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 medical imaging, including cardiac/tissue elastography, electromechanical wave imaging, fluorescent analyte excitation, nonlinear/quantum optics, such as metaphotonics and plasmonics, wearable technologies and sensors, robotics, implantable prostheses, data integration and processing, optical computing, and diagnostics

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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 Counseling & Prosecution Matters

  • Patent prosecution for medical imaging technologies for cardiac/tissue elastography, electromechanical wave imaging, fluorescent analyte excitation.
  • Patent prosecution for nonlinear/quatum optics, including metaphotonics and plasmonic modulators. 
  • 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.

Selected Patent Litigations

  • Represented defendant in patent infringement lawsuit involving image technology for CAT scan equipment. (S.D. Texas) 
  • 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 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.
  • "Patents for Wearable Technologies That Withstand Patentability Challenges," New York Law Journal, March 2017
  • "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

  • Princeton University, Keller Center for Entrepreneurship, 12th Annual Innovation Forum, Judge 
  • 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)