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Angie M. Hankins

PARTNER, NEW YORK



Angie M. Hankins practices intellectual property law with an emphasis on patent litigation, client counseling, and patent prosecution. She has extensive experience in discovery, motion, trial and appellate practice before the federal courts and the U.S. International Trade Commission (ITC). Her patent cases have involved diagnostic tests, liquid crystal displays, cameras, computer software and mechanical devices.

Ms. Hankins also has counseled clients on patentability, infringement, copyright and trademark protection. In particular, she has performed patentability and infringement analysis for printer cartridges, electrical plugs, cellular communication systems, telecommunication buses, methods of injection molding and mechanical and biomechanical devices. She has drafted and negotiated technology agreements, including confidentiality agreements, distribution and licensing agreements.

Prior to completing law school and throughout college, Ms. Hankins worked at Bell Communications Research (BELLCORE). Her responsibilities at BELLCORE included developing software for Asynchronous Digital Subscriber Line III and a test-plan for data link path protection switching. In addition, Ms. Hankins served as a telecommunications specialist in the U.S. Air Force, where she was the recipient of the John Levitow Award.

Representative Matters

  • Successfully asserted fraudulent conveyance claim against a prior infringer and his spouse. Fujifilm Corp. v. Yang, Case No. BC 436748 (Cal. Super. Ct. June 1, 2012).
  • Invalidated an LCD patent on summary judgment for violating the on-sale bar, and defended on appeal. Honeywell Int’l, Inc. v. Nikon Corp., 672 F. Supp. 2d 638 (D. Del. 2009) aff’d sub nom 400 Fed. App’x 557(Fed. Cir. 2010) (per curiam).
  • Successfully asserted patents for single use cameras resulting in jury verdicts and damages awards of approximately $16 million and $30 million, respectively. Fujifilm Corp. v. Benun, 605 F.3d 1366 (Fed. Cir. 2010); Fuji Photo Film Co. v. Jazz Photo Corp., 394 F.3d 1368 (Fed. Cir. 2005).
  • Successfully obtained judgment vacating court’s denial of prejudgment interest. Fuji Photo Film Co. v. Benun, Case No. 2008 WL 5084572 (D.N.J. Dec. 1, 2008).
  • Successfully obtained a judgment that debt from patent infringement was not dischargeable in bankruptcy. In re Benun, 386 B.R. 59 (Bankr. N.J. 2008).
  • Asserted General Exclusion Order and Cease and Desist Orders granted by the ITC resulting in the largest penalty in the history of the ITC. Fuji Photo Film Co. v. Int’l Trade Comm’n, 474 F.3d 1281 (Fed. Cir. 2007).
Memberships
  • Member, Board of Trustees, The Boys' Club of New York
  • Member, Athletic Advisory Board, Stevens Institute of Technology
  • Member, New York Road Runners
  • Member, President Search Committee, Stevens Institute of Technology, 2010
  • Member, Patent Committee, Association of the Bar of the City of New York
  • Member, Women in Intellectual Property Law Committee, New York Intellectual Property Law Association
  • Co-Chair, Diversity in IP Law Committee, and member of Professional Programs-Women in IP Law Committees, American Intellectual Property Law Association
  • Co-chair, Trade Secrets Subcommittee of the Intellectual Property Litigation Committee, American Bar Association
  • Member, National Bar Association
Activities
  • United States Air Force, Sergeant, Communications Computer Systems Controller
  • Awardee, John Levitow Honor Graduate, Airmen Leadership School
Speeches and Events
  • Panelist, "Retaining Experts and Working with Them," ABA Section of Litigation- Expert Witness Committee Expert Lawyers on Expert Witnesses, New York, NY, May 8, 2013
  • Speaker, "Intellectual Property Practice: How is it Evolving in the Age of Technology," Columbia University, March 23, 2012
  • Panelist, "Alumni of Distinction: Celebrating 40 Years of Women at Stevens," Stevens Institute of Technology, March 21, 2012
  • Speaker, "False Marking: The New Frontier for Patent Trolls," National Bar Association 85th Annual Convention, New Orleans, LA, August 11, 2010
  • Panelist, "Careers in Patent Law for Students of Color," Practicing Attorneys for Law Students Program, March 25, 2010
  • Panelist, "Trade Secret Litigation: The New Method to Protect Theft of Intellectual Property," Minority Corporate Counsel Association’s 9th Annual CLE Expo, March 18, 2010
  • Speaker, "Computer Fraud & Abuse Act: A Tool to Protect Your IP," Cutting Edge IP Issues that Every Business Should Know Program, Business Law Section, American Bar Association 2009 Annual Meeting, July 31, 2009
  • Panelist, "Women in Intellectual Property Law," New York State Bar Association, June 11, 2008
  • Panelist, "The Personal Side of Diversity: Solutions Learned from First-Hand Accounts of Diverse Attorneys," Law Firm Diversity Conference, American Conference Institute, May 16, 2008
  • Moderator, "Observations on the U.S. Government’s Position in Quanta v. LG," Continuing Legal Education Program, New York Intellectual Property Association, February 17, 2008
  • Moderator, "Enforcement of Intellectual Property at the ITC," Continuing Legal Education Program, New York Intellectual Property Association, December 8, 2006
  • Moderator, "Ruminations on the Vanishing Trial: The Role of the Federal Circuit and the Fact Law Distinction," Continuing Legal Education Program, New York Intellectual Property Association, January 13, 2006
  • Panelist, "Representing the Micro Entrepreneur: Intellectual Property Basics," Continuing Legal Education Program, City Bar Justice Center Neighborhood Entrepreneur Law Project, July 12, 2005
  • Moderator, "Duty of Disclosure: Update and In-House Perspectives," Continuing Legal Education Program, New York Intellectual Property Association, May 20, 2005
Publications
  • Co-author, "Willfulness and Liability, Separate But Equal?" Intellectual Property Strategist, August 1, 2013
  • "Preventing Emails from Becoming Smoking Guns During Litigation," Inside Counsel, January 4, 2013
  • "Intervening Rights Only Arise During Reexamination When a Claim Has Been Amended or Added," The Intellectual Property Strategist, May 2012
  • Co-Author, "Is Inequitable Conduct Still a Viable Defense?," Law 360, November 22, 2011
  • "Defensive Strategies in False Marking Suits After Stauffer and Pequignot," Bloomberg Law Reports, October 1, 2010, Vol. 4, No. 42, Intellectual Property
  • Co-Author, "Intellectual Property," Chapter in Annual Review of Developments in Business and Corporate Litigation, 2009
  • Co-Author, "Sundance v. DeMonte: Federal Circuit Overrules District Court's Holding of Non-Obviousness," The Intellectual Property Strategist, March 2009
  • Co-Author, "Does Bankruptcy Absolve Patent Infringement Liability?" Patent Strategy & Management, June 2006
  • Co-Author, "You're Not Exhausted: U.S. Patent Rights Are Not Exhausted by Foreign Sales," The Intellectual Property Strategist, March 2005
  • Co-Author, "Internet Pop-Up Advertisements: Do They Infringe?" The Practical Litigator, January 2005
Admitted to Practice
New York, 1999; New Jersey, 1998
U.S. Patent and Trademark Office, 2000; U.S. District Court, Southern District of New York, 1999; U.S. District Court, Eastern District of New York, 1999; U.S. District Court, District of New Jersey, 1999; U.S. Court of Appeals, Federal Circuit, 2001; U.S. Supreme Court 2010
Education
J.D., University of Virginia School of Law, 1998
B.E., High Honors in Electrical Engineering, Stevens Institute of Technology, 1995; Tau Beta Pi; BELLCORE Scholar
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