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William A. Birdwell

Areas of Practice

billbirdwell@dwt.com
(503) 778-5208

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William A. Birdwell
Partner- Portland, Oregon Office

Areas of Practice
Intellectual property litigation and dispute resolution, particularly patent and trade secret litigation

Mediation of intellectual property disputes

Intellectual property counseling

Technology licensing

Representative Experience
Lead counsel in patent, trade secret and trademark litigation, including jury trials

Patent litigation involving such diverse subject matter as, optical scanning, computerized control systems, forest products machinery, video signal processing, medical devices, Internet systems and nutraceuticals

Argument of appeals before the Courts of Appeals for the Federal Circuit and the Ninth Circuit Mediation of patent infringement disputes and representation of parties in mediation of patent and trademark disputes

Negotiation and preparation of technology licensing agreements

Expert witness on patent law in patent litigation

Preparation and prosecution of patent, trademark registration and copyright registration applications

Representative Cases
Sun Studs, Inc. v. Applied Theory Associates, Inc.(Fed. Cir. 1985); and Sun Studs, Inc. v. ATA Equipment Leasing, Inc. (Fed. Cir. 1989) - Represented plaintiff in claims for infringement of three patents on computerized sawmills and veneer lathes, copyright infringement in a computer program, and breach of contract. Client received a jury verdict, an injunction, damages and attorneys fees.

Kockums Industries Limited v. Salem Equipment, Inc., (D. Or. 1981) - Represented defendant in claim for infringement of patents on bandmills. Case settled after opening statements with defendant receiving a reasonable license, as opposed to the injunction sought by the plaintiff.

B-J Enterprises, Inc. et al. v. Newcorp, Inc. et al., Case No. 90001 (Linn County Circuit Court 1990) - Represented plaintiff in claims for misappropriation of confidential information and trade secrets relating to metal working technology, breach of contract and various business torts. Jury verdict and judgment for the client, including an injunction.

New Venture Mfg. & Service, Inc. v. United Machine Industries, Inc. et al., (D. Or. 2001) - Represented defendants in action for infringement of patents on saw apparatus, misappropriation of trade secrets and other claims. The case was settled and the claims dismissed with prejudice and without any acknowledgement of wrongdoing by any party.

Net MoneyIN, Inc. v. VeriSign, Inc., et al., (D. Az., filed 2001, currently active)- Represent plaintiff in case for infringement of a patent generally directed to systems for processing credit card transactions over a distributed computer system, particularly the Internet.

JoeScan, Inc. v. LMI Technologies, Inc., (W.D. Wash. 2007, currently active) - Represent defendant in case in which plaintiff is seeking a declaratory judgment of non-infringement and invalidity of three patents relating to optical scanners employed in sawmills

Publications and Presentations
Co-editor, chapters on patent, trademark and copyright law in Advising Small Businesses

Co-editor, Contract Law in Oregon

Author, "Business Names" chapter, Advising Oregon Businesses

Bar Admissions
The Oregon State Bar, the State Bar of California and the Arizona State Bar

United States District Courts for the District of Oregon, Northern District of California, Central District of California and District of Arizona

United States Courts of Appeals for the Federal Circuit and the Ninth Circuit

Registered Patent Attorney

Memberships and Activities
American Bar Association, Intellectual Property Section

American Intellectual Property Law Association

Oregon Patent Law Association, San Francisco

Intellectual Property Law Association, Los Angeles

Intellectual Property Law Association, and Southern Arizona Intellectual Property Law Association

Optical Society of America, Columbia Chapter

  • President, 2007-2008

Education
J.D., University of Colorado, 1973

  • Managing Editor, University of Colorado Law Review
Research scholarship, Max Planck Institute for Foreign and International Patent, Copyright and Competition Law, Munich, Germany, 1977
  • Research on antitrust aspects of intellectual property licensing in the European Community and the United States
M.S. in Optical Sciences, University of Arizona, 2003 B.S.E.E., Oregon State University, 1969
  • Member, Sigma Tau
  • Editor, Oregon State Engineer






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