Greg

GREGORY HILLYER

DIRECTOR OF LITIGATION

Gregory L. Hillyer is an accomplished trial lawyer and law professor currently serving as the Director of Litigation in Washington, D.C. Mr. Hillyer has had first chair responsibilities in numerous jury and bench trials across the country, in both federal and state courts, and has appeared before the Court of Appeals for the Federal Circuit. He honed his trial skills as a former public defender for the County of Philadelphia and has spent much of his career serving as an Adjunct Professor of Law teaching courses in civil trial advocacy.

Mr. Hillyer has worked in the field of intellectual property law for the last twenty years. He is Board Certified in Intellectual Property as Accredited by the Florida Bar and focuses on litigation, procurement and proceedings before the United States Patent and Trademark Office. His experience includes all aspects of adverse proceedings, including disputes involving patents, trademarks, trade dress, trade secrets, copyrights, unfair competition, deceptive trade practices and false advertising. His transactional experience is equally extensive and includes drafting and prosecuting domestic and foreign patent and trademark applications, conducting freedom to operate evaluations, due diligence investigations, opinion work, invalidity studies, portfolio management, licensing, counseling, serving as a patent expert and compliance before the Federal Trade Commission and Food and Drug Administration.

Mr. Hillyer holds a graduate degree in organic chemistry and worked his way through law school as a patent agent and scientific advisor. His practice now spans a diverse range of technical disciplines including pharmaceuticals, biotechnology, organic and inorganic chemistry, industrial processes, cosmetics, nutritional supplements, veterinary products, medical devices, mechanical articles, electronics, telecommunications, computer inventions, business methods, automotive accessories, conventional power generation and alternative energies.

Mr. Hillyer is a prolific author, a frequent lecturer and featured in the news, including being interviewed by the National Law Journal and other legal publications. He has been named one of the “Best Lawyers in America,” a “Super Lawyer” and an “IP Star” for his excellence in the field and has earned numerous awards for trial advocacy. Mr. Hillyer is a Planning Committee Member for the Advanced Patent Law Seminar held at the United States Patent and Trademark Office.

Temple University James E. Beasley School of Law, J.D.

University of Pittsburgh, M.S.

State University of New York, B.S.

“Patent Insurance – Protect Yourself At All Times,” 14th Annual Advanced Patent Law Institute (Washington, D.C.), 2019.

Panelist, “Pathways to Success for New Lawyers,” American Intellectual Property Law Association, 2017 Fall Meeting.

“Key Claim Construction Rulings Impacting District Court and PTAB Proceedings,” IP Developments Webinar, January 25, 2017.

“Octane Requires More Fitness,” 21st Annual Advanced Patent Law Institute (Austin, TX), 2016.

“Fee Shifting- Will The Exception Become The Rule?” 11th Annual Advanced Patent Law Institute (Washington, D.C.), 2016.

“Patent Damages Today, But What About Tomorrow?” 10th Annual Advanced Patent Law Institute (Washington, D.C.), 2015.

“Toil and Trouble for Patent Trolls, Whoever They Are,” The Legal Intelligencer, IP Special Section, October, 2013.

Decision featured (and quoted) in Virginia Lawyers Weekly, “Discovery Omissions Costly for Mine Equipment Company,” November 15, 2012.

Interviewed by BioPharm Insight and quoted in “Sequenom: Breadth of ‘540 Patent Creates Vulnerability to Validity Challenge Despite Strength of Claims,” February 24, 2012.

Speaker, American Bar Association Webinar, “Tackling USPTO Obviousness Rejections,” January 20, 2012.

Interviewed by National Law Journal, “A Revived Injunction,” January 2, 2012.

Contributing author, American Bar Association,”Annual Review of Intellectual Property Law Developments,” 2011.

Interviewed by National Law Journal and quoted in “Court Should Have Granted Bosch a Permanent Injunction Against Pylon, Federal Circuit Rules,” October 14, 2011.

“Obviousness Rejections at the USPTO: Prosecution Strategies,” American Bar Association 26th Annual Intellectual Property Law Conference, 2011.

Panelist, Careers in Litigation, American University Washington College of Law, February, 2011.

Panelist, “Prosecution, Reexamination and Concurrent Litigation,” 6th Annual Advanced Patent Law Institute (Washington, D.C.), 2011.

“The Written Description Requirement: Is Enablement Enough?” Maryland Bar Bulletin, 2010.

“Raise Your Hand If You Think You Are Not An Inventor On This Patent,” 5th Annual Advanced Patent Law Institute (Washington, D.C.), 2010.

“Vivus’s Qnexa Has Strong Patent Although Drug Composed Of Two Generic Compounds,” PharmaWire, September, 2009.

“Inventing the Prior Art, a Contradiction in Terms,” Second Annual IP Law Update, Maryland State Bar Association, 2009.

“Understanding Objective Recklessness Under Seagate: Are We There Yet?” 4th Annual Advanced Patent Law Institute (Washington, D.C.), 2008.

“The Litigation of Patent Infringement Claims,” Florida Intellectual Property Certification Seminar, July, 2007.

“Securing and Enforcing Patent Rights,” Educational Law Committee Meeting of the Florida Bar, September, 2006.

“Death of a Salesman: Personal Jurisdiction Based On Offers To Sell,” National Law Journal, IP Edition, 1999.

“Ethanol Production from Citrus Waste Through Limonene Reduction,” U.S. Patent No. 8,252,566, issued August 28, 2012 (inventor).

“Removal of Fermentation Inhibiting Compounds From Citrus Waste Using Solvent Extraction and Production of Ethanol From Citrus Waste,” U.S. Patent No. 9,255,280, issued February 9, 2016 (inventor).

“Discovery of an Orally Active Series of Isoxazoline Glycoprotein IIIb/IIIa Antagonists,” Journal of Medicinal Chemistry, 1997, Vol. 40, No. 13, p 2064-2084.

“(N-Acyl-N-Alkyl) Glycyl Borolysine Analogs: A New Class of Potent Thrombin Inhibitors,” Bioorganic and Medicinal Chemistry Letters, Vol. 6, No. 24, 1996, p 2913-2918.

“Balanced Angiotensin II Receptor Antagonists. I. The Effects Of Biphenyl ‘Ortho’-Substitution on AT/AT2 Affinities,” Bioorganic and Medicinal Chemistry Letters, Vol. 4, No. 16, 1994, p 2011-2016.

“Hydraamphiphiles: Novel Linear Dendritic Block Copolymer Surfactants,” Journal of the American Chemical Society, 1994, 116, p 11195-11196.

Instituted litigation against competitor in dietary supplement industry that resulted in jury trial and favorable judgment on claims of false advertising and unfair competition. BPI Sports, LLC v. ThermoLife International LLC et al., Case No.: 0:19-cv-60505-RS (S.D. Fla. 2022).

Defended infringement action involving multiple patents in the field of data encryption during credit transactions. Auth Token, LLC v. H.S.T. Systems and Technology, Inc., Case No.: 1:21-cv-23446-MGC (S.D. Fla. 2022).

Brought declaratory judgment action asserting non-infringement and invalidity of trademarks, tortious interference and unfair competition. Hi-Tech Pharmaceuticals Inc. v. USPLabs LLC, Case No.: 3:19-cv-02639 (N.D. Tex. 2021).

Brought several successful patent infringement cases against competitors in the matchmaking industry. Trinity Info Media, LLC v. Hornet Networks Limited, Case No.: 2:21-cv-01351-JAK-E (C.D. Cal. 2021); Trinity Info Media, LCC v. The League App, Inc., Case No.: 2:21-cv-01362-JAK-MRW (C.D. Cal. 2021); and Trinity Info Media, LLC v. Coffee Meets Bagel, Inc., Case No.: 3:20-cv-07114-WHOS (C.D. Cal. 2020).

Defended manufacturer and retailer of home safety systems against allegations of infringement of multiple patents. Richman Technology Corporation v. The Home Depot, Inc., Case No.: 1:19-cv-01523-MN (D. Del. 2020).

Secured dismissal on behalf of dietary supplement company against claims of trademark infringement, unfair competition and injury to business reputation. IronMag Labs, LLC v. Steel Supplements, Inc., Case No.: 2:19-cv-00833-PA-KS (C.D. Cal. 2019).

Successfully defended dispute based on lack of successor liability on behalf of media company facing charges of infringement under three patents. Global Interactive Media, Inc. v. Titan TV, Inc., Case No.: 3:18-cv-00597 (W.D. Wis. 2019).

Successfully defended claims against dietary supplement company brought under the D.C. Consumer Protection Statute. Smith v. Hi-Tech Pharmaceuticals, Inc., Case No. 2016 CA 006862 B (D.C. Sup. Ct. 2019).

Brought declaratory judgment action and defended parallel proceeding against media company in trademark dispute. VMR Products, LLC v. Prohbtd Media, Inc., Case No. 1:18-cv-22486-JEM (S.D. Fla. 2019); Prohbtd Media, Inc. v. VMR Products, LLC, Case No.: 2:18-cv-05593 (C.D. Cal. 2019).

Secured ex parte interim injunction pending service under the Hauge Convention based on infringement of patent and copyrights directed to hair care products. Oomph Innovations, LLC v. Shenzhen Bolesic Electronics, Co. Ltd., et al., Case No.: 5:18-cv-05561 (N.D. Cal. 2018).

Prevailed on motion to dismiss for lack of personal jurisdiction in case involving allegations of trademark infringement and counterfeiting. All American Pharmaceutical & Natural Foods Corporation v. OSN Labs, Inc., Case No. 2:17-cv-1093-DBP (D. Utah 2018).

Served as first chair in jury trial asserting trademark infringement, cybersquatting and unfair competition and secured admission of validity and infringement. Barn Light Electric Company, LLC v. Barnlight Originals, Inc., et al., Case No.: 8:14-CV-01955-MSS (M.D. Fla. 2017).

Invalidated all five patents-in-suit directed to the oral administration of beta-alanine under 35 U.S.C. § 101. National Alternatives International, Inc. v. Hi-Tech Pharmaceuticals, Inc., Case No. 3-16-cv-02343 (S.D. Cal. 2017).

Served as first chair at trial representing domestic trademark holder of “V2” seeking injunction against several foreign tobacco companies. VMR Products LLC v. V2H ApS, et al., Case No. 13-cv-07719-CBM (C.D. Cal. 2016).

Brought successful declaratory judgment action against healthcare organization regarding patent directed to method for administering intradialytic parenteral nutrition. Diabetic Care RX v. Pentec Health, Inc., Case No.: 0:15-cv-60532 (S.D. Fla 2015).

Defended client against infringement claims under nine patents directed to electronic vaporizing devices and obtained global license. Fontem v. NJOY, Inc., Case No. CV14-1645 (C.D. Cal 2014).

Successfully defended sales representatives of medical device company in dispute over alleged violations of covenants not to compete. Boston Scientific Corporation v. St. Jude Medical, Inc. et al., Case No. 1:14-CV-13624 (D. Mass. 2014).

Successfully defended infringement claims under the asserted trademark “COUTURE” and secured right to use mark. Grand River Enterprises Six Nations v. VMR Products LLC, Case No. 13-CV-104 (E.D. Wis. 2013).

Invalidated all asserted claims of patent directed to a method for increasing the levels of testosterone in a human. Thermolife International LLC v. DNA Sports Nutrition, et al., Case No.: 2:12-CV-10832 (C.D. Cal. 2013).

Obtained temporary restraining order and preliminary injunction against trademark infringer, including registrar lock and redirection of fraudulent website. VMR Products, LLC v. Electronic Cigarettes Outlet, LLC, et al., Case No. 12-CV-23092 (S.D. Fla. 2012).

Favorably settled case after prevailing on motion for sanctions and obtaining jury instruction after establishing that corporate officer and defendant provided false testimony. Titan Atlas Manufacturing, Inc., et al. v. Precision Mine Repair, et al., Case No. 1:11-CV-00012 (W.D. Va. 2012).

Secured dismissal with prejudice against Texas energy provider involving claims of infringement under patent directed to encrypted data transmission systems. TQP Development, LLC v. DirectTV, Inc., et al., Case No. 2:11-CV-00399 (E.D. Tex. 2012).

Successfully argued to the Court of Appeals for the Federal Circuit that U.S. Supreme Court decision in eBay eliminated presumption of irreparable harm in permanent injunction analysis. Robert Bosch LLC v. Pylon Manufacturing Corp., 659 F.3d 1142 (Fed. Cir. 2011).

Achieved summary judgment invalidating all asserted patent claims directed to magnetic clip-on eyewear attachments. Aspex Eyewear, et al. v. Zenni Optical, Case No.: 0:09-CV-61468 (S.D. Fla. 2011).

Served as first chair in jury trial involving multiple patents directed to automotive products and achieved favorable verdict, including non-infringement and invalidity of claims under 35 U.S.C. §§ 102 and 103. Robert Bosch LLC v. Pylon Manufacturing Corp., Case no. 08-542 SLR (D. Del. 2010).

Successfully convinced court in Markman proceedings to adopt proposed construction involving patent claims directed to liquid storage tank containment systems. Brown, et al. v. Toscano, et al., Case No. 06-61840-CV-Seltzer (S.D. Fla. 2009).

Secured dismissal with prejudice of infringement claims against wireless systems provider under patent directed to mesh networking technology. IPCO, LLC, et al. v. Cellnet Technology, Inc., Case no. 1:06-CV-3048 (N.D. Ga. 2009).

Successfully defended wiper blade provider in declaratory judgment action brought against patent directed to connector system. Jamak Fabrication-Tex, LLC v. Pylon Manufacturing Corp., Case No. 4-09-CV-063 (N.D. Tex. 2008).

Defeated motion for preliminary injunction following two day evidentiary hearing relating to allegations of infringement of patent directed to packaging. Rally Manufacturing, Inc. v. Pylon Manufacturing Corporation, Case No. 07-21150-Civ-King (S.D. Fla. 2007).

Successfully brought declaratory judgment action on behalf of generic drug company against patent directed to a method for treating arthritis in animals. IVX Animal Health, Inc. v. Burger, Case No. 05-CV-23141 (S.D. Fla. 2006) (Federal Circuit for the Court of Appeals No. 07-1224).

Served as patent expert in litigation involving interventional neuroradiology stents. Higashida, et al. v. Cordis Corporation, et al., Case no. BC335514 (Superior Court for the State of California, Los Angeles County, Central District, 2006).

Defended inventors of antiseptic composition and defeated preliminary injunction motion in patent licensing dispute. Omega Pharmaceuticals, LLC v. Viamonte, et al., Case No. 04 25537 CA 06 (Florida Circuit Court, 11th Judicial Circuit, 2005).

Served as counsel to numerous dietary supplement companies in enforcement action brought by the Federal Trade Commission. In Re Basic Research, Docket No. 9318 (FTC 2004).

Instituted inter partes review in Patent Trial and Appeal Board regarding U.S. Patent No. 8,365,742. IPR2015-00859 (2015).

Challenged ORIGINAL MOONSHINE trademark (Registration No. 3,804,217) on the basis of genericness. Old Smoky Distillery, LLC v. Stillhouse, LLC, Cancellation No. 92053262 (TTAB 2010).

Best Lawyers in America

Washington, D.C. Super Lawyers

IP Star, Managing Intellectual Property magazine

South Florida Legal Guide, “South Florida’s Top Up and Coming Attorneys”

Florida Trend Magazine, “Up and Coming Legal Elite”

Recipient of The Lewis Powell Medallion for Trial Advocacy, American College of Trial Lawyers

Recipient of The Murray Love Award for Advocacy, The Pennsylvania Association of Trial Attorneys

Recipient of The Most Promising Litigator Award, The Center for Forensic Economic Studies

Recipient of The Trial Lawyers’ Prize, The International Academy of Trial Lawyers

Recipient of The Barrister’s Award for Excellence in Trial Advocacy, Temple University School of Law

 

Board Certified in Intellectual Property as Accredited by the Florida Bar

District of Columbia Bar

Supreme Court of Florida

Supreme Court of Pennsylvania

Court of Appeals of Maryland

United States District Court for the District of Maryland

United States District Court for the Middle District of Florida

United States District Court for the Southern District of Florida

United States District Court for the Eastern District of Pennsylvania

United States Court of Appeals for the Federal Circuit

United States Patent and Trademark Office

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