Holland & Knight - Affiliated Counsel

Affiliated Counsel, Holland & Knight, 2022-Present; Partner, Waller Landsen Dortch & Davis, PGL of Patent Group, 2015-2022; Managing Partner (1992-2010), Senior Counsel (2011-2014), Founder/Shareholder, Waddey Patterson PC, 1992-2014; Associate/Partner, Private Law Practice, 1974-1992; Associate, Arent, Fox, Kintner, Plotkin & Kahn, 1971-1974; Law Clerk to the Honorable Harry Phillips, Chief Judge, U.S. Court of Appeals, Sixth Circuit, 1970-1971.

Registered Patent Attorney and have handled every type of IP case over the last 45+ years. For the past 25 years, focused almost exclusively in the mediation practice. Mediated dozens of intellectual property disputes and complicated commercial matters. These disputes include patent infringement, trademark infringement, copyright infringement cases, software licenses and performance issues, business break-ups, including the split of one of Nashville's most high profiled trial law firms. Referred to as the "go to" mediator in a local publication survey. Handled mediation of dispute between the two largest overnight delivery companies, national retailers and suppliers, one of the world's largest cell phone manufacturers and counterfeit battery suppliers, US auto manufacturer and supplier, major record labels and publishers v. Karaoke companies. Other companies involved in mediations include consumer manufacturers, state and local governments in software dispute with software supplier, financial services organizations, hospitals involved in CON disputes, Japanese companies in patent and TM disputes, California juice producer in TM dispute, many nationally recognized entertainers.

• Registered patent attorney with 40+ years of experience in the litigation of intellectual property law disputes. <br/><br/>Mediated dozens of high-profile, complicated disputes, including:<br/>• A dispute between Seiko Epson and Nu-Kote over the infringement of design patents for Seiko Epson Ink Jet Printers; a case in which both side of the dispute had spent over $40M in legal fees and expenses during the course of ten years in litigation; case settled; <br/>• A dispute between Fed-Ex and UPS over alleged unfair competition advertising claims under Section 43(a) of the Lanham Act; <br/>• Many copyright infringement disputes including:<br/>o disputes brought by publishers against Karaoke music providers; <br/>o disputes by architectural firms asserting infringement of copyrighted architectural plans; <br/>o book and advertising content disputes; <br/>o artist performance rights and disputes asserting claims of artist failure to appear for concert performances; <br/>• Business dissolution disputes, including the dissolution of one of Nashville’s most prominent litigation law firms; <br/>• Patent disputes involving:<br/>o commercial truck scale equipment, <br/>o business methods, <br/>o consumer products, <br/>o cleaning products, <br/>o toy industry products <br/>o construction equipment technology <br/><br/>• Trademark disputes including:<br/>o high profile brand names such as Pom Wonderful and other brands owned by Roll International. <br/>o counterfeiting dispute brought by RIM (Blackberry) against 14 different suppliers of allegedly counterfeit batteries to a smart phone refurbishing company, matter that involved tens of millions of dollars, multiple claims, cross claims, counterclaims; a case which took almost nine months but was eventually resolved using a new unique theory of “net sum” exposure. <br/>• Taught, trained, spoken and written on the mediation of complicated IP disputes. <br/>• Case values mediated are almost all in the seven and eight figure range.

• Patent disputes, including patentability, patent validity, infringement, fraud on the patent office, damages and rights to injunctive relief.<br/>• Trademark disputes including infringement, validity, enforceability, assertions of generic and descriptive trademark defenses, damages, rights to injunction, including preliminary injunction issues involving likelihood of success on the merits, irreparable harm, etc. <br/>• Copyright disputes involving infringement, proper subject matter for copyright, proper licensing or failure to have proper licenses to support challenged conduct, damages, applicability of statutory damages, entitlement to attorney’s fees, attorney’s fees awards. <br/>• Trade secrets and unfair competition issues of practically every nature including Section 43(a) claims under the Lanham Act, trade secret disputes arising out of confidentiality agreements, non-compete agreements, business dissolutions, break up of partnerships, allocation of assets, evaluation of assets, naming rights and rights to marks in other intellectual property of dissolving partnerships.

Mediation is multi-tiered; first, the mediator must gather information, listen, take input, and digest it to see if he or she can facilitate a mediation that the parties can live with; the next step is to assist the parties in finding alternative solutions; and finally, help the parties in evaluating risk and making business decisions to resolve their dispute on terms that are reasonably reflective of risks and exposure. At times, advancing these various approaches may require the mediator to be quite forceful but it is ineffective to be forceful until the mediator is fully informed and has achieved the respect of the parties as knowledgeable in the law relating to the dispute, and has garnered sufficient information to be able to offer an assessment of the risk based on the law and the facts as could reasonably be expected to be proved at trial.

Proficient in cases involving any types of mechanical devices, toy industry, light electrical and computer and software matters, real estate issues, etc.

Georgetown University Law Center (JD-1970), Assistant Articles Editor, Georgetown Law Journal<br/>Auburn University (BS Aerospace Engineering - 1965)

Admitted to the Bar: Virginia (1970), District of Columbia (1970), Tennessee (1971), Registered U.S. Patent Attorney.

Appointed by the Court to be a Commissioner on the Tennessee Supreme Court Commission on ADR (2015-2021); American Bar Association, Tennessee Bar Association, Nashville Bar Association, Distinguished Fellow, International Academy of Mediators; Member, INTA Panel of trademark neutrals, Member, Conflict Prevention and Resolution (CPR) mediator panel for technology, Seminal Member of Tennessee & National Academies of Mediators and Arbitrators, Member, AIPLA Panel of Distinguished Neutrals.

Producer of the Fall 2010 IAM Conference in Nashville<br/>Guest lecturer for the Winkler Institute for Dispute Resolution in Toronto, <br/>On the panel of distinguished neutrals for a ADR presentation to the Chicago Bar in October 2014<br/>Taught a course on Mediation of IP Disputes at the Straus Institute, Spring Semester 2015<br/>Regularly give presentations to Law Firms, and Bar Associations on HOW TO BEST REPRESENT YOUR CLIENT IN A MEDIATION<br/>Guest speaker at various Linn Institute members of the American Inns of Court

Nashville, Tennessee

$800 Per Hour

English

United States of America

Nashville, TN