Thomas F. Meagher focuses his practice on patent litigation, licensing and prosecution and has extensive experience working with electronic, computer, telecommunications and biomedical technology companies. Mr. Meagher has handled patent matters at all phases of litigation and trial, having served such worldwide clients as Agilent Technologies; Boston Scientific Corp.; Intel Corp.; Hewlett-Packard Corp.; Home Shopping Network; Hitachi, Ltd.; Wang Laboratories; Nan Ya Plastics Corp. of Taiwan; and Microsoft Corporation. He has assisted the General Electric Company in patent licensing negotiations in Asia. He has also managed extensive prosecution work for research institutions, including Princeton University, the University of Southern California, Massachusetts Institute of Technology, and Sarnoff Laboratories, and advises clients on strategies aimed at maximizing intellectual property protection while minimizing infringement risk.

Mr. Meagher's professional background spans more than 25 years, initially as patent counsel in-house for ITT Corporation and as a member of the Patent Department for RCA Corporation as well as nearly two decades with Kenyon & Kenyon prior to joining Duane Morris. Mr. Meagher was a member of the National Patent Advisory Council of the American Arbitration Association from its inception in 2004 until it was disbanded in the beginning of 2007 after completing its mission. He is a member of the New York and New Jersey Intellectual Property Law Associations, the Intellectual Property Owners Association, the Licensing Executives Society (U.S.A. and Canada), the Association of University Technology Managers and the New Jersey Technology Council. Mr. Meagher has also lectured and written on patent issues facing universities.

Mr. Meagher is a 1982 graduate of the Catholic University of America, Columbus School of Law, and a 1979 graduate of Carnegie Mellon University (B.S., Electrical Engineering).

Areas Of Practice

Copyright
Trade Secret
Patent Law
False Advertising
Intellectual Property Litigation
Trademark

Representative Matters

Patent Litigation

ABB Air Preheater v. Regenerative Environmental Equip. Co. - Regenerative thermal oxidizers; ran case with partner, took and defended all important depositions; handled all oral argument on discovery motions; argued successful summary judgment motion of non-infringement
Agilent Technologies v. E2O Communications - Optical fiber connectors; ran case for Agilent Technologies with fellow partners
Robert Bosch Corp. v. Lewis - Anti-theft system for automobile stereos; took key depositions and defended expert depositions
Boston Scientific Corporation v. J&J, Cordis, and Guidant - Drug coated coronary stents; ran case with fellow partner (subsequently a jury found client's patents valid and infringed)
Chips & Technologies v. Opti Computer - Memory controllers for personal computers; took and defended key depositions
Compaq v. Packard Bell and Intel - Personal computers; took key depositions
Comsonics v. Hewlett-Packard - Cable television signal meters; ran case for Hewlett-Packard with fellow partner
Conklin Instrument v. Adtran - Telephone switching products; only associate, performed all critical liability analysis
Construction Technology v. Lockformer - Cutting system; filled in for departed attorney at successful trial on certain key issues; prepared damages expert
Contel v. V-Band - Turret telephone system; performed liability analysis
Coupco v. Home Shopping Network - Electronic couponing system; ran case with partner; took and defended key depositions; handled oral argument
Electro Design Mfg. v. Texas Instruments - Digital missile guidance set for anti-tank missiles; second chair at trial on key liability issues; took key depositions; defended expert depositions and prepared liability expert for trial
Gilbarco v. Octel and U.S. West - Voice messaging; performed liability analysis
Hitachi v. Texas Instruments - Semiconductor fabrication; performed liability analysis
International Business Machines v. Conner Peripherals - Disk drives; ran discovery of this 20 patent case with partners; took and defended key depositions
Khyber Technologies v. Hewlett-Packard - Windows CE computers; ran case for Hewlett-Packard with fellow partner
Knowledge Enterprises v. Cogliano - Electronic educational products; ran case; conducted all oral argument and depositions
Levine v. Hewlett-Packard - Digital cameras; ran case for Hewlett-Packard; handled all court appearances with fellow partner
Menuco Corp. and Birkmayer v. Prolongevity - NADH; ran case; handled all oral argument
Methode v. Hewlett-Packard and Agilent Technologies; Agilent Technologies v. Methode and Stratos Lightwave - Optical fiber connectors; ran three cases (11 patents, three venues) for Hewlett-Packard and Agilent Technologies with fellow partners
Pico Products v. Eagle Comtronics - Television encoding/decoding system; performed liability analysis; took and defended key depositions
Rackman v. Microsoft - Encrypted software; performed liability analysis
Sicom v. Agilent Technologies - Logic analyzers; ran case for Agilent Technologies with fellow partners
Soundview v. Tri-Vision - V-Chip; ran short-lived case
Staplevision v. Packard Bell - Video monitors; performed liability analysis and conducted settlement negotiations
Tavares v. Optimum Solutions - Scanning software; took and defended all key depositions and all expert depositions
Therma-Tru v. Plastpro and Nan-Ya Plastics - Compression-molded entry doors; ran case; conducted oral argument including successful CAFC appeal; obtained summary judgment of noninfringement as to all products in dispute (Therma-Tru had sought more than $120 million in damages)
Total Spectrum Mfg. v. Vinten Broadcast - Robotic navigation system for television studio cameras; conducted all oral argument, prosecuted reexamination of patent in suit
Turbosound v. Eastern Acoustic Works - Concert speakers; took key depositions
Wang Laboratories v. CFR Associates - Distributed data processing system; second chair on key liability issues at successful trial for Wang Laboratories, took and defended key depositions
Wokas v. Gilbarco - Gasoline dispensing; took and defended key depositions
Wool Development v. Creaset - Trouser creasing; performed liability analysis, prosecuted reexamination of patent in suit
X-10 USA v. Sicommerce - IR/RF remote control system; took and defended all depositions

Trademark Litigation

Laurel Entertainment v. Laurel Way - Laurel mark; performed liability analysis
Sturbridge Yankee Workshop v. Morash Associates - PBS series "New Yankee Workshop"; ran case; took and defended all depositions

Commercial Defamation Litigation

Plastpro 2000 v. Therma-Tru Corp. - Defamation; ran case

Professional Activities

Intellectual Property Owners Association
- Vice-Chair, Arbitration and Mediation Committee, 2006 and 2007
- Vice-Chair, IP Licensing Committee, 2008
New York Intellectual Property Law Association
New Jersey Intellectual Property Law Association
- Past Chair, Speakers Bureau
New Jersey Technology Council
- Member, Government Affairs Committee
Licensing Executives Society (U.S.A. and Canada)
Association of University Technology Managers
Federal Circuit Bar Association

Admissions

New Jersey
New York
U.S. Patent and Trademark Office
U.S. District Court for the Eastern District of New York
U.S. District Court for the District of New Jersey
U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the Northern District of California
U.S. District Court for the Southern District of New York

Education

Columbus School of Law of The Catholic University of America, J.D., 1982
Carnegie Mellon University, B.S., Electrical Engineering, 1979

Experience

Duane Morris LLP
- Partner, 2004-present
Kenyon and Kenyon
- Partner/Associate, 1986-2004
ITT Corporation
- Patent Counsel, 1983-1986
Law Offices of Arthur Wenczel, Esq.
- Attorney/Law Clerk, 1982-1983
RCA Corporation
- Member, Patent Department, 1979-1982

Civic and Charitable Activities

Produced a charity album ("A Princeton Christmas 2007: For The Children Of Africa" -- www.princetonchristmas.org) that raised almost $42,000 to feed more than 1,200 children in school for one school year in school feeding programs of the United Nations World Food Program (www.wfp.org), the world's largest hunger relief organization; currently producing a second album for the 2008 holiday season, and serving as a Coordinator for the WFP Committee for New York City, part of the Friends of the World Food Program (www.friendsofwfp.org), the 501(c)(3) non-profit organization formed by the United Nations World Food Program.
Initiated the effort that became Princeton Academy of the Sacred Heart (www.princetonacademy.org), a 240-student school in Princeton, New Jersey and member of the international Network of Sacred Heart Schools.

Selected Publications

Co-author, "Patent Issues Facing Universities," Academic Patents Emerging Issues and Challenges, published by Institute of Chartered Financial Analysts of India Books
Co-author, "Academics Must Protect Their Patent Rights," The Chronicle of Higher Education, May 27, 2005
Co-author, "Patent Issues Facing Universities," Research Management Review, Fall/Winter 2006

Selected Speaking Engagements

Moderator and Speaker, "Technology Commercialization From The University Perspective: How Is It Working?," 2008 Intellectual Property in the Americas: Free Trade Agreements, Current Issues, and the Future of IP conference in Mexico City co-sponsored by the Intellectual Property Owners Association (IPO), the Asociación Interamericana de la Propiedad Intelectual (ASIPI), and the Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI).
Speaker, "Patent Licensing Agreements," 2008 Annual Meeting of the Association of University Technology Managers
Moderator and Speaker, "Negotiating Agreements with Academic Institutions," 2007 American Conference Institute Conference on Pharma/Biotech Collaborations
Moderator and Speaker, "Sponsored Research: IP Demands in Deals between Research Institutions and Industry," 2007 Annual Meeting of the Licensing Executives Society (U.S.A. and Canada)
Moderator and Speaker, "Key Terms of the Relationship: Mastering Deal Makers and Breakers for Industry and Research Institutions," 2007 American Conference Institute Conference on Pharma and Biotech Industry-Academia Tech Transfer
Moderator and Speaker, "Patent Issues Facing Universities," Licensing Executives Society (U.S.A. and Canada) 2006 Winter Meeting
Moderator and Speaker, "Sponsored Research: IP Demands in Deals between Universities and Industry," 2006 Joint Meeting of the Association of University Technology Managers and the Licensing Executives Society (U.S.A. and Canada)
Co-chair and Speaker, New York Information Technology District and American Electronics Association NJ-PA Council Intellectual Property seminars