Gary M. Hnath
Intellectual Property, Trademark Litigation, ITC Section 337 Actions
Gary Hnath is a Partner in Mayer Brown’s Washington DC office, where he focuses his practice on intellectual property litigation and counseling, including disputes involving patent, trademark and copyright infringement and trade secrets. He has participated in numerous District Court cases, several Federal Circuit appeals, and over 40 investigations at the International Trade Commission under Section 337 of the Tariff Act of 1930, one of the principal forums for litigating intellectual property disputes involving imported articles.
A leading authority in the area of Section 337 litigation, Gary is a former president of the ITC Trial Lawyers Association and Chair of the ITC Committee of the American Intellectual Property Law Association. He has lectured throughout the United States and Asia and written widely on the subject of Section 337 investigations. While working at the ITC, Gary was lead counsel for the government in Certain Concealed Cabinet Hinges, which raised issues of first impression as to what constitutes a “domestic industry” under the 1988 amendments to Section 337. His position on this issue was adopted by the Administrative Law Judge and the Commission in a decision which is still cited as one of the leading cases in the field. He is also an Advisory Expert for China’s National Advisory Center for Overseas Intellectual Property Dispute Settlement.
Gary has successfully represented both patent holders and companies accused of infringement in cases involving a variety of technologies, including high-intensity sweeteners; coenzyme Q10; toner cartridges; sleep apnea products; laminated packaging; linear actuators; medical devices for vein harvesting; personal computers; acetic acid; wireless local area networks; ground fault circuit interrupters; agricultural vehicles; multiplexers used in space satellites; gear couplings used in industrial machinery; and neodymium-iron-boron magnets, to name just a few. He was lead counsel for the first company in China to win a Section 337 case after trial at the ITC. His recent notable victories for clients at the ITC include the successful defense of two manufacturers in China accused of infringing four process patents for the manufacture of sucralose. In this high profile case, the Commission found all of the asserted patents not infringed, and one of the patents invalid, after a hotly contested trial.
Gary has also represented numerous clients on a pro bono basis. For example, in a case for a Washington DC public school bus aide fired from her job as a result of an erroneous drug test, Gary was successful in obtaining a ruling that his client’s constitutional rights had been violated and an order reinstating her with back pay. The court’s decision in that case was cited for several years as one of the leading decisions in the US discussing the constitutionality of random drug testing.
In addition to private practice, Gary has served as law clerk to the Honorable Walter E. Black Jr., US District Court for the District of Maryland and a senior trial attorney with the ITC’s Office of Unfair Import Investigations.
International Trade Commission
- Collapsible and Portable Furniture - Gary is currently leading a team representing complainant GCI Outdoor in a case asserting two patents relating to portable backpack chairs. One set of respondents entered into a consent order, and the case is scheduled to go to trial against three other respondent groups later this year.
- Human Milk Oligosaccharides and Methods of Producing the Same - Gary is lead counsel for Jennewein Biotechnologie GmbH in a case involving genetically engineered E. coli used to make 2’-FL, a human milk oligosaccharide sold by Jennewein to Abbott for use in its leading infant formula, Similac. After vigorous opposition from the complainant, in May 2020, the full Commission reversed the ALJ and found that Jennewein’s alternative process was properly in the case and that the process did not infringe, and specifically carved that process out from its exclusion order, enabling Jennewein to continue to supply its customers in the US market.
- Toner Cartridges, Components Thereof, and Systems Containing the Same - In 2019 and 2020, Gary led a team representing several respondents in an ITC investigation brought by Brother. We successfully persuaded Brother that our clients’ redesigned cartridges were non-infringing and obtained a stipulation that they would be outside the scope of any general exclusion order, thereby providing a competitive advantage to our clients when Brother obtains a GEO.
- Powered Cover Plates - In early 2020, after a hard-fought battle, Gary obtained a decision from the ITC that his Chinese clients’ redesigned products did not infringe and a rare specific exemption of the redesigns from the ITC’s general exclusion order.
- Robotic Vacuum Cleaning Devices and Components Thereof Such as Spare Parts - Gary was brought in during the Commission review phase to represent respondent Silver Star as co-counsel. Commission found all but one asserted patent to be not infringed or invalid. After we filed a notice of appeal and a Rule 177 request with Customs to clear a redesigned product to address the remaining patent, the case settled in 2019 and the exclusion order on the patent was rescinded.
- Toner Cartridges and Components Thereof - In 2018, Gary led the Mayer Brown team to a groundbreaking victory for Ninestar Corporation, located in Zhuhai, China, in a high profile case against Canon before the ITC. The ITC affirmed an administrative law judge’s summary determination of no infringement of all seven asserted patents related to laser printer cartridges. This victory was recently affirmed by the Federal Circuit in May 2020.
- High-Potency Sweeteners, Processes for Making Same, and Products Containing Same - In 2017, Gary led the Mayer Brown team in obtaining a favorable final decision from the ITC terminating the investigation in favor of China-based clients Anhui Jinhe Industrial Co., Ltd. and Suzhou Hope Technology Co., Ltd. We pursued early and aggressive discovery to challenge the basis for complainant’s infringement allegations, its purported invention and its own earlier sales as prior art. After two months, the complainant voluntarily withdrew its complaint, resulting in termination of the investigation and a complete victory for our clients.
- Backpack Chairs - Gary represented GCI Outdoor as respondent in a case alleging infringement of a patent on backpack chairs. After several months of litigation exposed serious flaws in its case, the complainant withdrew its complaint in 2017 and the investigation was terminated, a complete victory for GCI.
- Composite Aerogel Insulation Materials and Methods for Manufacturing Same - Represented Alison Hi-Tech Co., Ltd. in 2017 in case involving aerogel technology. We succeeded in getting a stipulation that design around products did not infringe two of the three asserted patents, which will enable Alison to compete in the US when the third patent expires next year.
- Digital Models, Digital Data, and Treatment Plans for Use in Making Incremental Dental PositioningAdjustment Appliances, the Appliances Made Therefrom, and Methods of Making the Same and IncrementalDental Positioning Adjustment Appliances and Methods of Producing Same – ITC counsel for ClearCorrect in an enforcement proceeding and investigation brought by Align involving dental positioning adjustment devices. Immediately before the case was to go to trial, the Commission issued a notice that reversed the ALJ's initial determination and found that there was no violation of the consent order as previously alleged. Obtained interim review of the ALJ's order by flagging the issue for the Commission through a letter pre-institution. After Commission review and appeal, the Federal Circuit upheld our position in 2016 that the electronic transmissions at issue were not “importations” and therefore outside of the ITC’s jurisdiction, representing a complete victory for our clients.
- Toy Figurines and Toy Sets Containing Same - Gary was lead counsel for Mega Brands as respondent in a case brought by Lego alleging infringement of design patents and copyrights on Lego’s popular toy figurines. The case settled favorably in 2015, with no admission of liability, after initial discovery exposed significant flaws in Lego’s case.
- Sleep-Disordered Breathing Treatment Systems and Components Thereof - In 2015, Gary led the Mayer Brown team in persuading the ITC to overturn the administrative law judge’s initial determination and ruled in favor of Beijing BMC Medical Co., Ltd. in a high profile case brought by the industry leader, ResMed, involving sleep apnea products, finding that the key patent in the case was invalid. Gary’s team also helped the client in successfully designing around the remaining patents. Ultimately, after an appeal to the Federal Circuit and remand to the Administrative Law Judge, Gary’s client in China prevailed on all seven patents.
- Kinesiotherapy Devices and Components Thereof – Gary represented as co-counsel the complainant in a case involving couples devices. Following trial, the ALJ found that the patent was valid and infringed, but that there was no domestic industry. After filing a petition for review and further briefing, the Commission reversed the finding of no domestic industry, found a violation of the statute, and issued a general exclusion order excluding all infringing devices from being imported into the US, regardless of source. The decision on domestic industry was reversed on appeal to the Federal Circuit in 2015 but the findings on infringement and validity were affirmed.
- Toner Cartridges and Components Thereof - Lead counsel for Ninestar and several respondents in 2014 in investigation alleging patent infringement brought by Canon. We were successful in obtaining a stipulation of non-infringement of redesigned cartridges and then settled favorably with no finding of liability.
- Multiple Mode Outdoor Grills and Parts Thereof - In 2014, Gary led the Mayer Brown team in winning summary determination of non-infringement in the ITC of a redesigned grill for the Chant Group based in Guangdong, China, resolving the case for the client at the ITC and in district court at a relatively low cost and without extended litigation.
- Certain Linear Actuators - In 2013, Gary led the Mayer Brown team in successfully forcing the complainant to drop its ITC case against our client Changzhou Kaidi Electrical Company without entering into a settlement agreement, thereby bringing a complete victory to our client at the ITC in less than 3 months.
- Certain Products Having Laminated Packaging – In 2013, Gary represented the lead respondent in a case involving laminated packaging. The ITC, for the first time, instituted a new procedure requiring the ALJ to decide the issue of domestic industry within 100 days, subject to immediate Commission review. The ITC later indicated that this would be the first case in a new pilot program to streamline ITC procedures. The ALJ ruled in favor of respondents, finding no domestic industry, and the ALJ's decision was affirmed by the Commission, resulting in termination of the investigation with a finding of no violation.
- Coenzyme Q10 Products and Methods of Making Same - In 2012, Gary led the Mayer Brown team in obtaining victory at the ITC for our client Zhejiang Medicine Company after a week-long trial in a case involving coenzyme Q10, one of the top 5 selling dietary supplements in the US. The ITC judge’s initial determination finding no infringement by our client and no domestic industry was affirmed by the Commission on appeal.
- Digital Televisions and Components Thereof - Co-counsel for respondent Coby in patent case involving digital TVs. Case settled favorably shortly before trial in 2012.
- Ground Fault Circuit Interrupters and Products Containing Same - In 2012, Gary obtained a victory at the ITC on behalf of Fujian Hongan Electric Co., Ltd. and Zhejiang Trimone Electric Science & Technology Co., Ltd. After a trial, the clients were cleared of infringing two asserted patents, and the clients were able to design around the remaining asserted patents.
- Computer Forensic Devices and Products Containing Same - Successfully represented respondent CRU in a patent case involving computer forensic devices used by law enforcement agencies as co-counsel. Following trial in 2012, the ALJ found no domestic industry based on failure to satisfy economic prong; Complainant chose not to pursue Commission review, making ALJ's decision final and a complete victory for CRU.
- Certain Hydroxyprogesterone Caproate and Products Containing Same - Represented proposed respondent, Women’s International, in case involving alleged unlawful compounding of an orphan drug. As a result, in a rare instance, we were able to persuade the Commission in 2012 not to institute a Section 337 investigation.
- Electronic Devices Having a Retractable USB Connector - Co-counsel for Coby in 2012 in patent-based investigation involving USB connectors. Case settled early.
- Wind and Solar-Powered Light Posts and Street Lamps - Lead counsel for three respondents in design patent case involving wind and solar-powered street lamps. Case settled favorably in 2011 shortly before trial and investigation was terminated based on withdrawal of complaint.
- Toner Cartridges and Components Thereof - Lead counsel for several respondents, including Ninestar, in patent-based investigation brought by Canon. The case settled favorably in 2011 with no admission of liability shortly before trial.
- Toner Cartridges and Components Thereof - Lead counsel for several respondents, including Ninestar, in patent-based investigation brought by Lexmark. The case settled favorably in 2011 after initial discovery.
- Handbags, Luggage, Accessories and Packaging Thereof - Lead counsel for several respondents in trademark case. The case settled in 2011 after early discovery.
- Vein Harvesting Surgical Systems - Represented the complainant in an ITC investigation alleging infringement of two patents that relate to innovative technology for minimally invasive harvesting of healthy blood vessels for uses such as heart bypass surgery. The case successfully settled in 2008 after discovery and before trial.
- Acetic Acid - In 2008, Gary led a team in successfully defending the Sopo Group based in Jiangsu, China, in an ITC investigation brought by Celanese, a large conglomerate based in Germany. After three months of vigorous defense on behalf of Sopo, Gary’s team exposed major flaws in the complainant’s infringement allegations and serious questions about the validity of its patent. In June 2008, Celanese voluntarily withdrew its complaint before the ITC, resulting in a complete victory for Sopo.
- Sucralose, Sweeteners Containing Sucralose, and Related Intermediate Compounds Thereof - In 2008, Gary led a team in obtaining a complete victory at the ITC for Niutang Chemical, located in Changzhou and Guangdong Food Industry Institute. The case involved the top selling artificial sweetener in the world, sucralose, sold in the US as Splenda, and the complainant was a huge British competitor, Tate & Lyle, which produced Splenda. After extensive discovery and a hard-fought two week trial at the ITC, the administrative law judge ruled in favor of the two Chinese respondents, finding that there was no infringement of any of the four asserted patents, and that one of the patents was also invalid and not being used by the complainant.
- Wireless Conference Calling Devices, Components Thereof, and Devices Containing Same - Represented GN Netcom A/S, a Danish company, and its U.S. subsidiary named as respondents in a case alleging infringement of patent relating to wireless conference calling devices; after initial discovery, we submitted a draft motion for sanctions against the complainant, alleging the existence of material misrepresentations in the complaint; a week later, the complainant withdrew its complaint and agreed to termination of the ITC investigation.
- NAND Flash Memory Chips and Products Containing Same and NOR and NAND Flash Memory Devices andProducts Containing Same - Co-counsel for Complainant SanDisk Corporation as complainant in two investigations involving flash memory devices.
- Personal Computer/Consumer Electronic Convergent Devices - Lead counsel for two of the respondents, Cyberlink Corporation of Taiwan and its California subsidiary, Cyberlink.com Corporation, in an ITC investigation; after we successfully stayed the investigation pending reexamination (a rare occurrence at the ITC), the complainant withdrew its complaint and the investigation was terminated with no finding of violation by Cyberlink.
- Ground Fault Circuit Interrupters and Products Containing Same - Represented a manufacturer and several distributors in 2008 in ITC investigation initiated by Pass & Seymour, alleging infringement of several patents on ground fault circuit interrupters.
- Modified Vaccinia Ankara ("MVA") Viruses and Vaccines and Pharmaceutical Compositions Based Thereon -Represented Complainant Bavarian Nordic in an investigation involving viruses used for smallpox vaccines; the case went to trial at the ITC in 2006, resulting in a favorable finding for Bavarian Nordic and a settlement with the accused infringers, who agreed to vacate the market for the patented small pox vaccines.
- Color Television Receivers and Color Display Monitors and DVD/CD Players and Recorders, Color TelevisionReceivers and Monitors, and Components Thereof - Represented various BenQ companies as respondents and complainants in two investigations at the International Trade Commission under Section 337 involving color television receivers, color television monitors and DVD/CD Players.
- Zero Mercury Batteries - Counsel for one of the respondents in patent case brought by Eveready alleging infringement of patent on zero mercury alkaline batteries.
- Agricultural Vehicles and Components Thereof - Lead counsel for Chinese respondents in case brought by Deere & Company alleging infringement of trademarks on the green and yellow colors used by Deere on its tractors. The case settled favorably after opening statements at trial.
- Digital Photo Frames and Image Display Devices and Components Thereof - Counsel for respondent in patent investigation involving digital photo frames.
- Network Interface Cards - Co-lead counsel for Agere Systems and other respondents in patent case alleging infringement by network interface cards used in wireless local area networks; also assisted with related district court proceeding brought by Agere against the complainant, Proxim. Case settled favorably after initial discovery.
- Acesulfame Potassium - In 1998, Gary obtained a historic victory for Hangzhou Sanhe Food Company the ITC involving the popular artificial sweetener, Acesulfame-K. After a vigorously contested trial, the administrative law judge ruled in favor of Sanhe on both asserted patents. The decision was later affirmed on appeal to the Commission and Federal Circuit. This was the first time a Chinese company won after trial at the ITC, and demonstrated that Chinese companies could prevail at trial in a Section 337 case.
- Hardware Logic Emulation Systems - Co-counsel for respondents in patent case involving emulation systems used to test and design semiconductor devices.
- Memory Devices with Increased Capacitance - Counsel for complainant in patent case alleging infringement by latest generation semiconductor chips.
- Neodymium-Iron-Boron Magnets - Lead counsel for respondents in patent case involving high-strength magnets; also represented respondents in subsequent enforcement proceeding.
- Dielectric Miniature Microwave Filters and Multiplexers - Lead counsel for the respondent, ComDev, in patent-based investigation alleging infringement of patent on satellite filters.
- Magnetic Switches for Coaxial Transmission Lines - Lead counsel for ComDev, the respondent, in case alleging infringement of patents by magnetic switches used in satellites.
- Mechanical Gear Couplings - Lead counsel for respondents in case alleging misappropriation of trade secrets relating to gear coupling used in industrial machinery.
- Ground Fault Circuit Interrupters - In 1995, Gary led a team in helping two Chinese clients Van-Sheen Electric Appliance Co., Ltd. and Yueqing Huameili Electronic Co., Ltd. defeat an ITC investigation brought by one of their largest competitors in the US. After fact discovery, the complainant’s motions for summary determination were denied. Shortly after that, the complainant promptly withdrew its complaint after bring threatened with sanctions. The patent at issue then expired, resulting in a complete victory for the clients. It is believed to be the first time a Chinese company successfully defended a Section 337 case.
- Polymer Geogrid Products and Processes Therefor - Lead counsel for government in patent case involving geogrids used in civil engineering to reinforce soil and other materials.
- Doxorubicin - Lead counsel for government in patent case involving doxorubicin.
- Wire Electrical Discharge Machining Apparatus - Lead counsel for government in patent-based case involving wire EDM machines used for high precision cutting and machining.
- Concealed Cabinet Hinges and Mounting Plates - Lead counsel for government in patent-based case involving cabinet hinges; Commission adopted position on domestic industry requirement under Section 337.
- Electric Power Tools, Battery Cartridges and Battery Chargers - Lead counsel for government in trade dress case involving electric power tools.
Federal and State Court Actions
- Aesthetic Lasers v. Revita GmbH (D. N.J.) - Lead counsel for plaintiffs in action alleging infringement of patent on microdermabrasion devices.
- Aesthetic Lasers v. Signature Club A and Adrian Arpel (D. Md.) - Lead counsel for plaintiff in action alleging infringement of trademarks relating to microdermabrasion devices.
- Aesthetic Lasers v. SMEI (D. Md.) - Lead counsel for plaintiffs in action alleging infringement of patent on microdermabrasion devices; also represented plaintiffs in subsequent proceedings to obtain judgment based on violation of consent order.
- Avago v. ST Microelectronics (E.D. Texas) - counsel for plaintiff in patent infringement case involving optical navigation sensors.
- Bayer v. Carlsbad (S.D. Cal.) - Lead counsel for defendant in ANDA challenge to Bayer's patent on ciprofloxacin.
- Bel Fuse, Delta Electronics and Power-One v. SynQor - counsel for appellants in Federal Circuit appeal.
- Carlsbad Technology v. Stason Pharmaceuticals (Superior Court of California) - Counsel for plaintiff in breach of contract action.
- Canon v. Ninestar Image Int'l et al. (S.D.N.Y.) - lead counsel for several defendants in two patent infringement cases.
- Gund v. SKM Enterprises (S.D. N.Y.) - Lead counsel for defendants in copyright case alleging infringement of copyright on Gund bears.
- Ingenio, Filiale De Loto-Quebec, Inc. v. GameLogic, Inc., District of Delaware - Counsel for start-up manufacturer of gaming products, GameLogic Inc., in patent infringement action involving company-critical technology.
- Leviton v. Huameili (E.D. N.Y.) - Lead counsel for Huameili in action brought by Leviton for infringement of patent on ground fault circuit interrupters.
- Leviton v. Van Sheen (C.D. Cal.) - Assumed responsibility as lead counsel for Van Sheen in action brought by Leviton for infringement of patent on ground fault circuit interrupters.
- Lexmark International v. Ink Technologies et al. (S.D. Ohio) - Lead counsel for a number of defendants in patent case involving toner cartridges.
- Meihao v. Leviton (D. Md.) - Lead counsel for Meihao in declaratory judgment action challenging infringement, validity and enforceability of six Leviton patents on ground fault circuit interrupters; in a second action for declaratory judgment involving another Leviton patent, the case was dismissed with prejudice by Leviton and the Magistrate has recommended the imposition of over $800,000 in fees and costs against Leviton.
- Meridian Diagnostics v. Yi (S.D. Ohio) - Lead counsel for defendants in trade secret misappropriation action relating to diagnostic tests used to detect the presence of H. Pylori.
- Mettler Toledo v. Denver Instruments (E.D. Va.) - Counsel for plaintiff, Mettler Toledo, in patent case alleging infringement of patents on electronic balances.
- Mitek v. Arthrex (D. Utah) - Counsel for Mitek, a Johnson & Johnson affiliate, as plaintiff in patent case alleging infringement of patent on suture anchors.
- Mitek v. Wright Medical (N.D. Calif.) - Counsel for Mitek, a Johnson & Johnson affiliate, as plaintiff in patent case alleging infringement of patent on suture anchors.
- Richter v. Carlsbad (E.D. N.Y.) - Lead counsel for defendants Carlsbad and Andrx in case alleging infringement of patents relating to famotadine.
- Role Models America v. Secretary of Health and Human Services (D. D.C.) - Lead counsel for plaintiff seeking to use former naval facility for program to assist homeless and out of school youth.
- San Huan v. Crucible (C.D. Cal.) - Lead counsel for plaintiff in declaratory judgment action relating to patent on neodymium-iron-boron magnets.
- Shamsuddin v. BNG Enterprises (D. Md.) - Lead counsel for plaintiffs in action alleging infringement of patent on inositol and inositol hexaphosphate "IP-6".
- Shamsuddin v. Lifesource Naturals (D. Md.) - Lead counsel for plaintiffs in action alleging infringement of patent on inositol and IP-6.
- Shamsuddin v. Solaray (D. Md.) - Lead counsel for plaintiffs in action alleging infringement of patent on a dietary supplement combining inositol and IP-6.
- Shamsuddin v. Water Pure (D. Md.) - Lead counsel for plaintiffs in action alleging infringement of patent on inositol and IP-6.
- ST Microelectonics v. Avago (N.D. Texas) - counsel for defendant in patent case involving optical navigation sensors.
- Zhejiang Medicine Co. v. Kaneka Corporation (S.D. Texas) - counsel for declaratory judgment plaintiff in patent case involving coenzyme Q10.
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- Harvard Law School, JD, cum laude
- Michigan State University, BA, philosophy and psychology
- District of Columbia
- US Court of Appeals for the District of Columbia Circuit
- US Court of Appeals for the Federal Circuit
- US District Court for the Central District of Illinois
- US District Court for the District of Columbia
- US District Court for the Eastern District of Virginia
- US District Court for the District of Maryland
- US Court of Federal Claims
- US Supreme Court
- Supreme Court of Virginia
- Court of Appeals of Maryland
- Former member, Prince George's Philharmonic Orchestra's Board of Directors
- Former member, ACLU of Maryland's Board of Directors
- Member and officer (including past president), ITC Trial Lawyers' Association
- Former chairman, ITC Committee of the American Intellectual Property Association
- Former member, Tally-Ho Swim Club's Board of Directors
- Lead counsel, Jones v. McKenzie (pro bono representation of plaintiff through National Capital ACLU in case successfully challenging dismissal of D.C. school bus transportation aide based on faulty drug test; successfully filed suit on other D.C. public school employees that were wrongfully fired based on faulty drug tests)
- Lead counsel, Senior Resources v. Dep't of Defense, et al. (pro bono representation of plaintiff through Litigation Assistance Partnership Project of the ABA; successfully obtained temporary exclusion order, preliminary injunction, and summary judgment on behalf of Senior Resources, a nonprofit organization attempting to obtain property at former military base in Texas for use in program to assist the homeless)
- ITC Trial Lawyers Association
- American Intellectual Property Law Association/ITC Committee
- IPO (Intellectual Property Owners), ITC Committee