Bill is a veteran intellectual property litigator whose practice centers on complex patent litigation.
With a background in chemical engineering, Bill possesses an in-depth understanding of his clients’ IP assets. He has extensive experience in patent litigation, licensing and prosecution, particularly in the areas of:
- Polymerase chain reactions (PCRs) used to amplify and detect the presence of targeted genes
- Alzheimer’s disease genetics and therapeutics
- Fluorescent protein and its related genetics
- Phosphate/phosphite agrochemistry
- Glucose test-strip technology (for diabetics to test glucose levels)
LifeScan Scotland, Ltd. (a J&J subsidiary) v. Shasta Technologies
Served as lead counsel for the defendants in patent infringement case in the U.S. District Court for the Northern District of California and its related appeal. The Federal Circuit, in a lengthy published opinion, reversed the lower court’s entry of a preliminary injunction and rejected Lifescan’s claim that the defendants' sales of the GenStrip infringed Lifescan’s ’105 Patent. The Federal Circuit held that Lifescan’s right to enforce the 105 Patent was exhausted as a matter of law.
Pharmatech Solutions, Inc. v. LifeScan Scotland Ltd.
Served as lead counsel before PTAB in a successful IPR challenge of Lifescan’s ’105 Patent and its related appeal.
Dananberg v. Payless ShoeSource
Successfully defended the national retailer and manufacturer in a patent case in the U.S. District Court for the District of New Hampshire where the plaintiff sought hundreds of millions of dollars in damages. Litigation resulted in multiple favorable Markman rulings, and ultimately, summary judgment on all claims.
Alzheimer’s Institute of America, Inc. v. Mayo Clinic, et al.
Represented the leading nonprofit organization in a licensing and patent dispute involving the “Swedish Mutation,” a genetic mutation related to early-onset Alzheimer’s Disease. The defendant used cell lines containing the mutation, which was patented by the client, for research purposes. Argued successfully in arbitration proceedings that these cell lines were not included in the scope of the licensing agreement and this led to a very favorable settlement.
In the Matter of Certain Foam Footwear
Served as lead counsel for Collective Licensing International in an International Trade Commission action claiming patent infringement stemming from the sale of popular clog-style footwear. Achieved a complete victory in the case. The judge exonerated all accused shoes and invalidated one of Crocs’ two principal patents.
Bath & Body Works, Inc. v. Luzier Personalized Cosmetics
Served as lead defense counsel in a two-week jury trial before the U.S. District Court for the Southern District of Ohio. Obtained a favorable verdict on behalf of the defendant, which was affirmed on appeal before the Sixth Circuit.
Before Fox Rothschild
Prior to joining Fox Rothschild, Bill was chair of the Intellectual Property Division and a member of the Executive Committee at a national law firm, where he assisted in the opening and management of several new offices across the country.
Beyond Fox Rothschild
Bill enjoys a range of activities outside his legal practice. In terms of community service, Bill is a former board member of Hillcrest Ministries, which provides housing for homeless individuals. He enjoys sports and music, as both an avid practitioner of martial arts and holds a black belt in Shotokan of America karate and as a guitarist. A resident of a 40-acre horse farm, Bill is a Western-style equestrian. When not engaged in these diverse activities, Bill restores vintage and antique farm tractors.
Honors & Awards
- Named to Managing Intellectual Property magazine’s “IP Stars” (2013-2017)
- Rated AV® Preeminent™ by Martindale-Hubbell
- Inductee, University of Missouri Academy of Distinguished Chemical Engineers
- Named to "The Best Lawyers in America" list for Technology Law in Colorado by Best Lawyers (2008-2019)
- Chemistry, Engineering, Mathematics and Physics Honorary Societies