Lewis E. Hudnell III - Mountain View, CA

Overview

Awards and Honors

Super Lawyers® Selectees

Super Lawyers® is a rating service of outstanding lawyers from more than 70 practice areas who have attained a high-degree of peer recognition and professional achievement. The patented selection process includes independent research, peer nominations, and peer evaluations. The number provided represents the number of attorneys at the firm that have been selected to the Super Lawyers or Rising Stars lists.

Lewis E. Hudnell III included in a Super Lawyers® list

Education

• Legal Education

  • University of Pennsylvania Law School, Philadelphia, Pennsylvania
    J.D.

• Non Legal Education

  • Cornell University - Operations Research and Industrial Engineering
    B.S.

Current Employment Position(s)

• Founding Principal

Classes and Seminars

• Patent Litigation Trends, with D. Berkley, M. Squire, and L. McCleod, Elevating Partners of Color Virtual Summit, 10/13/2022
  
• Patent Litigation Trends, with B. Amadi and R. Stanley, Elevating Black Excellence Virtual Summit, 5/12/2022
  
• Patent Litigation Trends, with L. Knight, E. Turner, M. Butler, Elevating Black Excellence West Regional Summit, 10/21/2021
  
• Patent Litigation Trends, with L. Knight, A. Davis, K. Prussia, Elevating Black Excellence East Regional Summit, 4/27/2021
  
• Punching Above Your Weight: Strategies for Building a Successful Small Firm Litigation Practice with a Big Firm Presence, Continuing Education of the Bar Live Webinar, February 13, 2020
  
• From Wonderland Back to Reality: A Practical Look at the Recent Changes in Patent-eligibility Jurisprudence, with U. Dubal, Select Counsel In-House Focus Presentation, 2018
  
• Determining Patent Venue in the Light of TC Heartland Decision, with J. Choa, P. Ou, and G. Forbis, The Knowledge Group Live Webcast, 2018
  
• Strategies and Tools for Minority-Owned Law Firm Success, with M. Maurice, S. Kumagai, R. Salinas, and T. Suh, California Minority Counsel Program Annual Business Conference, 2017
  
• Patent Eligibility Determination in a Post-Alice World, with J. DeCarlo and Dr. O. Lopez, , The Knowledge Group Live Webcast, 2017
  
• Patentability of Software Patents: Emerging Strategies for Attorneys, with R. Sachs and Dr. O. Lopez, The Knowledge Group Live Webcast, February 4, 2016
  
• The Changing Landscape of Intellectual Property Strategies: What Every Firm Needs to Know, with J.Martin, C. Redfield, T. Wimbiscus, The Knowledge Group Live Webcast, December 14, 2015
  
• Developing and Implementing Successful Corporate IP Strategies, with P. Reyes, M. Cooke, and T. Pompey for the National Bar Association Annual Convention, Corporate Leadership Forum, July 14, 2012
  
• Patent Portfolio Transfers: Lessons Learned from Google's Acquisition of Motorola Mobility, with G. Sivinski and P. Turner-Brimm , Minority Corporate Counsel Association CLE EXPO, March 22, 2012
  
• Closing Bell for Business Method Patents?, National Bar Association Annual Convention, August 6, 2009
  
• Managing the Costs of Outside Counsel Effectively, with M. Soloman, C.Forstner, M. Kelley, and L. Renna, World Research Group’s 6th Annual Patents and the Financial Services Industry Conference, July 29, 2009
  
• In re Bilski and the Future of the Business Method Patent, IP Law Review Conference, New York, October 30, 2008
  
• Patent Licensing and Enforcement Companies and their Societal Impact: A Study of the Model and What Companies Need to Know to Be Prepared, with N. Setty, National Bar Association Annual Convention, Atlanta, Georgia, August 1, 2007
  
• The Current Landscape in Intellectual Property Law as it Affects the Financial Services Industry, with C. Macedo, W. Coggins, R. Stewart, D. Alderucci, and R. Hunt , World Research Group's 4th Annual Patenting Business Methods in the Financial Services Industry Conference, New York, New York , July 24, 2007
  
• Update on Recent Case Law and its Impact on the Intellectual Property Marketplace, Ocean Tomo's Spring 2007 Live Intellectual Property Auction, Chicago, Illinois , April 18, 2007
  
• Business Methods Patents: The Need For Legislative and Administrative Reform, with D. Collarulli, W. Hanchuk, and A. Chaclas, World Research Group's 3rd Annual Patenting Business Methods in the Financial Services Industry Conference, New York, New York, July 27, 2006

Representative Cases

• Stragent, LLC. v. Volvo Car USA, LLC (D. Del.) Won summary judgment of noninfringement for auto manufacturer in patent infringement action involving electronic control units. 
• VoIP-Pal.com, Inc. v. Amazon.com, Inc. et al. (W.D. Tex.) Successfully represented internet telecommunications company in obtaining favorable settlement in patent infringement action involving call routing technology
• Google LLC v. VoIP-Pal.com, Inc. (PTAB) Defeated four petitions to institute Inter Partes Review of patents relating to call routing technology
• T-Mobile USA, Inc. v. VoIP-Pal.com, Inc. (PTAB) Defeated four petitions to institute Inter Partes Review of patents relating to call routing technology
• StratosAudio, Inc. v. Volvo Car USA, LLC (W.D. Tex.) Successfully defended auto manufacturer in obtaining favorable settlement in patent infringement action involving infotainment system technology
• Apple Inc. v. Voip-Pal.com, Inc. (CAFC) Obtained affirmance in precedential opinion of PTAB final written decision upholding validity of patents relating to call routing technology
• Paice, LLC v. Volvo Car Corporation (D. Md.) Successfully defended auto manufacturer in obtaining favorable settlement in patent infringement action involving hybrid vehicle technology
• Samsung Electronics America, Inc. v. Kannuu Pty. Ltd. (PTAB) Defeated three petitions to institute Inter Partes Review of patents relating to database search and retrieval technology
• JG Technologies LLC v. Volvo Car USA, LLC (E.D. Tex.) Successfully defended auto manufacturer in obtaining early settlement in patent infringement action involving objection detection technology
• Softvault Systems, Inc. v. Volvo Car USA, LLC (C.D. Cal.) Successfully defended auto manufacturer in obtaining early settlement in patent infringement action involving software security technology
• Michael Grecco Productions, Inc. v. Ranker, Inc. (C.D. Cal.) Successfully defended digital media company in obtaining early settlement in copyright infringement action
• Phenix Longhorn, LLC v. Wistron Corporation (E.D. Tx.), Successfully represented programmable gamma correction licensing company in obtaining favorable settlement in patent infringement action
• Opticurrent, LLC v. Power Integrations (N.D. Cal.), Won jury verdict of infringement of patent relating to circuit for minimizing power leakage
• Next Lighting Corporation v. Cree, Inc. (N.D. Cal.), Obtained favorable settlement in patent infringement action involving lighting unit design
• MEC Resources, LLC v. Apple Inc. (N.D. Cal. and PTAB) Obtained favorable settlement in patent infringement action and dismissal of petition for inter partes review in matters involving semiconductor technology
• Talsk Research Inc. v. Evernote Corporation (N.D. Cal.)Successfully represented internet archiving company who obtained favorable settlement in patent infringement action
• Phenix, LLC v. Integrated Memory Logic et al. (E.D. Tx.)Successfully represented programmable gamma correction licensing company in obtaining favorable settlement in patent infringement actions
• RPost Holdings, Inc. et al. v. Responsys, Inc. (E.D. Tx.)Successfully represented email authentication software company in obtaining favorable settlement in patent infringement action
• RPost Holdings, Inc. et al. v. Exact Target, Inc. (E.D. Tx.)Successfully represented email authentication software company in obtaining favorable settlement in patent infringement action
• RPost Holdings, Inc. et al. v. Readnotify.com et al. (E.D. Tx.)Successfully represented email authentication software company in obtaining favorable settlement in patent infringement action
• Worldwide Home Products, Inc. v. Time, Inc. et al. (S.D.N.Y.)Successfully defended major retailer and won summary judgment of inequitable conduct in patent infringement action
• RPost Holdings, Inc. et al. v. Zix Corporation (E.D. Tx.)Successfully represented email authentication software company in obtaining favorable settlement in patent infringement action
• RPost Holdings, Inc. et al. v. Telarix, Inc. (E.D. Va.)Successfully represented email authentication software company in obtaining favorable settlement in patent infringement action
• RPost Holdings, Inc. et al. v. CanadaPost Corporation et al. (E.D. Tx.)Successfully represented email authentication software company in obtaining favorable settlement in patent infringement action
• Main Hastings, LLC v. SanDisk Corporation (N.D. Cal.)Successfully represented qui tam realtor in obtaining favorable settlement in patent false marking action regarding solid state disk drives
• Japan Cash Machine et al. v. MEI, Inc. (D. NV.) Won jury verdict of invalidity in patent infringement action involving bill validation technology
• Samsung Electronics Co., Ltd. v. Renesas Technology Corporation et al. (ITC)Led litigation team that obtained favorable settlement after trial in patent infringement action involving direct memory access controller technology
• Mars et al. v. Japan Cash Machine et al. (D.N.J.)Defeated Motion for Summary Judgment of Invalidity and obtained favorable claim constructions on almost all disputed terms at Markman hearing in patent infringement action regarding bill validation technology.
• DataTreasury Corp. v. Bank of America Corp. (E.D. Tx.)Defended large financial institution in patent infringement action regarding check imaging technology
• Web Chang v. Atmel Corp. (E.D. Tx.)Successfully defended semiconductor manufacturer in obtaining dismissal with prejudice of patent infringement action regarding field programmable gate arrays
• Seagate Technology LLC, v. Cornice, Inc. (ITC and D.Del.)Obtained favorable settlement on the eve of trial in patent infringement action regarding hard disk drive technology
• Millennium, LP v. ScanSoft, Inc. (S.D.N.Y.) Successfully defended document imaging software manufacturer in obtaining favorable early settlement in patent infringement action
• Highland Industries, Inc. v. Toyobo Co., Inc. (M.D.N.C.)Successfully defended air bag manufacturer in obtaining early dismissal with prejudice of patent infringement action
• Plasma Physics Co. v. LSI Logic Corp. (E.D.N.Y.) Successfully defended semiconductor manufacturer in obtaining favorable settlement in patent infringement action
• Cisco Systems Inc., v. Huawei Technologies, Co., Ltd. (E.D. Tex.)Represented major networking company in patent litigation regarding operating system for networking devices
• Amazon.com, Inc. v. BarnesandNoble.com, Inc. (W.D. Wash.)Won reversal of the District Court's preliminary injunction order on appeal and settled the case favorably to BarnesandNoble.com
• Wistron Corporation v. Phenix Longhorn, LLC (PTAB), Defeated petition to institute Inter Partes Review of patent relating to programmable gamma integrated circuits
• Symantec Corporation v. RPost Communications Limited (PTAB)Defeated two petitions to institute Inter Partes Review of patents relating to verifying delivery and integrity of electronic messages
• Symantec Corporation v. RPost Communications Limited (PTAB)Partially defeated petition to institute Inter Partes Review of patent relating to verifying delivery and integrity of electronic messages
• Experian Marketing Solutions, Inc. et al. v. RPost Communications Limited (PTAB)Defeated two petitions to institute Covered Business Method Review of patents relating to verifying delivery and integrity of electronic messages
• Epsilon Data Management, LLC et al. v. RPost Communications Limited (PTAB) Defeated petition to institute Covered Business Method Review of patent relating to verifying delivery and integrity of electronic messages

Published Works

Articles

• IP Litigator, Federal Circuit Enforces Gatekeeping Role in Patent Damages Testimony, (Sept. 1, 2025)
  
• IP Litigator, Federal Circuit Report, (Jan. 1, 2025)
  
• The Post-Alice Blend of Eligibility and Patentability, Law360, 2017
  
• The Wonderland of Patent Ineligibility as Litigation Defense, Law360, 2015
  
• The Closing Bell for Business Method Patents?, with D.G. Santos, Law360, 2009
  
• Punching Above Your Weight: Strategies for Building a Successful Small Firm Litigation Practice with a Big Firm Presence, The Business of Law

Bar Admissions

• California
• New York
• U.S. Patent and Trademark Office
• U.S. Supreme Court
• U.S. Court of Appeals Federal Circuit
• U.S. Court of Appeals 2nd Circuit
• U.S. Court of Appeals 9th Circuit
• U.S. District Court Northern District of California
• U.S. District Court Central District of California
• U.S. District Court Southern District of California
• U.S. District Court Southern District of New York
• U.S. District Court Eastern District of New York
• U.S. District Court Western District of New York
• U.S. District Court Eastern District of Texas
• U.S. District Court Western District of Texas

Other Affiliations

• American Bar Association (Member)
• California State Bar Association (Member)
• California Minority Counsel Program
• National Bar Association (Member)