William H. Needle, Esq. is a registered patent attorney with substantial expertise using ADR to resolve intellectual property disputes. In 2016, Mr. Needle retired as a partner from Ballard Spahr LLP, after exclusively practicing all aspects of Intellectual Property law for over 46 years. He also served as the first Chair of the firm’s Intellectual Property Department from 2008 to 2012.
Recognized as a “dean of the IP Bar of Atlanta,” by
Chambers & Partners, Mr. Needle has distinguished himself for his abilities in advising clients on patent prosecution as well as contentious matters. From 1970-1983, he was an associate and then partner at the first IP boutique firm in Atlanta (Newton, Hopkins & Ormsby). In 1983, he started Needle & Rosenberg, which became one of the largest IP boutiques in the Southeast, and later merged with Ballard Spahr LLP. Since 1995, Mr. Needle has been an alternative dispute resolution JAMS neutral panel member, mediating and arbitrating cases and serving as a Special Master dealing with a wide array of intellectual property cases, involving patents, copyrights, trademarks, and trade secrets.
Mr. Needle is a certified mediator for the District Court of South Carolina, is on the Panel of Arbitrators of the China International and Economic Trade Arbitration Commission (CIETAC) and is also an accredited mediator with the Shanghai Commercial Mediation Center. He served as a Special Assistant Attorney General for the State of Georgia for intellectual property law issues for more than 30 years.
Representative Matters
Patents
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Mediated patent infringement cases in such diverse areas as printed electronic wiring boards, tissue graft products, road-working machines, long distance calling cards, topical pharmaceutical compositions, mining equipment, and fishing line
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Chaired arbitration panels which issued Markman Orders on patent claims directed to the mining industry and beverage containers
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Mediated breach of contracts, including software purchase agreements and patent and trademark licensing agreements
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Appointed as a Special Master in several patent infringement cases, including one in which Mr. Needle’s recommendations on validity and infringement of the patents-in-suit were adopted by the Judge and affirmed by the Federal Circuit, which referred to the “thorough and exhaustive recommendations of the Special Master” Gerber Garment Technology, Inc. v. Lectra Systems, Inc., 11F. 3d 1872 (Fed. Cir. 1993)
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Submitted a Markman Order, which Senior Judge Charles A. Pannell, Jr. adopted as the Court's order in UCB, Inc. et al. v. Teva Pharmaceuticals USA, Inc. (N.D. Ga.), stating it was "well-founded, consistent with the evidence presented and supported by the law"
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Recent Special Master appointments regarding Markman Orders
- Acceleron, LLC v. Dell, Inc., 1:12-cv-04123-TCB (N.D.Ga.);
- Flip Face U.S.A., LLC et al. v. Alexandria Moulding, Inc. et al., 1:15-cv-00883-MHC (N.D.Ga.)
- Silt Saver, Inc. v. Hastings et al., 1:16-cv-01137-SCJ (N.D.Ga.); and
- POWERbahn, LLC v. Foundation Fitness, LLC et al., 1:17-cv-02965-AT (N.D.Ga.).
- Served as a neutral evaluator to render a decision as to whether one party’s proposals for a redesigned product infringed upon certain claims of a second party’s patents
- Currently serving on arbitration panel dealing with the validity and infringement of hydraulic fracturing patents
Copyright, Trademark, and Trade Secrets
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Mediated copyright infringement cases involving product packaging and software programs
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Mediated cases involving trademark infringement, deceptive trade practices, counterfeit goods, cybersquatting, and dilution, with such matters as a name dispute between two universities and trademark infringement involving dietary supplements
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Arbitrated a matter involving theft of trade secrets and claims under the Securities Act for breach of fiduciary duties
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Mediated misappropriation of trade secrets matters, including those associated with an energy accounting and scheduling system
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Served as lead counsel in copyright and trademark litigation for Cabbage Patch Kids® dolls
- Appointed Special Assistant Attorney General for the State of Georgia in infringement cases involving the Vidalia® onion trademark, as well as patent infringement actions involving diverse technologies
