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Long_J_Preston
J. Preston (J.P.) Long, Ph.D.
Partner
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  • 901 New York Avenue, NW
  • Washington, DC 20001-4413
+1 202 408 4347
jp.long@finnegan.com jp.long@finnegan.com

J. Preston (J.P.) Long, Ph.D.

Partner

  • +1 202 408 4347 +1 202 408 4347
  • jp.long@finnegan.com jp.long@finnegan.com
  • 901 New York Avenue, NW
  • Washington, DC 20001-4413
  • vCard
Long_J_Preston
J.P. Long, Ph.D., regularly draws from his expertise in physics, electrical engineering, and materials science to assist clients with various intellectual property matters involving high technology, including litigation, licensing, and patent portfolio management.

Much of J.P.'s practice involves litigation and client counseling. He has successfully represented clients in numerous forums, including federal district courts; the U.S. International Trade Commission (ITC); the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO); the Court of Appeals for the Federal Circuit (CAFC), where he served as a law clerk; and in private arbitration. J.P. regularly advises clients on matters relating to licensing, standard-essential patents (SEPs), and patent prosecution.

Prior to law school, J.P. studied physics and conducted research for more than ten years, focusing on electronic and optical materials and devices. He has hands-on expertise with material growth techniques and equipment, device design and fabrication, and related characterization techniques. J.P. often serves clients in matters involving related technologies, including integrated circuits and semiconductors, material growth and processing, light emitting diodes (LEDs) and lighting, fiber optics, signal processing, wireless communications, digital imaging, power systems, consumer electronics, automotive electronics, and medical devices.

J.P. served four years as a professional lecturer in law at The George Washington University Law School. He volunteers a portion of his time to assisting disabled veterans in matters before the U.S. Court of Appeals for Veterans Claims.

Et Cetera

  • Professional lecturer in law, The George Washington University Law School, 2016-2020.
  • Judicial law clerk, Honorable Todd M. Hughes, U.S. Court of Appeals for the Federal Circuit, 2013-2014.
  • Editorial board member, Duke Law Journal, 2010-2012.
  • Licensing intern, Office of Technology Transfer, North Carolina State University, 2010.
  • Coauthor. “Thermal Evolution and Electrical Correlation of Defect States in Hf-Based High- κ Dielectrics on n-Type Ge(100): Local Atomic Bonding Symmetry,” Journal of Applied Physics, 2009.
  • Coauthor. “Preparation of Native Oxide and Carbon-Minimized Ge Surface by NH4OH-Based Cleaning for High- κ/Ge MOS Gate Stacks,” Journal of the Electrochemical Society, 2009.
  • Coauthor. “Suppression of Defect States in HfSiON Gate Dielectric Films on n-Type Ge(100) Substrates,” Applied Physics Letters, 2008.
  • Coauthor. “Properties of III-N MOS Structures with Low-Temperature Epitaxially Regrown Ohmic Contacts,” Journal of Crystal Growth, 2006.
  • Coauthor. “UV Detectors and Focal Plane Array Imagers Based on AlGaN p-i-n Photodiodes,” Optoelectronics Review, 2002.

Experience

Certain LED Lighting Devices, LED Power Supplies, and Components Thereof

Represented Complainant Philips Lighting in an International Trade Commission investigation against Lowe’s, Feit Electric, and Satco, among others, on LED lighting technologies.

337-TA-1081, ITC, Judge Lord

Taiwan Semiconductor Manufacturing Company, Ltd. v. Godo Kaisha IP Bridge 1

Represented petitioner Taiwan Semiconductor Manufacturing Company, Ltd. (TSMC) in six inter partes review proceedings that involved patents directed to semiconductor device structures. All six petitions were granted, and all of the challenged claims were cancelled in final written decisions.

IPR2016-01246, -01247, -01376, -01377, -01378, -01379, PTAB, Judges Arbes, Fitzpatrick, Chagnon

Certain Digital Media Devices, Including Televisions, Blu-Ray Disc Players, Home Theater Systems, Tablets and Mobile Phones, Components Thereof and Associated Software

Represented LG Electronics in a litigation and ITC action concerning certain media technologies in smartphones and televisions, home theater systems, Blu-ray disc players, and tablets. Following trial, all four asserted patents were found not infringed and/or invalid.

337-TA-882, ITC, Judge Shaw

Manitto Technologies, Inc. v. Toyota Motor Corp.

Represented Toyota in a patent infringement suit involving vehicular navigation systems; Successfully secured prompt dismissal and favorable settlement.

2:14-cv-01116, E.D. Tex., Judge Gilstrap

TCL Communication Technology Holdings Ltd. v. Telefonaktiebolaget LM Ericsson

Filed an amicus brief on behalf of non-parties Toyota Motor Corporation, Honda Motor Company, Nissan Motor Company, DENSO Corporation, and Hyundai Motor Company in a Federal Circuit appeal involving issues related to standard-essential patents.

18-1363, -1380, -1382, -1732, Fed. Cir., Judges Newman, Chen, Hughes

Uniloc USA Inc. v. LG Electronics USA Inc.

Obtained dismissal of patent infringement claims against client LG Electronics. The court found that the patent claims, which relate to Bluetooth technology, were directed to an abstract idea and therefore invalid.

5:18-cv-06738, N.D. Cal., Judge Koh

Arigna Technology Limited v. Volkswagen AG, et al.

Achieved prominent wins for clients Volkswagen, Audi, Bentley, and Lamborghini by defending them against multiple allegations of patent infringement involving power electronics and power semiconductor structures at the International Trade Commission (ITC) and the Eastern District of Texas, and by securing institution of inter partes reviews (IPRs) on patents at issue at the Patent Trial and Appeal Board (PTAB).

337-TA-1267, ITC, Judge Bhattacharyya
IPR2021-01321, -01531, PTAB, Judges Baer, Fenick, Iftikhar
2:21-cv-00054; -00172, E.D. Tex., Judge Gilstrap

Carnegie Institution of Washington et al. v. Pure Grown Diamonds, Inc. et al.

Represented defendants in a patent infringement action relating to lab-grown diamonds.

1:20-cv-00189, S.D.N.Y., Judge Rakoff

Certain LED Lighting Devices, LED Power Supplies, and Components Thereof

Represented Complainant Philips Lighting in an International Trade Commission investigation against Lowe’s, Feit Electric, and Satco, among others, on LED lighting technologies.

337-TA-1081, ITC, Judge Lord

Taiwan Semiconductor Manufacturing Company, Ltd. v. Godo Kaisha IP Bridge 1

Represented petitioner Taiwan Semiconductor Manufacturing Company, Ltd. (TSMC) in six inter partes review proceedings that involved patents directed to semiconductor device structures. All six petitions were granted, and all of the challenged claims were cancelled in final written decisions.

IPR2016-01246, -01247, -01376, -01377, -01378, -01379, PTAB, Judges Arbes, Fitzpatrick, Chagnon

Certain Digital Media Devices, Including Televisions, Blu-Ray Disc Players, Home Theater Systems, Tablets and Mobile Phones, Components Thereof and Associated Software

Represented LG Electronics in a litigation and ITC action concerning certain media technologies in smartphones and televisions, home theater systems, Blu-ray disc players, and tablets. Following trial, all four asserted patents were found not infringed and/or invalid.

337-TA-882, ITC, Judge Shaw

Manitto Technologies, Inc. v. Toyota Motor Corp.

Represented Toyota in a patent infringement suit involving vehicular navigation systems; Successfully secured prompt dismissal and favorable settlement.

2:14-cv-01116, E.D. Tex., Judge Gilstrap

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Professional Activities

  • Licensing Executives Society
  • Federal Circuit Bar Association
  • PTAB Bar Association
  • Virginia State Bar Association
Admissions and Education

Admissions

  • District of Columbia
  • Virginia
  • U.S. District Court, W.D. Michigan
  • U.S. District Court, E.D. Virginia
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, Veterans Claims
  • U.S. Patent and Trademark Office

Education

Duke University School of Law
J.D., cum laude, 2012
North Carolina State University
Ph.D., Physics, 2008
North Carolina State University
M.S., Physics, 2004
University of North Carolina, Chapel Hill
B.S., Physics and Mathematics, with distinction, 2001

Clerkships

  • U.S. Court of Appeals, Federal Circuit, Hon. Todd M. Hughes

J.P.'s Practices

Patent Litigation
Appeals
Arbitration and Other ADR
ITC Section 337
Patent Trial
Pre-Trial Strategy
Settlement
Patent Office Examinations
Appeals to the PTAB
Prosecution
Reexaminations
Reissue Proceedings
Patent Portfolio Management, Monetization, and Transactions
Antitrust and Misuse
Opinions and Counseling
Post-Grant Proceedings
Appeals of PTAB Trial Decisions
IPR, PGR, and CBM

J.P.'s Industries

Electronics and Information Technology
Electrical and Computer Technology
Electronic Devices and Components
Nanotechnology
Life Sciences
Medical Device and Diagnostics
Transportation and Logistics
Automotive and Smart Mobility Tech

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