Geoffrey K.Gavin

Of Counsel

Atlanta + 1.404.581.8646

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With more than 20 years of experience and appearances in district courts in more than a dozen states, Geoffrey Gavin advises clients on important IP matters, including patent litigation, Patent Trial and Appeal Board (PTAB) litigation, and strategic IP counseling. He has experience with numerous technologies across a wide variety of industries, including wireless telecommunications, data encryption and computer security, LED lighting, printers and copiers, automotive products, medical devices, video and image processing, packaging, and athletic footwear and equipment.

Geoffrey has represented plaintiffs and defendants in significant patent litigation matters throughout the United States. He has argued and presented at numerous claim construction, dispositive motion, and other hearings. Recent engagements for clients include competitor patent litigation related to tobacco heating and vaping products and indoor lighting products.

Geoffrey also represents both patent owners and challengers in post-grant proceedings before PTAB. In one engagement he led a PTAB team that defended four patents on LED downlights against inter partes review (IPR) petitions filed by a competitor. In another engagement he led a team that used IPR proceedings to successfully invalidate claims in three patents asserted by Intellectual Ventures against numerous aspects of Compass Bank's online banking operations.

Geoffrey is a member of the Post-Grant Patent Office Practice Committee of the Intellectual Property Owners (IPO) Association and a Master in the Atlanta Intellectual Property Inn of Court.

Experience

  • Ricoh USA defends infringement claims involving 19 patents relating to office printer technologyJones Day is defending Ricoh USA, Inc. in a series of patent infringement cases involving office and production printer technology.
  • R.J. Reynolds successfully enforces patents in ITC trial against Philip Morris in dispute over cigarette alternativeJones Day's client Reynolds achieved a precedent-setting victory before the International Trade Commission (ITC) against its main competitors Philip Morris Products S.A. ("Philip Morris") and Altria Client Services LLC ("Altria") in a patent infringement dispute involving tobacco heating and vaping products.
  • Specialty engineered woods manufacturer reaches settlement in trade secret and supply agreement disputeJones Day represented an industry leader in the manufacture of specialty engineered wood products in a lawsuit against a supplier involving allegations of misappropriation of trade secrets, breach of contract, tortious interference, and unfair competition.
  • Cooper Lighting successfully asserts patents relating to LED downlights against competitorsJones Day represented Eaton Corporation's subsidiary Cooper Lighting, LLC, in successfully asserting four Cooper Lighting patents on LED downlights against competitors Cordelia Lighting, Inc. and Jimway, Inc.
  • Compass Bank obtains dismissal with prejudice against patent infringement claims brought by Intellectual VenturesJones Day successfully represented Compass Bank in a patent infringement action brought by the non-practicing entity Intellectual Ventures II LLC relating to online banking services.
  • Eaton successfully defends indoor lighting patents against IPR petitionsJones Day represented Eaton Corporation's subsidiary Cooper Lighting, LLC, in successfully defending two inter partes review petitions filed by Cordelia Lighting, Inc., against U.S. Patent Nos. 8,348,479 and 8,789,978, which relate to indoor lighting.
  • Mando resolves multipatent infringement suit filed by Robert Bosch GmbHJones Day represented Mando Corporation and Mando America (collectively "Mando") in the defense of a multipatent infringement suit filed by Robert Bosch GmbH in September 2016 relating to antilock braking systems.
  • Compass Bank prevails at PTAB and in Federal Circuit in IPRs challenging Intellectual Ventures patentsJones Day, on behalf of Compass Bank, prevailed in three inter partes review (IPR) proceedings challenging patents asserted by Intellectual Ventures II LLC against numerous aspects of Compass Bank's online banking operations in a patent infringement lawsuit filed in June 2013.
  • HD Supply secures early dismissal from NPE patent infringement caseJones Day secured an early dismissal for HD Supply, Inc. in a patent infringement case involving interactive web page technology.
  • Endeavour Vision invests in GynesonicsJones Day represented Endeavour Vision SA in connection with its investment in Gynesonics, Inc., a women’s healthcare company focused on the development of minimally invasive solutions for symptomatic uterine fibroids.
  • Aimetis Corp. settles DJ action regarding video surveillance patentJones Day represented Aimetis Corp. in a declaration judgment action relating to Hawk Technology Systems, LLC's U.S. Reissue Patent No. RE43,462, which is directed to video monitoring technology, and specifically to varying video streaming and image size in different windows on the same monitor.
  • March Networks settles DJ action regarding video surveillance patentJones Day represented March Networks Corporation in a declaration judgment action relating to Hawk Technology Systems, LLC's U.S. Reissue Patent No. RE43,462, which is directed to video monitoring technology, and specifically to varying video streaming and image size in different windows on the same monitor.
  • Whole You™ acquires Respire MedicalJones Day advised Mitsui Chemical Inc. with the acquisition by its Whole You, Inc. subsidiary of oral appliance company Respire Medical.
  • Genetec files declaratory judgment action against Hawk Technology Systems, LLCJones Day represented Genetec, Inc. in an action seeking a declaration that it did not infringe, and had intervening rights in, Hawk Technology Systems, LLC's U.S. Reissue Patent No. RE 43,462, claiming to cover video storage and display technology.

    • The following represents experience acquired prior to joining Jones Day.

    Represented Motorola Mobility in numerous matters, including a Section 337 ITC investigation, involving patents relating to software and hardware for mobile phones and tablets.

    Provided patent procurement and counseling services to an industry leader in the development of advanced medical devices and implants, including helping shape the company's overall patent strategy, identifying and protecting innovations, as well as evaluating third-party intellectual property rights.

    Represented a provider of automatic order fulfillment systems in a patent infringement suit brought by a pharmacy automation company in the Northern District of Georgia. Summary judgment was granted in favor of client and affirmed by the Court of Appeals for the Federal Circuit.

    Represented Georgia-Pacific subsidiaries in a patent infringement suit against two competitors in the Northern District of Georgia involving composite food wrap products. Following a favorable Markman ruling in which the court adopted clients' claim construction arguments, the parties reached a settlement involving cash payment and an ongoing royalty-bearing license.

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    September 2019 Blogs

    PTAB Designates Precedential Decision Relating to Infringer’s Civil Action Barring IPR, PTAB Litigation Blog

    October 2018 Blogs

    PTAB: Institution Decision Addressing Only One Claim Acceptable Post-SAS, PTAB Litigation Blog

    June 2018 Blogs

    Federal Circuit Grants Rehearing and Remands IPR to PTAB post-SAS, PTAB Litigation Blog

    January 2018 Blogs

    PTAB Denies Request to Submit Supplemental Information on Skill Level of POSITA, PTAB Litigation Blog

    December 2017 Blogs

    PTAB Denies Institution Because of Pending Reexamination Considering Same Prior Art, PTAB Litigation Blog

    November 2017 Blogs

    Petitioners Must Explain Combining Multiple Embodiments of Reference in Obviousness Argument, PTAB Litigation Blog

    September 2017 Blogs

    PTAB Denies Untimely Request to Stay Pending Reexaminations, PTAB Litigation Blog

    August 2017 Blogs

    PTAB Denies Discovery on Chipsets Purportedly Related to Proper Interpretation of Reference, PTAB Litigation Blog

    May 2017 Blogs

    EDTX Interprets Federal Circuit Precedent Narrowly, Recommends Applying §315 Estoppel Broadly, PTAB Litigation Blog

    March 2017 Blogs

    Where Party Joined Pending IPRs, Delaware Takes Broad View of § 315 Estoppel, PTAB Litigation Blog
    View All

    Speaking Engagements

    • February 22, 2016
      The Shifting Landscape of Patent Litigation, Jones Day CLE Academy
    • October 8, 2015
      Practical Tips and Guidance for Post Grant Proceedings at the USPTO, panelist, IP Section of the State Bar of Georgia
    • February 26, 2014
      Review of the First 18 Months of USPTO Post-Grant Proceedings Under the AIA: Strategies, Trends, & Observations, Jones Day CLE Academy
    • November 10, 2012
      Patent Indirect Infringement, panelist, ICLE in Georgia's Annual North American Entertainment, Sports, and Intellectual Property Law Conference
    • November 13, 2009
      Section 1404(a) Motions to Transfer: Strategic Considerations After TS Tech and Other Recent Decisions, panelist, ICLE in Georgia's Annual North American Entertainment, Sports, and Intellectual Property Law Conference

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