Overview

E.J. is a partner in the Intellectual Property practice group. He helps his clients obtain patent protection for their innovations and facilitates the development of valuable patent portfolios. He also counsels clients with respect to patentability and clearance issues and advocates for his clients in patent office proceedings, patent litigation proceedings and licensing matters involving other parties.

E.J.’s extensive experience includes obtaining patent protection related to innovations in software, artificial intelligence, neural networks, image processing, analytics, telecommunications, network communications, mesh networks, e-commerce, television, webcasting, virtual reality, augmented reality and other computer-related technologies. He also advises on patent issues involving medical devices, textiles and wood-working and other mechanical technologies.

At the intersection of technology, business and legal issues, E.J. provides in-depth analysis and counsel to clients ranging from startups to multinational corporations and helps them obtain business-critical patent protection, particularly in connection with new product and service launches.

Prior to joining Thompson Hine, E.J. was a partner and counsel at two other firms in Atlanta, where he gained experience managing teams of IP attorneys obtaining patents across the diverse portfolios of some of the world’s leading tech companies.

Experience
  • Managed, prepared and prosecuted patent applications relating to computer, communication systems, medical device and various other technologies.
  • Provided patent portfolio counseling for various software and technology companies, including providing patent overview presentations, conducting patent harvest discussions, working closely with key technical and business personnel to identify and protect innovations with patent protection, and counseling regarding strategic issues such as licensing, acquisitions, patent clearance, design-around, patentability, due diligence and litigation.
  • Managed patent portfolios in-house during secondment at a U.S. multinational computer software company.
  • Drafted and prosecuted hundreds of patent applications involving software, computer technologies, communication networks, medical devices, mechanical devices, television and textiles. Successfully obtained patents through persuasive responses to office actions, telephone and in-person interviews with patent examiners, and appeal briefing.
  • Represented clients in inter partes and ex parte reexamination proceedings and inter partes review proceedings, representing both patent owners and third party requesters.
  • Litigated patent disputes on behalf of both patentees and accused infringers; experience includes fact, industry and prior art investigation, depositions, motions, briefs, expert reports, legal research, oral arguments and Federal Circuit appeals.

Distinctions
  • Listed in The Best Lawyers in America, 2020

Professional and Civic

Professional Associations

  • Georgia Bar Association, Patent Committee
  • Intellectual Property Owners Association (IPO), Software and Business Methods Committee

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