Areas of Concentration

Intellectual Property and IP Litigation

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Experience

Mr. Pennington has practiced exclusively in the field of intellectual property for nearly 25 years. While Mr. Pennington’s practice focuses on patent litigation, he also has extensive experience in the areas of patent and trademark prosecution, patent licensing, due diligence associated with IP transfers, and opinion work. He represents both U.S. and foreign-based clients involved in various industries, and he has successfully appeared before the U.S. Patent and Trademark Office, the Board of Patent Appeals and Interferences, the Trademark Trial and Appeal Board, the Federal Circuit, and the Fourth Circuit. At the time of the combination between Swidler Berlin and Bingham, he was the chairman of Swidler Berlin's IP practice group. Prior to that, he was the managing partner of Morgan & Finnegan's Washington, D.C., office.

Mr. Pennington has been lead trial counsel in many patent and trademark infringement cases in the more frequently used patent venues throughout the United States, including Virginia, Delaware, Texas, California, New York and the U.S. International Trade Commission.

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Representative Engagements

• Northpoint Technologies, Inc. v. MDS American, Inc. (S.D. Fla. 2004) (telecommunications) - Won a jury trial and defended it on appeal as the lead trial counsel for MDS America. The patents in suit covered MVDDS (multi-point video and data distribution system) wireless telecommunications services, based on terrestrial re-use of DBS spectrum (12.2-12.7 GHz range). The jury found for the defendant, holding the patents invalid on four separate grounds (anticipation, obviousness, best mode and enablement). When the plaintiff appealed to the Court of Appeals for the Federal Circuit, MDS America won an affirmation of the jury's verdict.
• In re Certain Modified Vaccinia Ankara (MVA) Viruses and Vaccinations made there from, and Bavarian Nordic A/S v. Acambis Inc. (ITC 2007 and D. Del. 2007) (biotechnology/biopharmaceutical) - Acted as lead trial counsel for the patent holder, Bavarian Nordic, in this hotly contested patent infringement case brought simultaneously in the International Trade Commission (for patent infringement) and the District of Delaware (for conversion of biological materials). The case went to trial at the ITC in 2006, resulting in a favorable finding for Bavarian Nordic, which ultimately led to a settlement with the accused infringers, who agreed to vacate the market for the patented small pox vaccines. The patents covered a unique, non-replicating virus based on a MVA (or Modified Vaccinia Ankara) virus. The companion case in Delaware and related European oppositions were settled favorably to Bavarian Nordic.
• ACMC v. Martin Marietta Energy Research Corp. (E.D. Tn. 1994) (ceramics materials) - Represented the defendant/contract operator of the U.S. Department of Energy's Oak Ridge National Laboratory. Plaintiff ACMC had sued for a declaratory judgment that a patent license did not cover certain activities related to ceramics fabrication, and the lab countersued for patent infringement due to nonpayment of royalties. Shortly before trial, and after winning a transfer motion from ACMC's home court of South Carolina to the Eastern District of Tennessee, the parties settled on the basis of a favorable, confidential royalty payment for the life of the lab's ceramics patents.
• Enhanced Global Convergence Services, Inc. v. Ronald A. Katz Licensing, L.P. (D.N.H. 2001) (telecommunications) - Served as lead trial counsel in this case against the Katz call processing portfolio. Katz had accused EGOS of violating several of Katz's call processing patents by distributing prepaid calling cards and by making certain call routing schemes. After a declaratory judgment action seeking a declaration of non-infringement, plaintiff ended up with a non-royalty disposition of the case.
• Murex Securities Ltd. v. Enterprise Rent-A-Car Company, et. al. (E.D.Va. 2002) (telecommunications) - Secured a favorable settlement after discovery and before trial for co¬defendant McLeodUSA Inc., whose customer Enterprise used McLeodUSA's technology for 1-800 call routing services.
• Call Sciences, Inc. v. Accessline Tech., Inc. (D.N.J. 2003) (telecommunications) - Represented Call Sciences in a dispute over "find me follow me" telephone services. Accessline asserted infringement of eight patents, totaling over 300 claims. After nearly four years of litigation, the case was settled favorably shortly before trial.
• Microchip Tech. Inc. v. Chamberlain Inc. et al., and In re Certain Garage Door Opener Systems (N.D. III. and ITC 2000) (encryption and radio frequency devices) - Acted as lead trial counsel representing the patent holder Microchip in a case that involved encrypted radio frequency signaling. The encrypted signals were used to make secure garage door opening systems sold under the Craftsman brand name by Sears. The patents covered "rolling code" encryption used in virtually all keyless entry systems in the U.S. today. With simultaneous actions in the Northern District of Illinois and at the ITC, Microchip secured a very favorable royalty bearing settlement just before trial at the ITC.
• Tommy Hilfiger Licensing Inc. v. Goody's Family Clothing, Inc. (N.D. Ga. 2003) (trademark infringement and unfair competition) - Representing defendant Goody's as co-lead counsel in a trademark, counterfeiting and unfair competition case. While Goody's admitted inadvertently purchasing counterfeit goods through what appeared to be a legitimate source, the case went to a bench trial over the amount of damages to which Hilfiger was entitled. The decision was approximately what defendant had proposed and one fourth of what Hilfiger demanded.
• Global Mail, Ltd. v. US Postal Service (E.D. Va. 1999) (trademark infringement and unfair competition) - Won a reversal at the U.S. Court of Appeals for the Fourth Circuit in a landmark decision, reinstating the lower court claims of the registered owner of the mark GLOBAL MAIL. The Postal Service had argued, successfully at the lower court, that it enjoyed sovereign immunity and was not susceptible to suit under the Lanham Act. Just before re-trial, the Postal Service settled with a substantial payment for past, present and future infringement.
• Crawford v. Digital River, Inc. et al. (D.D.C. 2001) (Internet sales business methodology) - Achieved a favorable settlement for co-defendant McAfee (at the time, Network Associates, Inc.) in a case filed against seven defendants. Plaintiffs were convinced after discovery that McAfee's products did not infringe.
• MIT and EFI v. Abacus et al. (E.D. Tx. 2004) (image editing software) - Acted as lead trial counsel for co-defendant Fujitsu Ltd., one of 230 defendants brought by holders of patents that assist the creation of color prints. After negotiations with a software vendor, a co-defendant in the case, to have them defend and hold Fujitsu harmless to any infringement claims, the case settled favorably with respect to Fujitsu after claim construction submissions.
• Colt Defense LLC v. Heckler & Koch (E. D.Va. 2004) (cooling systems for automatic weapons) - Represented Colt against a German competitor who was seeking to knock off the famed Colt M4 carbine. The case involved trademark and patent infringement claims. The case settled just before trial with the defendant agreeing not to offer knock-off M4s for sale to the U.S. government or law enforcement markets.

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Education

• George Mason University School of Law, Juris Doctor, 1983
• West Virginia University, Master of Arts, Econometrics, 1980
• West Virginia University, Bachelor of Science, Economics and Physics, 1978

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Bar and Court Admissions

• Admitted to practice in the District of Columbia and Virginia
• Registered to practice before the United States Patent and Trademark Office
• U.S. Court of Appeals for the District of Columbia Circuit
• U.S. Court of Appeals for the Federal Circuit
• U.S. Court of Appeals for the Third Circuit
• U.S. Court of Appeals for the Fourth Circuit
• USDC, District of Columbia
• USDC, Eastern District of Virginia
• USDC, Western District of Virginia
• U.S. Supreme Court

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Professional Involvement

• American Bar Association
• American Intellectual Property Law Association
• Virginia State Bar, Intellectual Property Law Section
• Licensing Executives Society

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Speeches

• Lecturer, Implications of the Verizon-Vonage Patent Infringement Judgment, VON Conference (March 19, 2007)

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