Concentration

High tech patent litigation, licensing and procurement

Summary

Gary Butter focuses primarily on high-tech patent litigation. He also has significant experience in intellectual property due diligence and counseling, intellectual property licensing, patent preparation and prosecution and many other areas associated with a broad intellectual property practice.

Mr. Butter counsels both high-tech companies and individual inventors on all aspects of intellectual property protection, procurement, licensing, enforcement, risk analysis, and dispute resolution, and helps clients develop robust intellectual property protection programs. Although adept in many fields, his focus is primarily on legal matters that relate to computing, software, telecommunications, and mechanical technologies. In addition to his law practice, Mr. Butter is an assistant adjunct professor of patent law at Brooklyn Law School.

Prior to his legal career, Mr. Butter spent three years as an officer aboard the USS Billfish, a nuclear-powered attack submarine. This experience, along with eighteen months of formal technical naval training, gave him special insight into various engineering disciplines, including propulsion, power generation, atmosphere control, sonar, and weapons control systems. Recently, he retired as a captain in the United States Naval Reserve.

Representative Engagements

• Construction Specialties, Incorporated – lead counsel in patent infringement action; patent portfolio management and counseling; supervision of patent preparation and prosecution
• Tumi, Incorporated – lead counsel in multiple patent infringement actions; patent portfolio management and counseling; supervision of patent preparation and prosecution
• American Calcar, Inc. – lead counsel in patent infringement action
• Hitachi, Ltd. – intellectual property counseling
• Nippon Steel – supervision of patent preparation and prosecution
• Wave Systems – patent and trademark procurement and counseling, including the development and management of the company's intellectual property program and a worldwide patent portfolio directed to computer and content security systems, software, and methodologies
• Reliable Automatic Sprinkler Company – patent preparation and prosecution, litigation and counseling
• Cisco Systems – patent litigation relating to computer switching gear, and counseling on other patent matters
• MasterCard International – patent litigation and counseling relating to software technologies
• Liberty Media – due diligence matters

Publications, Speeches and Presentations

Publications

• "Using Trade Secret Law to Protect Computer Software," Rutgers Computer and Technology Law Journal, Vol. 17, No. 2, 1991 (Robert C. Scheinfeld, co-author)

Speeches and Presentations

• "Appeal of Wright Co. v. Curtiss-Herring et al. to the Court of Appeals for the Federal Circuit," Hon. William C. Conner Inn of Court, April 2009
• "Festo: The Last Implications for Practitioners," New York Intellectual Property Law Association, New York, November 2003
• "Avoiding a Charge of Inequitable Conduct With Respect to Declarations Executed by Non–English-Speaking Inventors," Joint Patent Seminar, New York, 2001
• "Guidelines for Patent Opinions of Counsel," Joint Patent Seminar, New York, April 2000