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Finnegan
William H. Pratt
Partner
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  • 901 New York Avenue, NW
  • Washington, DC 20001-4413
+1 202 408 4054
bill.pratt@finnegan.com bill.pratt@finnegan.com

William H. Pratt

Partner

  • +1 202 408 4054 +1 202 408 4054
  • bill.pratt@finnegan.com bill.pratt@finnegan.com
  • 901 New York Avenue, NW
  • Washington, DC 20001-4413
  • vCard

William Pratt's practice is focused on intellectual property transactions and licensing, government contracts, and the arbitration of intellectual property disputes. Clients he works with include U.S. and international corporations involved in a broad spectrum of technologies, including automotive, consumer electronics, pharmaceuticals, environmental, chemical, and cosmetics. 

Bill has represented some of the world's largest international companies as well as small startups. His experience ranges from drafting simple license agreements to negotiating extremely complex transactions such as joint venture agreements, creating standard-setting organizations, commercialization agreements, and technology acquisitions. He also has extensive experience representing clients in intellectual property transactions and disputes with the U.S. government and negotiating complex agreements to settle litigations between private entities and resolving disputes with the U.S. government. Bill has arbitrated licensing and contract disputes within the United States and abroad.

Bill lectures extensively on intellectual property licensing and government contracting, including presentations to corporations, law and business schools, government organizations, the American Intellectual Property Law Association, and the Licensing Executives Society (U.S.A., Canada, and International). He also teaches a course for attorneys and licensing professionals on "Drafting Patent License Agreements" for the Patent Resources Group and has taught patent licensing at law schools. Bill's experience includes negotiating a Memorandum of Understanding between the U.S. Department of Energy and a foreign corporation addressing intellectual property created under future research contracts. He negotiated an agreement between nine major automobile companies establishing the Automotive Multimedia Interface Collaboration, a standard-setting organization created by the eight major automobile manufacturers. He administered the export control program worldwide for Litton Industries.

Bill served as confidential assistant to the U.S. Deputy Assistant Secretary of Commerce during the Reagan Administration. He has provided lectures to attorneys for the U.S. Department of Energy and its National Laboratories on conducting research agreements with private companies.

Bill was named by Intellectual Asset Management as one of 250 of the world's leading patent and technology licensing practitioners. He has been recognized by The Legal 500 U.S. for patent portfolio management and licensing.

Experience

Certain Thermoplastic-Encapsulated Electric Motors, Components Thereof, and Products and Vehicles Containing Same

Finnegan successfully defended Toyota Motor Corp. and Toyota Motor Sales, U.S.A., Inc. in a major International Trade Commission (ITC) action brought by Intellectual Ventures (“IV”), asserting five patents against certain thermoplastic encapsulated electric motors allegedly used in Toyota’s vehicles. After a full trial on the merits, Finnegan successfully secured an initial determination from the Administrative Law Judge (ALJ) of no violation of Section 337. Simultaneously, Finnegan secured final written decisions in a number of concurrent inter partes reviews (IPRs) that the asserted claims are unpatentable.

337-TA-1052; 337-TA-1073, ITC, Judges Lord, Pender, Bullock
IPR2017-01494, -01495, -01537, -01538, -01539, PTAB, Judges Droesch, Weiker, Hudalla

Insights

Webinar

Patents and Export Control Compliance: Managing Risk and Avoiding Unintentional Violations Patents and Export Control Compliance: Managing Risk and Avoiding Unintentional Violations

August 6, 2020

Webinar

Conference

Patent Resources Group Fall 2019 Advanced Courses Program Patent Resources Group Fall 2019 Advanced Courses Program

October 12-14, 2019

Scottsdale

Lecture

Patent Resources Group Advanced Courses (PRG)

Patent Resources Group Advanced Courses (PRG) Patent Resources Group Advanced Courses (PRG)

April 7-12, 2019

Sarasota

Lecture

Patent Resources Group Advanced Courses Patent Resources Group Advanced Courses

October 7-12, 2018

Lake Tahoe

Lecture

Patent Resources Group Advanced Courses

Patent Resources Group Advanced Courses

April 15-20, 2018

New Orleans

Lecture

Patent Resources Group Advanced Courses Patent Resources Group Advanced Courses

October 15-20, 2017

Indian Wells

25 more

Professional Recognition

“Companies doing deals and embarking on exciting collaborations also find advanced professionals to rely on: recommended alongside Kacedon on the transactions table are licensing mavens John Paul and William Pratt.”

Intellectual Asset Management Patent 1000

“IP monetisation and government contracting are Pratt’s areas of specialisation.”

Intellectual Asset Management Patent 1000

“Companies doing deals and embarking on exciting collaborations also find advanced professionals to rely on: recommended alongside Kacedon on the transactions table are licensing mavens John Paul and William Pratt.”

Intellectual Asset Management Patent 1000

“IP monetisation and government contracting are Pratt’s areas of specialisation.”

Intellectual Asset Management Patent 1000

News

Press Release

Finnegan Maintains Top Rankings in 2020 IAM Patent 1000 Guide Finnegan Maintains Top Rankings in 2020 IAM Patent 1000 Guide

June 17, 2020

Intellectual Asset Management

Media Mention

Honda, Toyota Imports Cleared in ITC Infringement Review Honda, Toyota Imports Cleared in ITC Infringement Review

July 24, 2019

Law360

Press Release

IAM 2019 Patent 1000 Guide Continues to Rank Finnegan as a Top Tier IP Firm IAM 2019 Patent 1000 Guide Continues to Rank Finnegan as a Top Tier IP Firm

June 24, 2019

Award/Ranking

Top Honors for Finnegan in Intellectual Asset Management’s 2017 Patent 1000 Guide Top Honors for Finnegan in Intellectual Asset Management’s 2017 Patent 1000 Guide

June 27, 2017

Intellectual Asset Management

Award/Ranking

Finnegan Recognized by Intellectual Asset Management as 2016 Leading Patent Law Firm Finnegan Recognized by Intellectual Asset Management as 2016 Leading Patent Law Firm

May 27, 2016

Intellectual Asset Management

Media Mention

Intellectual Property Considerations for the Robotics Industry Intellectual Property Considerations for the Robotics Industry

August 2015

Robotics Business Review
Download
8 more

Professional Activities

  • District of Columbia Bar
  • State of Maryland Bar
  • American Bar Association
  • American Intellectual Property Law Association
  • Licensing Executives Society
Admissions and Education

Admissions

  • District of Columbia
  • Maryland

Education

American University, Washington College of Law
J.D., 1988
George Washington University
M.P.A., 1982
Southern Connecticut State University
B.S., 1976

William's Practices

Export Control
Patent Litigation
Arbitration and Other ADR
Patent Trial
Patent Portfolio Management, Monetization, and Transactions
Licensing, Pooling, and Other Transactions

William's Industries

Chemical, Industrial, and Materials
Additive Manufacturing
Manufacturing
Energy
Chemical
Life Sciences
Pharmaceutical
Transportation and Logistics
Automotive

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