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DenisSullivan

Partner

"I enjoy partnering with clients to develop creative, effective solutions to their business problems through the strategic use of all available intellectual property tools."

Overview

Biography

Denis is Barclay Damon’s Intellectual Property Practice Group leader and the co-team leader of the technology, medical devices, communications and networking technology, and emerging technologies teams. A nationally recognized intellectual property lawyer and registered patent attorney, Denis handles patent infringement disputes in federal district court and at the International Trade Commission, patent office proceedings such as inter partes reviews and reexaminations, and the preparation of patent applications.

His experience as both a patent litigator and patent prosecutor enables Denis to successfully challenge and defend patents under the America Invents Act before the US Patent and Trademark Office. Denis regularly serves as lead counsel in IPRs of patents involved in district court litigation.

His ability to provide clients with high-value intellectual property counsel is enhanced by his strong engineering background, which includes several years working as a licensed professional engineer. This technical experience enables Denis to handle patent matters across a wide variety of technologies and industries, including health care, telecommunications, semi-conductor manufacturing, and oil and gas.

Bar Associations

  • New York State Bar Association

Selected Memberships & Affiliations

  • American Intellectual Property Law Association
  • Intellectual Property and Innovation American Inn of Court
  • New York State Licensed Professional Engineer
Experience

Representative Experience

  • Served as lead counsel in over 30 IPRs of patents involved in district court litigation.
  • Served as lead counsel in federal circuit appeals of IPR decisions.
  • Served as lead counsel in reexaminations of several patents involved in district court litigation.
  • Served as lead counsel in a patent infringement action involving software patents for electronic shareholder communications.
  • Served as trial counsel in an ITC proceeding involving patents for coaxial-cable connectors. Obtained two general-exclusion orders and one limited-exclusion order.
  • Served as trial counsel in a declaratory judgment action involving patents for chemical de-icers.
  • Served as lead patent counsel in a district court appeal of the USPTO interference proceeding. Obtained a summary judgment reversing the patent office to preserve the validity of the patent.
  • Prepares and prosecute patent applications and appeals for domestic and foreign clients, including Fortune 100 clients.
  • Provides counseling and legal opinions concerning the validity and infringement of patents.

Prior Experience

  • Marjama Muldoon Blasiak & Sullivan LLP, Partner
  • Kirkland & Ellis LLP, Associate
  • Port Authority of New York and New Jersey, Electrical Engineer and Project Manager

Selected Community Activities

  • Youth Sports Coach
Knowledge

Selected Speaking Engagements

  • Practicing Law Institute’s 11th Annual Patent Law Institute, “The Patent Trial and Appeal Board Turns Five”
  • IP Counsel Exchange, “PTAB Litigation Crash Course: A Litigator’s Guide to Obtaining Successful Results at the PTAB”
  • Rochester Intellectual Property Law Association, “Escaping From Wonderland: An Analysis of Decisions Where Patent Claims Have Survived Section 101 Challenges Under Alice Corp. v. CLS Bank
  • Practicing Law Institute’s Ninth Annual Patent Law Institute, "Inter Partes Review and Post-Grant Review: Interplay of PTAB/District Court Litigation"

Selected Publications & Media

Featured Media

Alerts

Courtroom Battles Ahead for Emergency Regulations Addressing Vaping-Associated Pulmonary Illnesses

Alerts

Court of Appeals Green Lights Associational Discrimination Lawsuit Under the ADA

Alerts

Federal Appeals Court Strikes Down Contractual Limitation Period for Title VII Claims

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