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Thomas F. Meagher
Managing Partner

609-454-3500 x301 phone

tmeagher [AT]
meagheremanuel.com

Publications | Selected Speaking Engagements | Representative Matters
Professional Activities | Civic Activities | Bar Admissions | Education


Publications
  • "Patent Issues Facing Universities," Academic Patents Emerging Issues and Challenges, published by Institute of Chartered Financial Analysts of India Books
  • Co-author, "Academics Must Protect Their Patent Rights," The Chronicle of Higher Education, May 27, 2005
  • Co-author, "Patent Issues Facing Universities," Research Management Review, Fall/Winter 2006
  • "Intellectual Property Agreements: Are You Managing Your Rights?", The Chronicle of Higher Education, November 1, 2009; A. Huq, D. Goldberg, T. Meagher
Selected Speaking Engagements
  • Moderator, "Sponsored & Collaborative Research: IP in Life Science Deals Between Universities/Research Institutions and Industry," Licensing Executives Society 2013 Annual Meeting
  • Moderator, "Sponsored & Collaborative Research: IP Demands in Deals Between Universities/Research Institutes and Industry," Licensing Executives Society 2011 Annual Meeting
  • Moderator and Speaker, "Contingency Patent Litigation for Universities," Association of University Technology Managers 2011 Eastern Region Meeting
  • Panelist, 2010 New Jersey Technology Council Regional Commercialization Conference, Princeton University
  • Moderator, "Sponsored & Collaborative Research: IP Demands in Deals Between Universities/Research Institutes and Industry," Licensing Executives Society 2010 Annual Meeting
  • Speaker, "Contingency Patent Litigation for Universities," 2010 Annual Meeting of the Association of University Technology Managers
  • Moderator, "Sponsored & Collaborative Research: IP Demands in Deals Between Universities/Research Institutes and Industry," Licensing Executives Society 2008 Annual Meeting
  • Moderator, "Overview of Recent Patent Case Law" and "Indefiniteness Before and After Datamize," 2008 Annual Meeting of the Intellectual Property Owners Association
  • Moderator and Speaker, "Technology Commercialization From The University Perspective: How Is It Working?," 2008 Intellectual Property in the Americas: Free Trade Agreements, Current Issues, and the Future of IP conference in Mexico City co-sponsored by the Intellectual Property Owners Association (IPO), the Asociación Interamericana de la Propiedad Intelectual (ASIPI), and the Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI).
  • Speaker, "Patent Licensing Agreements," 2008 Annual Meeting of the Association of University Technology Managers
  • Moderator and Speaker, "Negotiating Agreements with Academic Institutions," 2007 American Conference Institute Conference on Pharma/Biotech Collaborations
  • Moderator and Speaker, "Sponsored Research: IP Demands in Deals between Research Institutions and Industry," 2007 Annual Meeting of the Licensing Executives Society (U.S.A. and Canada)
  • Moderator and Speaker, "Key Terms of the Relationship: Mastering Deal Makers and Breakers for Industry and Research Institutions," 2007 American Conference Institute Conference on Pharma and Biotech Industry-Academia Tech Transfer
  • Moderator and Speaker, "Patent Issues Facing Universities," Licensing Executives Society (U.S.A. and Canada) 2006 Winter Meeting
  • Moderator and Speaker, "Sponsored Research: IP Demands in Deals between Universities and Industry," 2006 Joint Meeting of the Association of University Technology Managers and the Licensing Executives Society (U.S.A. and Canada)


Representative Matters

    Patent Litigation

ABB Air Preheater v. Regenerative Environmental Equip. Co. - Regenerative thermal oxidizers; ran case with partner, took and defended all important depositions; handled all oral argument on discovery motions; argued successful summary judgment motion of infringement

Agilent Technologies v. E20 Communications - Optical fiber connectors; ran case for Agilent Technologies with fellow partners

Robert Bosch Corp. v. Lewis - Anti-theft system for automobile stereos; took key depositions and defended expert depositions

Boston Scientific Corporation v. JW, Cordis, and Guidant - Drug coated coronary stents; ran case with fellow partner (subsequently a jury found client's patents valid and infringed)

Chips & Technologies v. Opti Computer - Memory controllers for personal computers; took and defended key depositions

Compaq v. Packard Bell and Intel - Personal computers; took key depositions

Comsonics v. Hewlett-Packard - Cable television signal meters; ran case for Hewlett-Packard with fellow partner

Conklin Instrument v. Adtran - Telephone switching products; only associate, performed all critical liability analysis

Construction Technology v. Lockformer - Cutting system; filled in for departed attorney at successful trial on certain key issues; prepared damages expert

Contel v. V-Band - Turret telephone system; performed liability analysis

Coupco v. Home Shopping Network - Electronic couponing system; ran case with partner; took and defended key depositions; handled oral argument

DigaComm, LLC v. Vehicle IP, LLC - Cellular telecommunications; represented third-party General Electric Company

Electro Design Mfg. v. Texas Instruments - Digital missile guidance set for anti-tank missiles; second chair at trial on key liability issues; took key depositions; defended expert depositions and prepared liability expert for trial

Gilbarco v. Octel and U.S. West - Voice messaging; performed liability analysis

Hitachi v. Texas Instruments - Semiconductor fabrication; performed liability analysis

International Business Machines v. Conner Peripherals - Disk drives; ran discovery of this 20 patent case with partners; took and defended key depositions

Khyber Technologies v. Hewlett-Packard - Windows CE computers; ran case for Hewlett-Packard with fellow partner

Knowledge Enterprises v. Cogliano - Electronic educational products; ran case; conducted all oral argument and depositions

Levine v. Hewlett-Packard - Digital cameras; ran case for Hewlett-Packard; handled all court appearances with fellow partner

Menuco Corp. and Birkmayer v. Prolongevity - NADH; ran case; handled all oral argument

Methode v. Hewlett-Packard and Agilent Technologies; Agilent Technologies v. Methode and Stratos Lightwave - Optical fiber connectors; ran three cases (11 patents, three venues) for Hewlett-Packard and Agilent Technologies with fellow partners

Net2Phone v. Skype and eBay - Voice over Internet Protocol (VoIP); represented third-party General Electric Company

Pico Products v. Eagle Comtronics
- Television encoding/decoding system; performed liability analysis; took and defended key depositions

Rackman v. Microsoft - Encrypted software; performed liability analysis

Sicom v. Agilent Technologies - Logic analyzers; ran case for Agilent Technologies with fellow partners

Soundview v. Tri-Vision - V-Chip; ran short-lived case

Staplevision v. Packard Bell - Video monitors; performed liability analysis and conducted settlement negotiations

Tavares v. Optimum Solutions - Scanning software; took and defended all key depositions and all expert depositions

Therma-Tru v. Plastpro and Nan-Ya Plastics - Compression-molded entry doors; ran case; conducted oral argument including successful CAFC appeal; obtained summary judgment of noninfringement as to all products in dispute (Therma-Tru had sought more than $120 million in damages)

Total Spectrum Mfg. v. Vinten Broadcast - Robotic navigation system for television studio cameras; conducted all oral argument, prosecuted reexamination of patent in suit

Turbosound v. Eastern Acoustic Works - Concert speakers; took key depositions

Wang Laboratories v. CFR Associates - Distributed data processing system; second chair on key liability issues at successful trial for Wang Laboratories, took and defended key depositions

Wokas v. Gilbarco - Gasoline dispensing; took and defended key depositions

Wool Development v. Creaset - Trouser creasing; performed liability analysis, prosecuted reexamination of patent in suit

X-10 USA v. Sicommerce - IR/RF remote control system; took and defended all depositions

    Trademark Litigation

Laurel Entertainment v. Laurel Way - Laurel mark; performed liability analysis

Sturbridge Yankee Workshop v. Morash Associates - PBS series "New Yankee Workshop"; ran case; took and defended all depositions

    Commercial Defamation Litigation

Plastpro 2000 v. Therma-Tru Corp. - Defamation; ran case

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Professional Activities

  • Intellectual Property Owners Association
    — Vice-Chair, Arbitration and Mediation Committee, 2006 and 2007
    — Vice-Chair, IP Licensing Committee, 2008 and 2009; presented with the IPO Outstanding Committee of the Year Award in 2008
  • New Jersey Intellectual Property Law Association
    — Past Chair, Speakers Bureau
  • New Jersey Technology Council
    — Past Member, Government Affairs Committee
  • Licensing Executives Society (U.S.A. and Canada), 2004-2011
  • Association of University Technology Managers
    — Membership Committee, 2007-2012

Civic Activities
  • Member, Executive Committee, United Nations Association of the USA Council of Organizations; 2009 - 2010
  • Produced two charity albums in 2007 and 2008 ("A Princeton Christmas: For the Children of Africa" and A Princeton Christmas For the Children of Africa Vol. 2"; www.princetonchristmas.org); proceeds from which have provided more than 300,000 meals to hungry children in sub-Saharan Africa in-school feeding programs of the United Nations World Food Program (www.wfp.org), the world's largest hunger relief organization; has served as a Coordinator for the WFP Committee of New York City, part of the Friends of the World Food Program (www.friendsofwfp.org), the 501(c)(3) non-profit organization formed by the United Nations World Food Program.
  • Initiated the effort that became Princeton Academy of the Sacred Heart (www.princetonacademy.org), a 240-student school in Princeton, New Jersey and member of the international Network of Sacred Heart Schools.
    — Board Member and Buildings & Grounds Chair; 1997-2005
    — Member, Athletic & Convocation Center Task Force; 2005-2006
    — Member, Upper School Task Force; 2006-2008
    — Member, Princeton Academy of the Sacred Heart/Stuart Country Day School of the Sacred Heart Partnership Committee; 2008-2010
  • Committee Leader, WFP Committee of Princeton, Friends of the World Food Program, 2009-2010
  • Member, Saint Ann School Board, The Church of Saint Ann, Lawrenceville, N.J.; 2009-2010
  • Councilman, Township of Lawrence, New Jersey; 1994-1997
  • Chairman, Vice-Chairman, and Member, Zoning Board of Adjustment, Township of Lawrence, New Jersey; 1984-1986


Bar Admissions

  • U.S. Supreme Court
  • U.S. Court of Appeals for the Federal Circuit
  • New Jersey
  • New York
  • Pennsylvania
  • U.S. Patent and Trademark Office
  • U.S. District Court for the District of New Jersey
  • U.S. District Court for the Northern District of California
  • U.S. District Court for the Southern District of New York
  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Eastern District of Texas


Education

  • J.D., The Catholic University of America, Columbus School of Law
  • B.S., Electrical Engineering, Carnegie Mellon University

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Meagher Emanuel Laks Goldberg & Liao, LLP | One Palmer Square Suite 325 | Princeton, NJ 08542 | 609-454-3500