Russ is a registered patent attorney with a degree in mechanical engineering, and he has broad experience in both the mechanical and electrical arts. His practice focuses on patent infringement litigation, counseling, technology-related commercial disputes, and other intellectual property matters such as trade secrets and trademarks. He also has experience with both U.S. and international patent prosecution.
Russ is skilled in all phases of litigation, from pre-litigation counseling through trial, and including appeals to both the Federal Circuit and the Ninth Circuit. He has prepared successful motions on claim construction (Markman) and summary judgment on infringement and validity issues. He has litigated in federal courts, state courts, the International Trade Commission, and in arbitration. Russ has litigated in diverse technical fields, including semiconductors, microprocessors, food processing equipment, software, consumer audio products, encryption, and mechanical devices. Some of his reported decisions include:
- Vistan Corp. v. Fadei USA, Inc., 2013 U.S. App. LEXIS 24005 (Fed. Cir. Dec. 3, 2013)(Federal Circuit reversing district court’s erroneous claim construction and remanding);
- Bass Pro v. Cabela's, 485 F.3d 1364 (Fed. Cir. 2007) (Federal Circuit reversing the district court and holding that patentee's amendments to the preamble limited the scope of the patent and required a finding of non-infringement);
- Merida-Alvarado v. Holder, 379 Fed. Appx. 608 (9th Cir. 2010) (appellate court withdrawing its previous memorandum disposition);
- Embs v. Jordan Outdoor Enters., 617 F.Supp.2d 680 (S.D. Ohio 2008) (dispositive claim construction resulting in withdrawal of law suit); and
- Engate v. Esquire, 2003 U.S. Dist. LEXIS 15802 (N.D. Ill. 2003)(summary judgment of no direct infringement based on divided infringement).
Russ is also experienced in prosecuting patent applications before the U.S. Patent and Trademark Office and brings this knowledge to his counseling and litigation matters. He has been involved in the prosecuting more than 100 patent applications in such fields as medical devices, manufacturing equipment, office products, and lithographic printing. He has also authored several opinions of counsel regarding invalidity and non-infringement. Examples of his prosecution work include the following:
- US Patent No. 6,511,405 (prepared ex parte reexamination request to patent held by competitor that resulted in severe narrowing of claims);
- US Reissue Patent No. RE40,631 (prosecuted high-value reissue application after patent had been subject of successful interference proceeding); and
- US Patent No. 7,179,087 (prosecuted patent titled, "Medical or Dental-Medical Handpiece Having a Rearward and a Forward Handpiece Section").
Russ is particularly proud of the pro bono work he did on behalf of an asylum seeker. He took on the case after the applicant had lost his appeal at the Ninth Circuit and was two weeks from being deported. Russ moved the Court to stay its mandate and moved the Board of Immigration Appeals to reopen the proceedings based on ineffectiveness of prior counsel and presented new evidence. Instead of merely staying the mandate, the Ninth Circuit withdrew its prior opinion and the Board then granted the motion to reopen, thereby allowing the applicant a new trial.
"The House Passes Substantive Patent Reform Aimed at So-Called Patent Trolls; Action in the Senate Awaits," co-author, Technology Law Alert (January 2014)
"Retracing 'Mental Steps' To Software Patent Eligibility," Law360 (October 2013)
"E-Discovery: Computer-assisted coding is a powerful tool to control complex case e-discovery costs," co-author, InsideCounsel (May 2012)
"E-discovery: Popular patent venue in Texas adopts model order to rein in e-discovery costs," co-author, InsideCounsel (April 2012)
"Supreme Court: New Ruling On Patentable Subject Matter," co-author, Hanson Bridgett IP Alert (March 2012) featured in Bar Association of San Francisco’s counsel Newsletter (May 2012)
"Getting Out of the Eastern District of Texas," co-author, IP LAW360 (April 2011)
"A Patently Good Idea: Recent Court Rulings Highlight the Importance of Legal Counsel in Order to Avoid Patent Infringement Claims," co author, MX: Medtech Executive (August 2010)
"Federal Circuit Gives Claim Term Plain Meaning, Despite 'Yielding an Absurdity'," ACC Lexology (June 2010)
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"Protecting IP," Keiretsu Forum (May & August 2013)
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