Lionel M. Lavenue

Partner

Lionel Lavenue's practice focuses on patent trial litigation and on creating and managing large patent portfolios.  With experience in over 85 patent litigations, he has managed or served as first or second chair in numerous district court litigations as well as patent infringement cases under Section 1498(a) in the U.S. Court of Federal Claims and in disputes under Section 337 before the U.S. International Trade Commission.  He has had leading roles in dozens of Markman hearings and summary judgment proceedings.  He has also directed the discovery for numerous complex patent infringement cases, and he has taken or defended well in excess of 125 depositions.

With experience in the preparation of more than 900 patent applications, Mr. Lavenue also oversees the creation and management of large corporate patent portfolios.  He has organized and managed numerous domestic and foreign patent portfolios.  His non-litigation practice focuses on patent applications and opinion work related to business methods, computers, software, and electrical and mechanical devices.  He has also directed numerous ex parte and inter partes patent reexamination proceedings, including almost 50 "defensive reexaminations" used during litigations.

Mr. Lavenue routinely lectures to bar associations and aviation groups on patent law issues, particularly those relating to aircraft, rotorcraft, soaring, skydiving, and lighter-than-air technologies.  He is an active and current airplane, helicopter, glider, and balloon pilot, and he counsels numerous aviation and aerospace companies on various intellectual property issues.

Mr. Lavenue and his wife are also alpine mountaineers.  Of the Seven Summits (the highest peaks of the seven continents), they have summited six (Mt. Kilimanjaro in Africa in 1999, Mt. Elbrus in Russia in 2002, Mt. Aconcagua in South America in 2002, Mt. McKinley in North America in 2004, Mt. Vinson in Antarctica in 2004, and Mt. Kosciuszko in Oceania in 2007).  In 2009, they practiced high-altitude climbing on Mt. Cho-Oyu in Tibet, China, and they are planning a summit expedition to Mt. Everest soon.

Highlights

• Represented ACS in the creation and enforcement of patents related to electronic business transactions (EBT) and electronic funds transfer (EFT).
• Represented Bosch in the enforcement of patents related to airbag technologies and related electronic and mechanical technologies.
• Represented BTG in the enforcement of patents related to software browsing, software updating, and digital rights management (DRM).
• Represented InterDigital in the enforcement of patents relating to telecommunication technologies, including 2G and 3G wireless handsets.
• Represented Intertrust in the enforcement of patents relating to electronic and software technologies, including digital rights management (DRM).
• Defended various LG entities in multiple patent infringement lawsuits, involving electronic, mechanical, and telecommunication technologies.
• Defended Monolithic Power Systems and various Asus entities in multiple patent infringement lawsuits, involving LCD power converter technology.
• Defended various Sony entities in multiple patent infringement lawsuits, involving electronic, computer software, and mechanical technologies.
• Represented various Toyota entities in obtaining, enforcing, and protecting patents related to aviation, avionics, airframe, and software technologies.
• Represented U.S. Postal Service (USPS) in protecting, defending, and enforcing electronic, mechanical, computer, and software innovations.
• Pursuant to a Fulbright Scholarship, participated in a visiting scholar program at the Max Planck Institute in Munich, Germany, where he studied foreign and international patent, copyright, and competition law.
• Pursuant to a visiting attorney program, served in a German law firm, focusing on international patent litigation and patent prosecution matters.
• Served as a law clerk to Chief Judge Glenn L. Archer, Jr. for two years at the U.S. Court of Appeals, Federal Circuit, and served as a law clerk to Judge Robert J. Yock for two years at the U.S. Court of Federal Claims.

Professional Activities

• Advisory Council of the U.S. Court of Federal Claims (2006-2012)
• Legal association involvement: U.S. Court of Appeals for the Federal Circuit Bar Association; U.S. Court of Federal Claims Bar Association; American Bar Association (IP Law Section and Forum on Air and Space Law); Federalist Society; Lawyer-Pilots Bar Association; American Intellectual Property Law Association; Licensing Executives Society
• Other association involvement: Airplane Owners and Pilots Association; United States Parachute Association; Parachutists Over Phorty Society; Soaring Society of America; Experimental Aircraft Association; American Motorcyclist Association; National Aeronautic Association; Aero Club of Washington; International Aerobatics Club; Balloon Federation of America; Virginia State Beekeepers Association; Virginia Helicopter Association; American Solar Energy Society; National Business Aviation Association

Select Publications

• "Database Rights and Technical Data Rights: The Expansion of Intellectual Property for the Protection of Databases," Santa Clara Law Review, 1997.
• "Technical Data Rights in Government Procurement and Database Rights: Intellectual Property Protection for Computer Software and the Indicia of Information Systems and Technology," University of San Francisco Law Review, 1997.
• Coauthor. "Survey, 1996 Patent Law Decisions of the Federal Circuit," American University Law Review, 1997.
• "Patent Infringement by the United States and Government Contractors Under 28 U.S.C. § 1498 in the United States Court of Federal Claims," Journal of Intellectual Property Law, 1995.