Walter M. Egbert, III

Partner, Registered Patent Attorney - New York

Walter Egbert
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Contact Information

Walter Egbert is a partner in Foley Hoag's Intellectual Property Department. Walter works with clients in a wide range of technologies, including the cutting-edge integration of health care and medical devices, software, electronics and telecommunications, such as wearable technologies and sensors, implantable prostheses, data integration and processing, optical computing, and diagnostics. 

Walter provides strategic advice to large corporations, academic institutions and start-up companies in the development of their patent portfolios and freedom to operate.  His practice includes patent prosecution and patent post grant proceedings, litigation, infringement and invalidity opinions, client counseling such as design-around advice and competitive monitoring and analysis, due diligence studies, licensing, and patent prosecution.   His patent post-grant experience includes over 25 Inter Partes and Ex Parte reexamination proceedings and appeals before the Patent Trial and Appeals Board. He has prepared and prosecuted hundreds of patent applications for high profile pipeline and commercial products.

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Education:

  • Fordham University School of Law, J.D., 1994
  • Princeton University, B.S.E. in Mechanical and Aerospace Engineering, 1989

Representative Experience

Selected Patent Litigations

  • Represented defendant in patent infringement lawsuit involving 18 patents in automotive technology (D. Delaware)
  • Represented plaintiff in patent infringement lawsuit involving 11 patents in semiconductor, 802.11 wireless transmission, laser, and data storage technologies. Supervised team of eight associates. (E.D. Texas)
  • Represented defendant in multi-defendant patent infringement lawsuit involving caller ID, call waiting technology. (E.D. Texas)
  • Represented defendant in patent infringement lawsuit involving image technology for CAT scan equipment. (S.D. Texas)
  • Represented defendant in patent infringement lawsuit involving safety mechanism for pharmaceutical syringes. (S.D. Cal.)
  • Represented plaintiff in patent infringement lawsuit involving four patents in plasma-enhanced chemical vapor deposition technology. (E.D.N.Y.)

Selected Transactional Matters

  • Negotiated intellectual property provisions of asset purchase agreement in connection with Emerson Electric Company’s $725 million asset acquisition of Ericsson Energy Systems.
  • Negotiated intellectual property provisions of stock purchase agreement in connection with $185 million acquisition of a controlling interest in streaming interactive television company.
  • Drafted intellectual property provisions of share purchase agreement in connection with $145 million acquisition of a majority interest in internet gaming technology.

Selected Patent Counseling & Prosecution Matters

  • Freedom-to-operate product clearance investigations for various pipeline medical device products for Fortune 100 healthcare company.
  • Represented Clients in over 25 Inter Partes and Ex Parte reexamination proceedings including representation before the Patent Trials and Appeals Board.
  • "The Federal Circuit Considers the Patent Litigation Venue Standard," NYIPLA newsletter April/May 2016 
  • "Good, Fast Certainty: The Case for Patent Office Litigation," New York Law Journal, September 2015
  • “The Peer Review Pilot Program at the United States Patent & Trademark Office,” Patent Strategy & Management, September 2009
  • “Use of License to Avoid Application of the First Sale Doctrine: L.G. Electronics v. Bizcom, 79 U.S.P.Q.2d 1443 (Fed. Cir. 2006),” Joint Patent Practice Continuing Legal Education, Inc., New York, May 2007
  • “Claim Construction after Phillips v. AWH,” Novo Nordisk Patent Attorney Summit, 2006

Foley Hoag Alerts & Updates

Honors

  • Donald Jannsen Dike Award for Excellence in Undergraduate Research, Honorable Mention
  • Grumman Corporation, Science and Engineering Scholarship

Involvement

  • New York Intellectual Property Law Association (NYIPLA) Patent Law Committee
  • American Intellectual Property Law Association (AIPLA) Member
  • Licensing Executives Society (LES) Member
  • Guest Lecturer, Patent Law, Brooklyn Law School, 2005
  • Sigma Xi Scientific Research Society
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Bar Admissions

  • New York

Court Admissions

  • U.S. District Court for the Southern District of New York
  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the District of New Jersey
  • U.S. Patent Trademark Office (Agency)