Overview

Tom Halkowski focuses his practice on a variety of cases, including suits concerning patent infringement, trade secret misappropriation, and qui tam claims.

Several of these matters he has litigated through jury trial and have involved a wide range of technologies, including medical devices, software, semiconductor fabrication tools, and chemical composition of leading-edge golf balls. He has also served on the faculty for numerous Continuing Legal Education programs, as well as internal training programs on discovery, trial advocacy, and evidentiary issues.

Prior to joining Fish & Richardson in 2000, he was a senior trial attorney for the environment and natural resources division of the U.S. Department of Justice, where he also litigated a number of matters through trial. His duties included supervising trial attorneys; litigating a variety of cases concerning alleged physical or regulatory intrusions upon property; and serving as lead counsel for the U.S. in numerous matters requiring consultation with engineers and other experts regarding commercial development of wetland properties, underground mining for valuable minerals, and strip-mining for coal.

His other legal experience includes two years as a judicial clerk to Chief Judge Helen W. Nies of the U.S. Court of Appeals for the Federal Circuit (1990-1992) and as a judicial clerk to the Honorable Roger B. Andewel of the U.S. Court of Federal Claims (1989-1990).

Experience

ADE Corporation v. KLA-Tencor Corporation – 2004 trial on KLA-Tencor’s claims of patent infringement; successfully defended ADE against KLA-Tencor’s bid for over $8 million in damages, and the effort to enjoin ADE from selling its laser inspection tools for use on bare silicon wafers.

Applied Materials, Inc. adv. SEZ Holding AG, et al. (semiconductor manufacturing equipment) Defended Applied Materials, Inc. in a patent case brought by SEZ Holding AG in the District of Delaware, seeking correction of inventorship of patents relating to semiconductor fabrication equipment. Case settled on eve of trial.

Broadwater Farms Joint Venture v. United States – 1995 trial regarding denial of permission under Clean Water Act to construct housing development in wetland area; judgment in favor of U.S.

Cypress Semiconductor Corp. v./adv. Integrated Circuit Systems, Inc. (integrated circuits for use in timing applications) Represented Cypress Semiconductor in asserting three patents against Integrated Circuit Systems in the District of Delaware. The patents related to timing products of various kinds (clock generators with power-down functionality and dual-function pins, and programmable clocks). Cases settled on eve of an ITC hearing scheduled in a related matter.

Gemstar Development Corporation v. Scientific-Atlanta, Pioneer Electronics, EchoStar(interactive program guides, set-top boxes) 2001 ITC Hearing. Called in on eve of hearing in the U.S. International Trade Commission to assist in litigating multi-patent case on core television technologies, including IPGs and set-top box electronics. Adverse U.S. International Trade Commission determination reversed on appeal to Federal Circuit. Case subsequently settled.

Honeywell v. Sandel Avionics & Universal Avionics – 2003 summary adjudication that the asserted patent claims were invalid and/or not infringed by Sandel’s Terrain Awareness and Warning System (“TAWS”).

Howard W. Heck & Assc. v. United States – 1998 appeal to Federal Circuit; judgment in favor of U.S. affirming trial court’s dismissal of takings claim for lack of ripeness.

Intuitive Surgical, Inc. and IBM v. Computer Motion, Inc. (robotic surgical systems) 2002 Jury Trial. Brought suit for Intuitive Surgical, Inc. against Computer Motion, Inc. in Delaware Federal District Court on a patent relating to the use of voice control in a surgical robotic system. Secured verdict finding patent not invalid, infringed, and awarding Intuitive approximately $4.5 million in damages.

Kelly et al. v. United States – 1998 trial regarding denial of authority to conduct coal strip-mining operations; judgment in favor of U.S.

Kyphon, Inc. adv. Disc-O-Tech Medical Technologies, et al. (surgical devices and procedure for treating vertebral compression fractures) 2005 Jury Trial. Asserted six Kyphon patents, first in the ITC and then in the District of Delaware, relating to pioneering “kyphoplasty” procedure for repairing vertebral compression fractures caused, for example, by osteoporosis. Received summary judgment of infringement on several patents, and a jury verdict of infringement on another. Case then settled.

Kyphon, Inc. and Harvinder S. Sandhu v. Medtronic Sofamor Danek, et al. (surgical devices and procedure for treating vertebral compression fractures) Asserted Kyphon, Inc.’s portfolio of patents re kyphoplasty against Medtronic Sofamor Danek in the Western District of Tennessee. Also prosecuted related claims of trade secret misappropriation and breach of contract. Case ultimately settled by Medtronic acquiring Kyphon.

PolyMASC Pharma. v. Alza Corp. (chemical composition allowing for targeted delivery of drugs) represented plaintiff asserting patent on certain PEGylated liposomes which allow for delivery of drugs, including those used for treating tumors. Dispute resolved by settlement.

Sandel Avionics, Inc., et al adv. Honeywell International, Inc. (avionics software) 2008 and 2004 Jury Trials. Successfully defended Sandel Avionics, Inc. in a five patent suit brought by Honeywell International, Inc. and a follow-on suit concerning a sixth patent. Both trials held in the District of Delaware, related to aircraft terrain awareness and warning systems (TAWS), and resulted in non-infringement verdicts in Sandel’s favor. Dispute was ultimately resolved by jury trial verdict of noninfringement in favor of Sandel in December 2008.

SRI International, Inc. v. Internet Security Systems, Inc. and Symantec Corp. (Network Surveillance and intrusion detection) 2009 Jury Trial. On behalf of SRI International, Inc. secured verdict of infringement against ISS and Symantec in the United States District Court, District of Delaware. The verdict also upheld validity of the asserted patents all of which related to network surveillance intrusion detection systems for enterprise networks.

Steven B. Golden Associates, Inc. d/b/a ArtSkills v Royal Consumer Products, LLC – Successfully defended against demand for a temporary restraining order regarding alleged use of trade dress on consumer poster board accessory products. Case ultimately resolved favorably via settlement.

Walcek, et al v. United States – 2000 trial regarding denial of permission under Clean Water Act to construct housing development in wetland area; judgment in favor of U.S.