Damian Wasserbauer specializes in patent strategy, litigation, prosecution, and licensing. He works protecting services and technologies primarily in software, electrical, consumer electronics, Internet, and telecommunication businesses. He has more than twenty-five years of experience in the intellectual property field, serving as in-house counsel, private practitioner, consultant, and IP bar leader.
He focuses his practice on counseling, negotiations, IP asset management and strategy, IP litigation and litigation management and dispute resolution, quality methodology applied to legal services, transactions and licensing, and IP issues relating to international relations. His practice involves providing opinions on patentability, infringement, and validity of patents. In addition, he has drafted or overseen the drafting of hundreds of patent applications for electrical, electronics, telecommunications, and software-based technologies.
- Served as chief intellectual property counsel for IDT Corporation successfully leading the IP organization, improving IP processes significantly, and diminishing exposure to adverse IP claims materially.
- Served as lead defense counsel in a recent litigation in the ED TX, concluded by stipulation of non-infringement after Markman hearing.
- Drove successful IP dispute resolution for domestic plaintiff, employing District Court and ITC action strategies.
- Negotiated multiple settlements of IP disputes ranging in value to many 100’s of millions of dollars for both plaintiffs and defendants.
- Served as the senior intellectual property counsel for Tata Communications leading the development and full implementation of extensive quality programs addressing all aspects of IP practice and implementing a worldwide litigation strategy reducing exposure to IP claims.
- Member of the US Executive Committee of AIPPI, an international association of more than 8000 IP professionals.
- Expert witness on willful infringement and licensing issues.
Examples of Relevant Experience Litigation
Mr. Wasserbauer has been involved in all aspects of cases from pre-filing investigations, to discovery, to trial. He has had first-chair experience in numerous patent infringement jury trials and U.S. International Trade Commission proceedings.
- Aerotel v. IDT (S.D. N.Y.) This patent case involved the prepaid calling cards.
- Amgen v. Elanex Pharmaceuticals and Merckle GmbH (W.D. Wash.) This patent case involved the alleged infringement of host cells and the biotechnology-derived Product rHuEPO.
- Axiohm IPB, Inc. v. Epson and Seiko Epson Corp. (C.D. Cal.) This patent case involved Epson’s alleged infringement of Axiohm’s printer technology
- Alexsam v. IDT Corporation This patent case involved the Point of Sale Activated (POSA) prepaid calling cards and gift card products having a Banking Identification Number (BIN).
- The Chamberlain Group v. GE Interlogix (ND. Ill) This patent case involved security systems and garage door technologies.
- Cryo-Trans Inc. v. GATX Corporation (N.D. Ill.) and (Fed. Cir.) This patent case involved the alleged infringement of cryogenic railcars.
- Merckle GmbH v. Johnson & Johnson (D. N.J.) This trade secret misappropriation case involved the alleged theft of the formula for a rHuEPO product.
- Storck USA L.P. and August Storck K.G. v. Farley Candy Co., Inc. (N.D. Ill.) and (7th Cir.) This trade dress and trademark case involved the alleged infringement of packaging for candy.
- TGIP v. AT&T et al. (IDT) (E.D. Texas) This patent case involved the alleged infringement of point of sale activated prepaid calling cards.
- Wang Laboratories, Inc. v. Toshiba Corp. and Molex, Inc. (E.D. Va.) This patent case involved the alleged infringement of the single-inline-memory-module (SIMM) and its socket developed by Molex.
- WMS Gaming v. International Gaming Technology (Fed. Cir.) This patent case involved the alleged infringement of video gaming devices
International Trade Commission Proceedings
- In re Certain Muzzle-Loading Firearms and Components Thereof 337-TA-777.
Examples of Transactional & Licensing Intellectual Property Matters
Mr. Wasserbauer counsels clients on Transactional IP and licensing issues. He negotiates and drafts license agreements including software licensing and works with clients to develop licensing programs. He has had lead roles in advising and negotiating corporate and intellectual property agreements and in corporate transactions including acquisitions, mergers, divestitures, national and international joint ventures, public and private offerings. Skills include performing intellectual property audits, due diligence and in drafting and negotiating loan documents and security interest agreements.
- Multi-million distresses asset sale of BT Mosaic software platform to Tata Communications from British Telecom including open source software issues and compliance in development of cloud-based media software service.
- Advising and supporting from IP function financing rounds with BitGravity software platform to Tata Communications.
- Involved in other acquisitions and divestitures at Tata Communications. Integration of TeleGlobe worldwide IPR assets from distressed sale.
- Multi-hundred million Share Sale of IDT Entertainment to Liberty Media. Involved in over 15 other acquisitions and divestitures including Zedge, Shale Oil, IDT Energy.
- Advising and supporting IP function in ongoing business as virtual IP counsel and rounds of financing for startup later acquired by Motorola .
- Acquisition of Interlogix for GE. Involved in seven other acquisitions and integrations efforts at GE including Honeywell.
- 4.2 billion GlobalOne international joint venture between Deutsche Telekom, France Telecom and Sprint which involved the creation of a global seamless telecommunications network including the drafting and negotiation agreements necessary for the transfer of technology and assets and patent, trademark, copyright and technology license agreements.
- Hundred-million acquisition of the hearing aid business of Beltone Electronics Corporation including intellectual property due diligence of Beltone’s corporate assets, drafting and sale documents, security interest and license agreements.
- Multi-million acquisition of the animal research and products division of Pharmacia & Upjohn Inc. including the review and negotiation of sale documents, numerous license, and joint development agreements.
- Merger of Westell Technologies, Inc. and Amati Communications Co. including due diligence, license and development agreements concerning DSL technology.
- Initial public offering of Vista Medical Technologies. Including due diligence investigation of the intellectual property assets of Vista Medical Technologies and the drafting of the SEC documentation.
- Initial public offering of Conseco, Inc. including preliminary injunction hearing in U.S. District Court concerning trademark issues.
- Acquisition of COPE Systems including negotiation, drafting and review of sale documents, due diligence investigation of intellectual property assets, and the risk management of infringement claims.
- Acquisition of DH Technologies, Inc. including due diligence of patent, trademark and copyright portfolio, advising on patent litigation from a risk standpoint, and drafting and negotiating sale documents.
- Representation of U.S. Company in international joint venture involving international call-back telecommunication services including drafting and negotiation of license agreements covering patents, trademarks, copyrights and technology as well as other agreements necessary for the transfer of technology, assets and joint venture.
- Representation of a software company selling AutoCAD product including development of international master software distribution agreement and VAR agreements for international distribution channels.
- Representation of Chase Manhattan Bank in its normal course of business including the drafting and negotiation of security interest agreements and due diligence investigations concerning the intellectual property pledged as collateral.
While in private practice, Mr. Wasserbauer has served as primary advisor to many Fortune 500 companies, also as “virtual” IP counsel and as advisor to smaller companies in the United States and abroad.
- Creating IP strategies, related opinions, investigations, filing for patents, trademarks and copyrights around the world and guiding these applications through the United States and foreign governmental agencies.
- Managing patent portfolios and protecting rights in such diverse areas and technologies as air-to-ground communications, avionics, business methods and internet related technologies, digital cameras, CD players, cellular and satellite communication devices and systems, Media, Software & Infrastructure-as-a-Service service offerings, optical devices, software, video cameras, and prepaid products including prepaid calling cards, POSA cards, top-up card products, gift cards and the like.
- Procurement of trademarks and related cancellation and opposition proceedings, clearance studies, infringement investigations and related opinions.
- Procurement of copyrights registrations and addressing issues in copyright matters.