|
J. Steven Baughman
Partner
|
|
|
|
Steve Baughman is an intellectual property partner in Ropes & Gray’s Washington, D.C. office, where he recently returned after spending three years in Japan to open the firm’s office in Tokyo. For more than 18 years, Steve has worked with leading international companies to resolve their IP and technology-focused commercial disputes in a broad array of litigation, licensing, and counseling settings. These include patent and trade secret disputes—as well as trademark, copyright, and other complex commercial matters—presented in trial and appellate courts, domestic and international arbitration tribunals, and the International Trade Commission. In connection with infringement disputes and litigation, Steve also conducts strategic inter partes and ex parte patent reexaminations before the U.S. Patent and Trademark Office. Serving clients like Aisin AW, Motorola, Sanyo Electric Co., Ltd., Simmons Bedding Company, Orbital Sciences Corporation, Spansion Japan Limited and other leaders in a wide range of industries, Steve has experience with diverse subject matter ranging from communications networks, semiconductors, and software to disk drives, satellites, and GPS tracking systems, and from financial services and business methods to pharmaceuticals and video games. He is also experienced in media-related disputes and claims of plagiarism.
Whether they are facing off against industry competitors, patent trolls, or other opponents, Steve offers his clients experience in crafting and implementing efficient strategies for achieving real business goals. Steve also brings experience in working effectively across jurisdictions, with multiple counsel and large groups of codefendants.
- In the Matter of Certain Flash Memory and Products Containing the Same: Defended Spansion Japan in pending multi-respondent ITC investigation into alleged infringement of patents relating to semiconductor device manufacturing
- Tom Tom Global Assets B.V. v. Aisin AW Co., Ltd., et al. (E.D. Tex., Marshall Div.); and Aisin AW Co., Ltd. v. TomTom NV (E.D. Tex., Lufkin Div.): Represented Aisin AW in suits involving seven patents relating to vehicle navigation systems. Both suits resolved as part of a global settlement of cases pending in the U.S., Germany and Japan, in which both companies received licenses under the other’s patents
- CyberSource Corporation v. Retail Decisions, Inc., et al. (N.D. Cal.): Defended related UK and US clients against patent infringement allegations relating to fraud detection in Internet credit card transactions. Successfully narrowed and stayed suit pending ex parte reexamination of asserted patent, where plaintiff amended all of its claims. Upon lifting of stay, filed summary judgment motions to invalidate the asserted claims. Based on one of these motions, following the Federal Circuit’s Bilski decision, Judge Patel found all asserted claims invalid for failure to claim patentable subject matter
- Bioject Inc. v. Robert R. Gonnelli and Biovalve Technologies Inc.: Lead counsel defending Biovalve and its founder against suit seeking correction of patent inventorship and alleging misappropriation of trade secrets relating to needle-free injection technology. Case successfully settled after briefing of motion to dismiss and limited discovery
- BTG USA, Inc. v. Magellan Corporation (E.D. Pa.): Defended Magellan Corporation against claims of infringement of a patent relating to a “secret communication system,” asserted in consolidated suits against GPS and other technologies. Case settled following favorable Markman decision
Honors & Awards
- Litigation Counsel of America, Fellow
Professional & Civic Activities
- Master in the Giles S. Rich American Inn of Court for intellectual property litigators (2004-2007)
- Successfully challenged Maryland restriction on voter-registration in pro bono suit
- Participated in drafting report for the Lawyers Committee for Human Rights
- Participated in pro bono federal habeas corpus appeals on behalf of state prisoners in Virginia and Maryland, including a Virginia death row inmate
©1996-2012 Ropes & Gray LLP. All rights reserved.
|
|
Education
-
JD, cum laude, Harvard Law School, 1993
-
BSE (Electrical Engineering), Princeton University, 1990; Tau Beta Pi
Bar Admissions
- Japan, Gaikokuho Jimu Bengoshi (New York and Washington, D.C.), 2007-2010
- District of Columbia
- New York
- U.S. Patent and Trademark Office
Courts
- U.S. Court of Appeals for the Federal Circuit
- U.S. Court of Appeals for the Fourth Circuit
- U.S. District Court for the Southern District of New York
- U.S. District Court for the Western District of New York
- U.S. Court of Federal Claims
Memberships & Affiliations
- American Bar Association
- American Chamber of Commerce in Japan
- Daini Tokyo Bar Association
- District of Columbia Bar Association
- New York State Bar Association
- Federal Circuit Bar Association
- New York Intellectual Property Law Association
- Intellectual Property Owners Association (Arbitration & Mediation Committee, 2009; Patent Office Inter Partes Proceedings Committee, 2010)
- Member, IEEE
|
|