Professional Summary
Mr. Hudnell is an intellectual property attorney specializing in patent litigation and Special Litigation Counsel to The Gikkas Law Firm, P.C. He works closely with his clients to understand their business and their needs in order to develop innovative strategies for achieving 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, computer 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 patenting their innovations, preparing and negotiating various technology agreements, monetizing their intellectual property assets, and managing patent litigation risk.
Mr. Hudnell is a frequent speaker and author in the areas of patent litigation, the patent marketplace, and innovations in the practice of law.
Mr. Hudnell was selected to the 2015 Northern California Super Lawyers list and is rated AV® PreeminentTM by Martindale-Hubbell®, its highest rating level, in the practice areas of Patents and Patent Litigation.
Mr. Hudnell earned a Bachelor of Science in Operations Research and Industrial Engineering from Cornell University and a Juris Doctor 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.
EDUCATION
Juris Doctor, University of Pennsylvania Law School, 1998
Bachelor of Science in Operations Research and Industrial Engineering, Cornell University, 1995
BAR MEMBERSHIPS AND ADMISSIONS
Member of the following bars:
- California
- New York
Admitted to practice before the following federal courts:
- Court of Appeals for the Federal Circuit
- Court of Appeals for the Second Circuit
- Southern District of New York
- Eastern District of New York
- Western District of New York
- Central District of California
- Northern District of California
- Eastern District of Texas
Registered to practice before the United States Patent and Trademark Office
PUBLICATIONS AND PRESENTATIONS
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, Las Vegas, Nevada (July 14, 2012).
Patent Portfolio Transfers: Lessons Learned from Google's Acquisition of Motorla Mobility, with G. Sivinski and P. Turner-Brimm for the Minority Corporate Counsel Association CLE EXPO, Chicago, Illinois (March 22, 2012).
REPRESENTATIVE CASES
Antitrust/Complex litigation: Represented Taiwanese computer connector manufacturer in breach of contract and antitrust litigation on USB connectors and related standards. (S.D.N.Y.)
Patent litigation: Successfully represented email authentication software company in obtaining favorable settlement in patent infringement action (E.D. Tx.)
Patent litigation: Successfully defended major retailer and won summary judgment of inequitable conduct in patent infringement action (S.D.N.Y.)
Patent litigation: Successfully represented email authentication software company in obtaining favorable settlement in patent infringement action (E.D. Tx.)
Patent litigation: Successfully represented email authentication software company in obtaining favorable settlement in patent infringement action (E.D. Va.)
Patent litigation: Successfully represented email authentication software company in obtaining favorable settlement in patent infringement action (E.D. Tx.)
Patent litigation: Successfully represented qui tam realtor in obtaining favorable settlement in patent false marking action regarding solid state disk drives (N.D. Cal.)
Patent litigation: Won jury verdict of invalidity in patent infringement action involving bill validation technology. (D. NV.)
Patent litigation: Led litigation team that obtained favorable settlement after trial in patent infringement action involving direct memory access controller technology (ITC)
Patent litigation: 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 (D.N.J.)
Patent litigation: Defended large financial institution in patent infringement action regarding check imaging technology. (E.D. Tx.)
Patent litigation: Successfully defended semiconductor manufacturer in obtaining dismissal with prejudice of patent infringement action regarding field programmable gate arrays (E.D. Tx.)
Patent litigation: Obtained favorable settlement on the eve of trial in patent infringement action regarding hard disk drive technology (ITC and D.Del.)
Patent litigation: Successfully defended document imaging software manufacturer in obtaining favorable early settlement in patent infringement action (S.D.N.Y.)
Patent litigation: Successfully defended air bag manufacturer in obtaining early dismissal with prejudice of patent infringement action (M.D.N.C.)
Patent litigation: Successfully defended semiconductor manufacturer in obtaining favorable settlement in patent infringement action (E.D.N.Y.)
Patent litigation: Successfully convinced major networking company to file first offensive patent litigation based on results of extensive pre-suit investigation (E.D. Tex.)
Patent litigation: Won reversal of the District Court's preliminary injunction order on appeal and settled the case favorably to BarnesandNoble.com (W.D. Wash.)