PROFESSIONALS

Russell W. Faegenburg

Russell W. Faegenburg is a partner in the firm.  His practice encompasses all aspects of intellectual property litigation and counseling, with particular emphasis on patent litigation.  Mr. Faegenburg has significant experience in pharmaceutical cases brought under the Hatch-Waxman Act, medical device litigation, licensing disputes and representation of electronics, communications and consumer product companies at all stages of trial and appeal.  He also has a proven record of success litigating post-grant proceedings before the Patent Trial and Appeal Board, including representation of both patentees and patent challengers in Inter Partes Review proceedings. 

His recent engagements have included:

  • Representing computer hardware supplier in action alleging that client’s 802.11-compliant routers and wireless access points infringed two patents.  Following transfer of case and cancellation of all asserted claims of first patent in reexamination, secured judgment of noninfringement of all asserted claims of second patent in federal district court.  Judgment was affirmed by the Federal Circuit. 
  • Representing electronics company in action alleging that client’s dual-connector portable memory cards infringed two patents owned by competitor.  Secured final decisions from PTAB invalidating all claims of both patents in IPR on grounds of anticipation and obviousness.  Case is currently on appeal to the Federal Circuit. 
  • Representing medical device manufacturer against breach of contract and related claims in arbitration concerning craniomaxillofacial reconstruction devices.  Secured favorable settlement following deposition of claimant. 
  • Representing generic drug company in IPR challenge to patents directed to propofol formulations.  Favorable settlement of associated litigation shortly after submission of petition for IPR.
  • Defending chemical company in IPR challenging client’s patents directed to battery separators.  Following submission of patent owner’s preliminary response, secured decisions from PTAB refusing to institute IPR entirely as to one patent and instituting IPR on only limited grounds as to second patent.  Case settled favorably shortly thereafter. 
  • Representing nutraceuticals supplier in action asserting three patents and defending client in related IPR proceedings.  Favorable settlement following filing of patent owner’s preliminary response in IPR.
  • Representing electronics company in action alleging that client’s DVD and Blu-ray disc players infringed two patents.  Following successful motion to transfer and successful motion to strike hundreds of accused products from plaintiff’s case in new forum, case settled favorably. 
  • Representing medical device manufacturer against claims of trade secret misappropriation related to breast-implant technology.  Secured complete dismissal of complaint.
  • Representing software company in arbitration of a licensing dispute.  Obtained a favorable settlement requiring client to pay only a fraction of the licensor's demand.
  • Representing generic drug manufacturer in patent infringement litigation brought by brand-name drug company.  Defeated motion for temporary restraining order and preliminary injunction, allowing company to sell generic alternative.
  • Representing furniture design company in arbitration of a claim for unpaid royalties.  Obtained a favorable monetary settlement on behalf of the client following a ruling in the client's favor on a critical issue.
  • Representing pharmaceutical company in Lanham Act litigation involving client's advertising related to drug product.  Secured favorable business resolution for client.
  • Representing trademark holder in multiple suits against unauthorized users of registered trademark in restaurant industry. Obtained favorable settlements of all suits.

In addition to his litigation practice, Mr. Faegenburg renders opinions regarding patent infringement and validity, counsels clients regarding indemnification and licensing, conducts trademark clearance studies, prosecutes trademark applications, handles opposition and cancellation proceedings and provides general IP counseling to clients ranging from early-stage enterprises to large multinational corporations.

Russell W. Faegenburg is a partner in the firm.  His practice encompasses all aspects of intellectual property litigation and counseling, with particular emphasis on patent litigation.  Mr. Faegenburg has significant experience in pharmaceutical cases brought under the Hatch-Waxman Act, medical device litigation, licensing disputes and representation of electronics, communications and consumer product companies at all stages of trial and appeal.  He also has a proven record of success litigating post-grant proceedings before the Patent Trial and Appeal Board, including representation of both patentees and patent challengers in Inter Partes Review proceedings. 

His recent engagements have included:

  • Representing computer hardware supplier in action alleging that client’s 802.11-compliant routers and wireless access points infringed two patents.  Following transfer of case and cancellation of all asserted claims of first patent in reexamination, secured judgment of noninfringement of all asserted claims of second patent in federal district court.  Judgment was affirmed by the Federal Circuit. 
  • Representing electronics company in action alleging that client’s dual-connector portable memory cards infringed two patents owned by competitor.  Secured final decisions from PTAB invalidating all claims of both patents in IPR on grounds of anticipation and obviousness.  Case is currently on appeal to the Federal Circuit. 
  • Representing medical device manufacturer against breach of contract and related claims in arbitration concerning craniomaxillofacial reconstruction devices.  Secured favorable settlement following deposition of claimant. 
  • Representing generic drug company in IPR challenge to patents directed to propofol formulations.  Favorable settlement of associated litigation shortly after submission of petition for IPR.
  • Defending chemical company in IPR challenging client’s patents directed to battery separators.  Following submission of patent owner’s preliminary response, secured decisions from PTAB refusing to institute IPR entirely as to one patent and instituting IPR on only limited grounds as to second patent.  Case settled favorably shortly thereafter. 
  • Representing nutraceuticals supplier in action asserting three patents and defending client in related IPR proceedings.  Favorable settlement following filing of patent owner’s preliminary response in IPR.
  • Representing electronics company in action alleging that client’s DVD and Blu-ray disc players infringed two patents.  Following successful motion to transfer and successful motion to strike hundreds of accused products from plaintiff’s case in new forum, case settled favorably. 
  • Representing medical device manufacturer against claims of trade secret misappropriation related to breast-implant technology.  Secured complete dismissal of complaint.
  • Representing software company in arbitration of a licensing dispute.  Obtained a favorable settlement requiring client to pay only a fraction of the licensor's demand.
  • Representing generic drug manufacturer in patent infringement litigation brought by brand-name drug company.  Defeated motion for temporary restraining order and preliminary injunction, allowing company to sell generic alternative.
  • Representing furniture design company in arbitration of a claim for unpaid royalties.  Obtained a favorable monetary settlement on behalf of the client following a ruling in the client's favor on a critical issue.
  • Representing pharmaceutical company in Lanham Act litigation involving client's advertising related to drug product.  Secured favorable business resolution for client.
  • Representing trademark holder in multiple suits against unauthorized users of registered trademark in restaurant industry. Obtained favorable settlements of all suits.

In addition to his litigation practice, Mr. Faegenburg renders opinions regarding patent infringement and validity, counsels clients regarding indemnification and licensing, conducts trademark clearance studies, prosecutes trademark applications, handles opposition and cancellation proceedings and provides general IP counseling to clients ranging from early-stage enterprises to large multinational corporations.

  • Overview

    Russell W. Faegenburg is a partner in the firm.  His practice encompasses all aspects of intellectual property litigation and counseling, with particular emphasis on patent litigation.  Mr. Faegenburg has significant experience in pharmaceutical cases brought under the Hatch-Waxman Act, medical device litigation, licensing disputes and representation of electronics, communications and consumer product companies at all stages of trial and appeal.  He also has a proven record of success litigating post-grant proceedings before the Patent Trial and Appeal Board, including representation of both patentees and patent challengers in Inter Partes Review proceedings. 

    His recent engagements have included:

    • Representing computer hardware supplier in action alleging that client’s 802.11-compliant routers and wireless access points infringed two patents.  Following transfer of case and cancellation of all asserted claims of first patent in reexamination, secured judgment of noninfringement of all asserted claims of second patent in federal district court.  Judgment was affirmed by the Federal Circuit. 
    • Representing electronics company in action alleging that client’s dual-connector portable memory cards infringed two patents owned by competitor.  Secured final decisions from PTAB invalidating all claims of both patents in IPR on grounds of anticipation and obviousness.  Case is currently on appeal to the Federal Circuit. 
    • Representing medical device manufacturer against breach of contract and related claims in arbitration concerning craniomaxillofacial reconstruction devices.  Secured favorable settlement following deposition of claimant. 
    • Representing generic drug company in IPR challenge to patents directed to propofol formulations.  Favorable settlement of associated litigation shortly after submission of petition for IPR.
    • Defending chemical company in IPR challenging client’s patents directed to battery separators.  Following submission of patent owner’s preliminary response, secured decisions from PTAB refusing to institute IPR entirely as to one patent and instituting IPR on only limited grounds as to second patent.  Case settled favorably shortly thereafter. 
    • Representing nutraceuticals supplier in action asserting three patents and defending client in related IPR proceedings.  Favorable settlement following filing of patent owner’s preliminary response in IPR.
    • Representing electronics company in action alleging that client’s DVD and Blu-ray disc players infringed two patents.  Following successful motion to transfer and successful motion to strike hundreds of accused products from plaintiff’s case in new forum, case settled favorably. 
    • Representing medical device manufacturer against claims of trade secret misappropriation related to breast-implant technology.  Secured complete dismissal of complaint.
    • Representing software company in arbitration of a licensing dispute.  Obtained a favorable settlement requiring client to pay only a fraction of the licensor's demand.
    • Representing generic drug manufacturer in patent infringement litigation brought by brand-name drug company.  Defeated motion for temporary restraining order and preliminary injunction, allowing company to sell generic alternative.
    • Representing furniture design company in arbitration of a claim for unpaid royalties.  Obtained a favorable monetary settlement on behalf of the client following a ruling in the client's favor on a critical issue.
    • Representing pharmaceutical company in Lanham Act litigation involving client's advertising related to drug product.  Secured favorable business resolution for client.
    • Representing trademark holder in multiple suits against unauthorized users of registered trademark in restaurant industry. Obtained favorable settlements of all suits.

    In addition to his litigation practice, Mr. Faegenburg renders opinions regarding patent infringement and validity, counsels clients regarding indemnification and licensing, conducts trademark clearance studies, prosecutes trademark applications, handles opposition and cancellation proceedings and provides general IP counseling to clients ranging from early-stage enterprises to large multinational corporations.

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