Overview

Amr Aly is an Intellectual Property partner with more than 20 years of experience in Mayer Brown’s New York office.

Amr focuses his practice on intellectual property litigation with emphasis on patent matters. He has broad experience in several fields, including telecom, networking, data encryption and security, Internet, biotechnology, banking, chemical, and pharmaceutical. He has been involved in major complex litigations, including multiparty and multidistrict litigations, and has been a key member of litigation teams that secured favorable pre-trial results that were affirmed by the Federal Circuit. Amr is the named inventor of US Patent No. 4,999,225, entitled "Powder Thermal Spray Method for Spraying Non-Meltable Materials." He was a member of the 1984 US Olympic Soccer Team and awarded the Hermann Trophy (soccer's equivalent of the Heisman Trophy) as the best collegiate soccer player in 1984. Prior to attending law school, he worked with major engineering companies for over ten years, gaining extensive experience in engineering and management. Amr speaks conversational Arabic.

Spoken Languages

  • English
  • Arabic

Experience

  • Anuwave LLC v. Digi International Inc. (D. Del.).  Served as lead counsel for Digi International against infringement claims of patent directed to telecommunications using SMS communication channels.  Identified prior art that was used to secure a very favorable settlement.
  • Commtech IP, LLC v. Digi International Inc. (D. Del.).  Served as lead counsel for Digi International against infringement claims of patent directed to modem technology.  Formulated novel non-infringement defense that precipitated a very quick settlement on excellent terms.
  • Adiona IP, LLC v. Bang & Olufsen America, Inc. (D. Del.).  Served as lead counsel for Bang & Olufsen against infringement claims of patents directed to wireless broadcasting of media content.  After engaging in early motion practice, secured very favorable settlement.
  • Wireless Monitoring Systems v. Digi International Inc. (D. Del.).  Served as lead counsel for Digi International against infringement claims of patent directed to security management systems (SMS).  Identified prior art that was used to secure a very favorable settlement.
  • Be Labs, Inc. v. Netgear, Inc. (D. Del.).  Served as lead counsel for Netgear against infringement claims of patent directed to wireless multimedia systems.  Identified prior art that was used to secure a very favorable settlement.
  • Be Labs, Inc. v. NetComm Wireless, Inc. (D. Del.).  Served as lead counsel for NetComm against infringement claims of patent directed to wireless multimedia systems.  Identified prior art that was used to secure a very favorable settlement.
  • Coding Technologies, LLC v. Digi International Inc. (D. Del.).  Served as lead counsel for Digi International against infringement claims of patent directed to QR codes.  Identified prior art that was used to secure a very favorable settlement.
  • Venadium LLC v. Digi International Inc. (D. Del.).  Served as lead counsel for Digi International against infringement claims of patent directed to protected shareware.  Identified prior art that was used to secure a very favorable settlement.
  • Global Interactive Media, Inc. v. Mediacom Communications Corp. (S.D.N.Y.).  Served as lead counsel for Mediacom against infringement claims of patent directed to access broadcast information.  Identified prior art that was used to secure a very favorable settlement.
  • SPH America, LLC v. AT&T Mobility LLC (S.D. CA).  Served as lead counsel for AT&T against infringement claims of 10 patents directed to wireless communication. 

  • DSS Technology Management, Inc. v. AT&T Inc. (E. D. Tx.).  Served as lead counsel for AT&T against infringement claims of patent directed to methods of chip manufacture.  Identified prior art that was used to secure a very favorable settlement.
  • Weatherproof Wireless, LLC v. Digi International Inc. (D. Del.). Served as lead counsel for Digi against infringement claim of patent directed to wireless routers.  Identified prior art that was used to secure a very favorable settlement.
  • Uniloc USA, Inc. v. Avaya Inc.; Uniloc USA, Inc. v. ShoreTel, Inc. (E.D. TX). Served as lead counsel for Avaya and ShoreTel against infringement claim of patents directed to teleconferencing and voice messaging. Identified prior art that was used to secure very favorable settlements.
  • Odyssey Wireless, Inc. v. Motorola Mobility LLC (S.D. CA). Served as lead counsel for Motorola Mobility against infringement claim of patents directed to 4G LTE connectivity. Identified prior art that was used to secure a very favorable settlement.
  • JSDQ Mesh Technologies LLC v. Aruba Networks Inc. (D. Del.). Served as lead counsel for Aruba Networks against infringement claim of patents directed to wireless mesh technology. Identified prior art and formulated compelling claim construction positions that precipitated settlement shortly after Markman Hearing on very favorable terms.
  • Nonend Inventions, N.V. v. AT&T Mobility, LLC (E.D. TX). Served as lead counsel for AT&T against infringement claim of patents directed to streaming content. Identified prior art that was used to secure a very favorable settlement.
  • Alcatel-Lucent USA Inc. v. Fortinet, Inc. (D. Del.). Served as lead counsel for Alcatel-Lucent in a 24-patent infringement litigation involving patents directed to network security. Identified key prior art and formulated compelling procedural positions that precipitated settlement on very favorable terms.
  • 911 Notify v. Avaya Inc. (D. Del.). Served as lead counsel for Avaya against infringement claim of patents directed emergency notification. Identified prior art used to secure a very favorable settlement.
  • Sprogis v. JVL Ventures LLC (D. Del.). Served as lead counsel for JVL Ventures (joint venture of AT&T, Verizon and T-Mobile) against infringement claim of patent directed to award/loyalty programs. Successfully dismissed the complaint within six months of filing.
  • e.Digital Corp. v. Lenovo (US), Inc. (S.D. CA). Served as lead counsel for Lenovo against infringement claim of patents directed to flash memory. Formulated novel non-infringement defense that precipitated a very quick settlement on excellent terms.
  • Network Congestion Solutions LLC v. Mediacom Communications Corp. (D. Del.). Served as lead counsel for Mediacom against infringement claims of patents directed to network congestion control. Identified prior art used to secure settlement on excellent terms.
  • 2-Way Computing, Inc. v. Avaya Inc. (D. Nevada). Served as lead counsel for Avaya against infringement claim of patents directed to audio communication over a network. Identified prior art that was used to secure settlement on excellent terms.
  • Penovia LLC v. Zebra Technologies Corp. (E.D. TX). Served as lead counsel for Zebra against infringement claim of patents directed to office machine monitoring. Identified prior art that was used to secure settlement on excellent terms.
  • Boston Options Exchange Group, LLC v. International Securities Exchange, LLC, et al. (S.D. N.Y.). Served as lead counsel for ISE against infringement claim of patent directed to price improvement for electronic financial trades. Identified prior art that was used to secure a favorable settlement.
  • TecSec Inc. v. IBM Corp., et al. (E.D. Va.). Represented Cisco Systems, Inc. in an 11 patent case involving encryption and hardware technology. The case is pending appeal to the Federal Circuit.
  • CyberFone Systems, LLC v. Cellco Partnership, et al. (D. Del.). Served as lead counsel for Avaya and ShoreTel against infringement claims of patents directed to data transaction terminals. Identified prior art that was used to secure favorable settlements.
  • Network-1 Security Solutions, Inc. v. Alcatel-Lucent USA, Inc., et al. (E.D. TX). Served as lead counsel for defendant Motorola Solutions against infringement claims of a patent directed to Voice over IP (VoIP). Secured favorable settlement.
  • Prestige Pet Products, Inc. v. Pingyang Huaxing Leather and Plastic Co., Ltd. (E.D. Michigan). Served as lead counsel for defendant Spectrum Brands against infringement claim of a patent for a method of processing porkhide dog chews. Secured dismissal of the complaint under Rule 12(b)(6) for failure to state a claim under Twombly and Iqbal.
  • PowerOasis, Inc. et al. v. T-Mobile USA, Inc. (D. N.H.). Represented T-Mobile in patent infringement case alleging infringement of a patent covering vending machines for the provision of telecommunications services. Obtained summary judgment of invalidity that was affirmed by the Federal Circuit in an opinion of first impression regarding burden of proof relating to claim of priority.
  • PowerOasis, Inc. et al. v. Wayport, Inc. (D. Mass.). Represented Wayport in a patent infringement case alleging infringement of patent covering vending machines for the provision of telecommunications services. Obtained summary judgment of non-infringement.
  • GellyFish Technology of Texas LLC v. Alltel Corp., et al. (E.D. TX). Served as lead counsel for defendant T-Mobile against infringement claim of patent directed to keyboard configurations. Identified prior art that was used to promptly secure dismissal of case.
  • Ogma, LLC litigation (E.D. TX). Served as lead counsel for defendant T-Mobile against infringement claims of patent directed to sound-effect features in mobile devices. Case settled on favorable terms.
  • Hopewell Culture & Design, LLC v. Archos SA, et al. (E.D. TX). Served as lead counsel for T-Mobile against infringement claims of patent directed to point-and-click technology. Identified prior art that was used to secure a favorable settlement.
  • IpLearn, LLC v. WBT Systems Ltd., et al. (D. Del.). Served as lead counsel for Pearson Education against infringement claims of patents directed to online testing. Case is still pending.
  • Walker Digital, LLC v. CompassLearning et al. (D. Del.). Served as lead counsel for Pearson Education against infringement claims of patents directed to computer-based educational learning. Identified prior art that was used to secure favorable settlement.
  • Walker Digital, LLC v. Cryptic Studios, et al. (D. Del.). Served as lead counsel for Pearson Education against infringement claim of a patent directed to online gaming. Identified prior art that was used to secure favorable settlement.
  • Monec Holding AG v. Motorola Mobility, Inc. (D. Del.). Served as lead counsel for Motorola Mobility against infringement claim of patent directed to electronic devices capable of displaying electronic books. Secured order dismissing indirect and willful infringement claims. Case is still pending.
  • PixFusion LLC v. Oddcast, Inc., et al. (E.D. TX). Served as lead counsel for plaintiff PixFusion in patent infringement action asserting patent directed to personalized multi-media applications. Secured favorable settlements.
  • DataTreasury Corp. v. Wells Fargo & Co., et al. (E.D. TX). Represented defendants HSBC Bank and Wachovia against patent infringement claims of patents directed to data encryption. Secured favorable settlements shortly before trial.
  • Magnetar Technologies Corp., et al. v. Six Flags Theme Park Inc., et al. (D. Del.). Represented defendants Six Flags and Universal Studios against infringement claims of patent directed to magnetic brakes. Secured favorable settlement after obtaining favorable claim constructions.
  • Meridian Enterprises Corp. v. HSBC Bank USA (E.D. MO). Served as lead counsel for HSBC Bank against infringement claims of patent directed to prepaid credit cards. Identified prior art that was used to secure favorable settlement.
  • Compression Labs, Inc. v. Creo, Inc. (N.D. Cal.). Represented Creo in a multi-district patent infringement litigation relating to video compression technology. Case settled on favorable terms.
  • Lilly v. Teva Pharmaceuticals (D. Ind.). Represented Lilly in a patent infringement suit involving the Company’s highly successful product, SARAFEM®, which is used to treat PMDD, a severe form of PMS.
  • Novartis v. Abbott Labs (D. Del). Represented Novartis on a patent infringement matter involving the pharmaceutical composition cyclosporine, which is used to prevent organ rejection in transplant patients. Secured jury verdict of non-infringement.
  • Yamanouchi & Merck v. Marsam & Schein (S.D. N.Y.). Represented Yamanouchi and Merck in a declaratory judgment action relating to a patent directed to formulation of gastric acid secretion inhibitors used to treat heartburn and ulcers. Secured JMOL that patent is invalid and recouped attorneys fees, which were upheld by the Federal Circuit.
  • Bristol-Myers Squibb Co. v. Rhone Poulenc Rorer, Inc., et al. (S.D. N.Y.). Represented BMS in a case relating to the semi-synthetic process technology for making a popular cancer drug. Secured award of $32 million in attorneys fees and disbursements based on finding that RPR committed fraud on the US Patent Office.
  • AstraZeneca v. Mutual Pharmaceutical Co., Inc. (E.D. PA). Represented AstraZeneca in an ANDA case involving formulation to treat high blood pressure. Secured finding that AstraZeneca’s patent was not invalid and that Mutual’s patent was not infringed.

Education

Seton Hall University Law School, JD

Hofstra University, MBA

Columbia University, BS, BA

Admissions

  • New York
  • Connecticut

Court

  • US Court of Appeals for the Federal Circuit
  • US District Court for the Southern District of New York
  • US District Court for the Eastern District of New York
  • US Patent and Trademark Office