Mind + Muscle

technical minds + legal muscle

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Sterne Kessler Goldstein Fox
Donald R. Banowit

Mind + Muscle

Donald R. Banowit

Director

 

Mr. Banowit, a director in the Litigation Group, focuses primarily on intellectual property litigation, playing a principal role in the enforcement of intellectual property rights and the defense of intellectual property disputes before the federal district courts, the Court of Appeals for the Federal Circuit and the Central Reexamination Unit and Patent Trial and Appeal Board at the United States Patent and Trademark Office.  He has represented clients from each of the firm’s core technology practice groups (mechanical, electronics/software and chemical/biotechnology) in patent infringement actions, and has litigated trademark and copyright disputes. 

Mr. Banowit has extensive experience managing complex pre-trial issues common to intellectual property litigation, including issues arising from infringement and invalidity contentions, electronic discovery, use of technical and financial experts, and claim construction.  He has appeared before magistrates and judges in oral argument of numerous pre-trial motions.  He has successfully resolved patent cases prior to trial by way of summary judgment.  He has also achieved favorable results for the Firm’s clients through settlement and in arbitration and mediation. 

At trial, Mr. Banowit's experience includes obtaining a favorable verdict of non-infringement after a five-day jury trial in the District of Delaware.

Mr. Banowit's knowledge of patent law, developed through more than fifteen years of practice in the preparation and prosecution of domestic and foreign patent applications, and his education as a “rocket scientist,” provide an invaluable foundation for complex patent litigation.  Together with this expertise, he incorporates patent forensics and reexamination strategy as effective tools to control litigation costs and achieve early settlement or summary judgment disposition.

Mr. Banowit also counsels clients on a wide range of patent, trademark and trade-secret issues, including clearance and due diligence investigations, infringement and validity opinions, non-disclosure, non-compete and joint development agreements, licensing and assignment of intellectual property, intellectual property valuation, patentability opinions and prosecution strategy.  Mr. Banowit advises clients on Internet-related trademark and copyright issues, including disputes involving domain names and other aspects of website design and content, and has obtained favorable results in arbitration proceedings under the ICANN Uniform Domain Name Dispute Resolution Policy (UDRP).  He has experience in ex parte and inter partes reexamination and interference proceedings at the U.S. Patent and Trademark Office.  He represents clients in diverse industries, including consumer products, medical devices, software, agriculture, automotive, aerospace, and financial services.

Mr. Banowitz is a contributing author of Patent Office Litigation, Second Edition, published in 2017, the book provides a fresh and comprehensive exploration of patent office litigation proceedings, including how the proceedings interact with other aspects of patent procurement and enforcement, while delivering practical analysis and advice. This second edition of Patent Office Litigation is the follow up to the first version of the book that was published in 2012 by Thomson Reuters Westlaw that focused on the contested proceedings that were introduced under the America Invents Act that year.

While studying law at Georgetown University, Mr. Banowit was an Articles Editor on the Georgetown Journal of Legal Ethics.  He is a member of Sigma Gamma Tau (the National Aerospace Engineering Honor Society) and the American Institute of Aeronautics and Astronautics (AIAA).

  • Grape Technology Group, Inc. and kgb USA, Inc. v. Jingle Networks, Inc. (D.Del.) - obtained jury verdict of non-infringement for Jingle Networks in defense of patent lawsuit involving its 1-800-FREE411 free directory assistance service.
  • Tailored Lighting, Inc. v. Osram Sylvania Products, Inc.(W.D.N.Y.) – achieved defense victory for Sylvania on summary judgment in patent lawsuit involving aftermarket automotive headlamps.
  • Weiss, et al. v. Reebok International Ltd. (D. Mass.) - represented Reebok in defense of utility patent infringement action regarding footwear technology. 
  • Solae, L.L.C. v. Archer Daniels Midland Company et al.(E.D.Mo.) - represented ADM in defense of utility patent infringement action concerning health supplement products containing soy isoflavones. 
  • Reebok International Ltd. v. Wal-Mart Stores, Inc. (D. Mass.) - enforcement of design patent on footwear midsole. 
  • Brake Pro, Ltd et al v. C.M. Brake Inc. et al. (M.D.Fla.) - trademark enforcement action on behalf of heavy duty brake manufacturer. 
  • Webhosting.Com Inc. v. Communitech.Net (E.D.Va.) - Internet-related trademark and copyright enforcement action.
  • Cushion Technologies, LLC. v. Adidas Salomon North America, Inc. et al. (E.D.Tex.) - defense of footwear patent infringement action on behalf adidas, Reebok and Rockport.
  • Adams v. Reebok International LTD. et al. (D. Mass.) - represented Reebok in defense of utility patent infringement action.  Case stayed in favor of ex parte request for patent reexamination filed by Sterne Kessler on behalf of Reebok. 
  • Representative Matters
      • Grape Technology Group, Inc. and kgb USA, Inc. v. Jingle Networks, Inc. (D.Del.) - obtained jury verdict of non-infringement for Jingle Networks in defense of patent lawsuit involving its 1-800-FREE411 free directory assistance service.
      • Tailored Lighting, Inc. v. Osram Sylvania Products, Inc.(W.D.N.Y.) – achieved defense victory for Sylvania on summary judgment in patent lawsuit involving aftermarket automotive headlamps.
      • Weiss, et al. v. Reebok International Ltd. (D. Mass.) - represented Reebok in defense of utility patent infringement action regarding footwear technology. 
      • Solae, L.L.C. v. Archer Daniels Midland Company et al.(E.D.Mo.) - represented ADM in defense of utility patent infringement action concerning health supplement products containing soy isoflavones. 
      • Reebok International Ltd. v. Wal-Mart Stores, Inc. (D. Mass.) - enforcement of design patent on footwear midsole. 
      • Brake Pro, Ltd et al v. C.M. Brake Inc. et al. (M.D.Fla.) - trademark enforcement action on behalf of heavy duty brake manufacturer. 
      • Webhosting.Com Inc. v. Communitech.Net (E.D.Va.) - Internet-related trademark and copyright enforcement action.
      • Cushion Technologies, LLC. v. Adidas Salomon North America, Inc. et al. (E.D.Tex.) - defense of footwear patent infringement action on behalf adidas, Reebok and Rockport.
      • Adams v. Reebok International LTD. et al. (D. Mass.) - represented Reebok in defense of utility patent infringement action.  Case stayed in favor of ex parte request for patent reexamination filed by Sterne Kessler on behalf of Reebok. 
  • Admissions
      • District of Columbia

      • Virginia

      • District of Columbia Court of Appeals

      • Supreme Court of Virginia

      • United States Court of Appeals for the Federal Circuit

      • United States Court of Appeals for the Fourth Circuit

      • United States District Court for the Eastern District of Virginia

      • United States District Court for the District of Columbia

      • United States Patent and Trademark Office

  • Education
    • J.D., Georgetown University

    • B.S.E, Aerospace Engineering, University of Michigan cum laude

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