Paul Haughey is a partner in the San Francisco office of Kilpatrick Townsend and counsels clients in all facets of intellectual property strategy, primarily in the patent area, with an emphasis on strategic counseling, merger and acquisition IP due diligence, patent opinions, patent prosecution, patent valuations, and Inter Partes Reviews under the America Invents Act. He has written nearly 100 patent opinions and has been deposed 6 times as an opinion witness. He has prepared and defended 20 inter partes reviews (IPRs). He also handles early phase litigation infringement and validity analysis for settlement evaluation, and product clearances (right-to-use studies). He has guided clients in product design activities to avoid infringement problems.
With more than 30 years of patent experience, Mr. Haughey is familiar with a wide range of technologies, including Internet systems, software, blockchain technology, financial systems, mobile phones, microprocessors, computer peripherals, analog and digital circuit design, optics and medical instrumentation.
Mr. Haughey has successfully filed reexaminations that allowed stays of litigation and cost savings for clients, making it financially viable to fight a patent. He has successfully convinced patent owners to significantly reduce settlement demands, or to drop infringement claims altogether against clients without the need for court or Patent Office proceedings.
Mr. Haughey previously worked as a corporate attorney working on financings. With that corporate understanding he is uniquely experienced to deal with patent infringement allegations on the eve of an IPO. He quickly investigated patent infringement allegations filed against a number of companies after filing with the SEC for an IPO, and successfully satisfied the underwriters with non-infringement opinions and appropriate prospectus language.
Prior to entering the field of law, Mr. Haughey was a circuit design engineer at Hughes Aircraft Company.
Mr. Haughey was listed in The Best Lawyers in America® for Patent Law in 2022 and the six years immediately preceding. He was recommended in 2019 and in 2015 and the three years prior by Legal 500 US in the area of Patent Prosecution. Mr. Haughey was recognized as an "IP Star" in 2022 and the nine years immediately preceding by Managing Intellectual Property magazine. He was recognized by Legal Media Group in its 2013 Guide to the World's Leading Patent Practitioners.
Performed patent due diligence in 2021 for a private investment in an imaging medical device company.*
From 2019 to 2021, obtained a family of patents relating to passwordless authentication for Beyond Identity.
Prepared a pro bono amicus brief to the Alaska Supreme Court in 2021 for RepresentUs and FairVote supporting Ranked Choice Voting, which was upheld in a 2022 decision.
Prepared 5 IPR petitions in 2020 relating to financial systems that resulted in settlement of the litigation.*
Prepared multiple patent validity and infringement opinions on cryptocurrency patents in 2019.*
In 2019, successfully replaced former counsel and handled brief and oral hearing to uphold important claims of Patent Owner in IPR2017-01742.
In 2019 performed patent valuation for patent portfolio in the heavy equipment technology.*
Performed Freedom to Operate study in the Internet live streaming and shopping technology in 2018.*
* The confidential nature of most projects means the parties and details cannot be named. These are representative examples of the breadth of projects handled.
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University of California, Hastings College of the Law J.D. (1980) Order of the Coif
University of California, Irvine B.S. (1976) Electrical Engineering
U.S. Patent and Trademark Office
San Francisco Patent and Trademark Law Association
Pro-bono immigration work for Community Legal Services in East Palo Alto & East Bay Community Law Center
Volunteer for non-partisan election reform organizations RepresentUs and CA RCV Coalition
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