Bio

Walter G. Hanchuk is a partner at Hanchuk Kheit LLP with expertise in Innovation, Design, Patent Portfolio Development & Asset Creation, Transactions, Litigation and Strategy. He founded the firm in 2014 and is resident in the New York office.

Mr. Hanchuk has over 20 years experience in all fields of Intellectual Property (IP), including patent, trademark and copyright litigation at both the trial and appellate levels. He has extensive licensing and transactional experience, and has published & practiced extensively in various industries involving the patentability of computer software and financial service technologies. He is the attorney-of-record in a number of pioneering US software patent matters.

Prior to founding Hanchuk Kheit LLP, he was a partner in the IP practice of Cooley LLP and prior to that he was a partner at Chadbourne & Parke, where he served as the Chair of the IP Group. He also served as a partner in IP boutique Morgan & Finnegan. Early in his professional career, he served as a U.S. Patent Examiner at the U.S. Patent & Trademark Office.

Since 2006, Mr. Hanchuk has been named regularly to Super Lawyers in the specialty of Intellectual Property.

Representative litigation matters include:

  • Represented a consortium of the Regulatory Data Corporation, The American Express Company, Rockwell Automation, and others in the filing of an amicus brief to the U.S. Supreme Court regarding the patentability of business processes and financial systems (In re Bilski).
  • Represented Microsemi & PowerDsine in the enforcement of its copyright and trade secret rights regarding power-over-ethernet software protocols against Texas Instruments.
  • Represented PowerDsine in the enforcement and licensing of its patents directed to fundamental power-over-ethernet technology (IEEE 802.03af) against various entities. These patents were ultimately licensed under RAND licensing terms.
  • Represented Microsemi & PowerDsine in an action filed against AMI Semiconductor for breach of a nondisclosure agreement covering semiconductor technology.
  • Represented PowerDsine against two former employees for breach of a confidentiality and non-competition agreement and against their new employer, Broadcom Corporation, for tortious interference with contractual relationships.
  • Represented The American Express Company in the filing of an amicus brief to the U.S. Supreme Court regarding the patentability of business processes and financial systems. (Metabolite)
  • Represented Fujitsu in a patent infringement suit brought by Dynacore involving the Firewire/IEEE 1394 standard.
  • Represented priceline.com in the assertion of their pioneering patent rights on its business processes and computer architecture against Microsoft and expedia.com.
  • Represented C.R. Bard in the enforcement of its patent rights on biomedical devices against several entities, including M3 Systems.
  • Represented Varilite in the enforcement of its patents on theater lighting and control equipment against High End Systems.
  • Represented the Research Foundation of the State University of New York involving the ownership of IP rights with ID Biomedical Corp.
  • Represented the Nature Company in a copyright & trademark suit involving author James Lipton.

Publications
"New U.S. Patent Rules Face Court Challenges; The Result Is The State Of Patent Practice Is In Flux," Metropolitan Corporate Counsel, February 2008
"Court Order Temporarily Stops New U.S. Patent Rules," November 2, 2007
"New U.S. Patent Rules Notice," October 25, 2007
"Supreme Court Decision Allows a Patent Licensee to Dispute the Patent and Seek a DJ without First Breaching the Patent License," Client Alert, January 16, 2007
"Forgot to Scrub the IP? Forget the Deal," (co-author), Financier Worldwide, September 2005
"Reviewing Document Retention Policies: In Managing Paper Pile-up, Businesses Must Also Keep Material Needed to Preserve IP Rights," New York Law Journal, October 21, 2002
"The Effect of the First-Filed Rule on Motions to Transfer," E-Commerce Law Journal, September 2002
"How to Read a Patent," Ideas to Assets, John Wiley & Sons, 2002
"The Single Entity Requirement for Patent Infringement," E-Commerce Law Journal, September 2001
"AIPA Creates Potent New Patent Right – Owners Collecting Damages Based on Published US Patent Applications," New York Law Journal, July 9, 2001
"Click-Through Agreements: Securing Their Enforceability," E-Commerce Law Journal, November 2000
"Are you Secure? Beware Provisional Patent Applications," New York Law Journal, June 19, 2000
"Assessing the Real Impact of State Street," New York Law Journal, April 24, 2000

Speaking Engagements
"The Changing International Face of Intellectual Property Law," UABA Annual Meeting, Washington, DC, September 21, 2007
ALI-ABA Conference on Financial Services Patents, New York, NY, September 18, 2007
"Accelerated Examination Before the U.S. Patent & Trademark Office," Intellectual Property Owners Association Annual Meeting, New York, NY, September 9-11, 2007
"What is Grokster and What are the Implications in the Short Term?," Copyright Post-Grokster, London, United Kingdom, November 22, 2005
"The Current Landscape of the Validity and Enforceability of Click-Wrap and Shrink-Wrap Agreements; Non-Disclosure Agreements and Other Safeguards for Licensed Intellectual Property," ACI Conference on Software License Agreements, New York, NY, June 2004
"What Hath State Street Wrought," Licensing Executive's Society (LES) Meeting, New York, NY, May 2004
"Non-Disclosure Agreements and Other Safeguards for Licensed Intellectual Property," ACI Conference on Software License Agreements, San Francisco, CA, October 2, 2003
"Cross Border Management Issues for Intellectual Property Assets," Infonex Conference, Toronto, Canada, January 2003
"Cross Border Trade Secret Issues," Infonex Conference, Toronto, Canada, January 2002
"The Impact of the Festo Decision on Procuring Cyber Patents," Dayton Cyberlaw Conference, June 8, 2001
"Patenting Computer Software and Business Methods in the United States; Copyright Issues in Cyberspace," AIPLA International Education Committee presentations to the Russian Patent Office, June 2001
"Patenting Business Method Inventions," Association of University Technology Managers (AUTM) Annual Convention, March 2, 2001
"The New IP World of Business Method and Ecommerce Patents," DuPont's 2000 CLE Intellectual Property Law Seminar, Wilmington, DE, October 31, 2000
"Patenting Computer Software and Business Methods in the United States; Copyright Issues in Cyberspace," AIPLA International Education Committee presentation to the Czech Patent Office, October 25-26, 2000
"Patenting E-commerce and Software Inventions," Partnering with the Multinational Corporation: Marketing Your Technology and Intellectual Property Implications, Long Island High Technology Incubator, April 7, 2000
Activities and Affiliations

Education
George Washington University Law School, JD cum laude, 1992
Cooper Union for the Advancement of Science and Art, BE, 1989

Bar Admissions
District of Columbia
New Jersey
New York
Registered to practice before the United States Patent & Trademark Office (USPTO)