (October/November 2013)
  • Quoted, “Another State Catches Patent Troll Fever,” The Am Law Litigation Daily (July 22, 2013)
  • Gene Lee, J. Steven Baughman and Rodrigo Valle, “The multi-party infringement puzzle,” The Patent Lawyer (November/December 2012)
  • “Akamai/McKesson Inducement Rule Affects Wide Range of Industries, Practitioners Say,” Bloomberg BNA’s Patent, Trademark & Copyright Journal (September 14, 2012)
  • “Federal Circuit Refines 'Induced Infringement' Theory to Revive Akamai and McKesson Suits,” The AmLaw Litigation Daily (August 31, 2012)
  • Gene W. Lee, Brandon H. Stroy and Aaron S. Jacobs, “Impact of In re TS Tech USA Corp. Decision,” IP Law Today, Vol. 16, No. 2 (February 2009)
  • Katherine A Helm and Gene W. Lee, “Call It a Comeback: A Sweeping Change in the Law on Declaratory Judgment Actions Against Patent Owners,” New York University Annual Survey of American Law, Vol. 64, Issue 2 (2008)
  • James E. Hopenfeld and Gene W. Lee, “Close Enough?,” LegalTimes (May 8, 2006)

Presentations

  • Presenter, “Infringement Based on the Acts of Multiple Parties,” PLI Patent Litigation 2013 program (November 11-12, 2013)
  • Panel Moderator, “Sea Change In Business Method And Software Patents:  How Will Method-Type Patents Be Judged In A Post-Bilski World?,” NAPABA 2009 Annual Conference (November 20, 2009)
  • Lecturer, “Recent Patent Decisions of Interest to the Financial Services Community,” IIR 2nd Annual Summit on IP Rights for Financial Services (April 25-26, 2006)