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.
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
- Sleep-Disordered Breathing Treatment Systems and Components Thereof – Represented BMC Medical Co., 3B Medical and 3B Products in a case involving devices used to treat sleep apnea. After review, the Commission overturned the ALJ’s initial determination and ruled in favor of BMC/3B, finding that the key patent in the case was invalid. BMC and 3B successfully designed around the remaining patents.
- Certain Products Having Laminated Packaging - Represented respondent in 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.
- Certain Hydroxyprogesterone Caproate and Products Containing Same - Represented proposed respondent in case involving alleged unlawful compounding of an orphan drug. As a result, in a rare instance, we were able to persuade the Commission not to institute a Section 337 investigation.
- Coenzyme Q10 Products and Methods of Making Same - Successfully represented respondents in patent case involving one of the leading dietary supplements in the United States. Following a trial, the ALJ ruled that there was no infringement and that the complainant failed to satisfy the technical prong of the domestic industry requirement. The decision was affirmed by the Commission and the complainant chose not to appeal.
- Computer Forensic Devices and Products Containing Same - Successfully represented a respondent in a patent case involving computer forensic devices used by law enforcement agencies as co-counsel. Following trial, 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.
- Incremental Dental Positioning Adjustment Appliances and Methods of Producing Same - Successfully represented respondent in an enforcement proceeding 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.
- Kinesiotherapy Devices and Components Thereof - Successfully 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.
- Certain Linear Actuators - Represented Chinese respondent in case involving linear actuators used in furniture. After two months of active litigation, the complainant voluntarily withdrew the complaint and the investigation was terminated.
- Acesulfame Potassium - Lead counsel for Chinese respondent in patent case relating to acesulfame potassium brought by Nutrinova, a Hoechst subsidiary; one patent found invalid and not infringed, the other not infringed; decision successfully defended through Commission and Federal Circuit review.
- Acetic Acid - Serving as lead counsel for the Sopo respondents in China in a patent case brought by Celanese alleging infringement of a process patent for manufacturing acetic acid; after two months of vigorous defense of the case by Sopo, the Complainant, Celanese, voluntarily withdrew its complaint and the investigation was terminated in favor of Sopo with no finding of violation.
- 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.
- Color Television Receivers and Color Display Monitors and DVD/CD Players and Recorders, Color Television Receivers 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.
- 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.
- Dielectric Miniature Microwave Filters and Multiplexers - Lead counsel for the respondent, ComDev, in patent-based investigation alleging infringement of patent on satellite filters.
- Digital Televisions and Components Thereof - Co-counsel for respondent in patent case involving digital TVs.
- Digital Models, Digital Data, and Treatment Plans for Use in Making Incremental Dental Positioning Adjustment Appliances, the Appliances Made Therefrom, and Methods of Making the Same - Co-counsel for respondent in patent case involving dental alignment devices and methods for making the devices.
- Digital Photo Frames and Image Display Devices and Components Thereof - Counsel for respondent in patent investigation involving digital photo frames.
- Doxorubicin - Lead counsel for government in patent case involving doxorubicin.
- Electric Power Tools, Battery Cartridges and Battery Chargers - Lead counsel for government in trade dress case involving electric power tools.
- Electronic Devices Having a Retractable USB Connector - Co-counsel in patent-based investigation involving USB connectors.
- Ground Fault Circuit Interrupters - Lead counsel for Chinese respondents in case brought by Leviton alleging infringement of patent relating to ground fault circuit interrupters; complainant withdrew complaint after its motions for summary determination were denied and draft motion for sanctions was served.
- Ground Fault Circuit Interrupters and Products Containing Same - Representing a manufacturer and several distributors in ITC investigation initiated by Pass & Seymour, alleging infringement of several patents on ground fault circuit interrupters.
- Ground Fault Circuit Interrupters and Products Containing Same - Co-lead counsel for two respondents in China in patent-based investigation brought by Leviton.
- Handbags, Luggage, Accessories and Packaging Thereof - Lead counsel for several respondents in trademark case.
- Hardware Logic Emulation Systems - Co-counsel for respondents in patent case involving emulation systems used to test and design semiconductor devices.
- 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.
- Memory Devices with Increased Capacitance - Counsel for complainant in patent case alleging infringement by latest generation semiconductor chips.
- 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.
- Multiple Mode Outdoor Grills and Parts Thereof - Lead counsel for two respondents in case involving dual mode outdoor grills; successfully obtained summary determination of non-infringement of redesigned grill.
- NAND Flash Memory Chips and Products Containing Same and NOR and NAND Flash Memory Devices and Products Containing Same - Co-counsel for Complainant SanDisk Corporation in two investigations involving flash memory devices.
- Network Communications Systems for Optical Networks and Components Thereof — Represented Ciena Corporation in case involving optical communications equipment.
- 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.
- Neodymium-Iron-Boron Magnets - Lead counsel for respondents in patent case involving high-strength magnets; also represented respondents in subsequent enforcement proceeding.
- Ninestar Technology v. ITC - Co-counsel for several companies in appeal of ITC civil penalty determination.
- 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, the complainant withdrew its complaint and the investigation was terminated with no finding of violation by Cyberlink.
- 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.
- Sinolegend v. ITC – Counsel for Chinese respondents in appeal of ITC trade secret determination.
- Sleep-Disordered Breathing Treatment Systems and Components Thereof – Lead counsel for respondents in ITC investigation involving devices used to treat sleep apnea.
- Sucralose, Sweeteners Containing Sucralose, and Related Intermediate Compounds Thereof - Represented six different respondents, including two manufacturers in China, in a case brought by Tate & Lyle alleging infringement of process patents relating to the production of sucralose and certain intermediate compounds; in September 2008, the ALI issued an initial determination finding no violation by our clients based on non-infringement and other grounds; on April 4, 2009, after a full review of the decision, the Commission upheld the ALJ’s findings there was no violation of Section 337, resulting in a complete victory for our clients.
- Toner Cartridges and Components Thereof - Lead counsel for several respondents in two separate investigations alleging patent infringement brought by Canon.
- Toner Cartridges and Components Thereof - Lead counsel for several respondents in patent-based investigation brought by Lexmark.
- 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.
- Wind and Solar-Powered Light Posts and Street Lamps - Lead counsel for three respondents in design patent case; investigation was terminated based on withdrawal of complaint.
- Wire Electrical Discharge Machining Apparatus - Lead counsel for government in patent-based case involving wire EDM machines used for high precision cutting and machining.
- 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.
- Zero Mercury Batteries - Counsel for one of the respondents in patent case brought by Eveready alleging infringement of patent on zero mercury alkaline batteries.
- 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.
Harvard Law School, JD, cum laude
Michigan State University, BA, philosophy and psychology
Inscriptions au Barreau
- 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