William H. Needle, Esq.

T: 404-588-0900
F: 404-588-0905

Locations

Available nationwide
Intellectual Property

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 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
    • Mediated patent infringement cases in such diverse areas as printed electronic wiring boards, road-working machines, long distance calling cards, mining equipment, and fishing line
    • Chaired an arbitration panel which issued a Markman Order on patent claims directed to the mining industry
    • Mediated breach of contracts, including software purchase agreements and patent and trademark licensing agreements
    • Chaired an arbitration panel which dealt with the validity and infringement of several patents relating to beverage containers, including the entry of a Markman Order
    • 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” 
    • Entered 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" 
    • 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
  • Copyright, Trademark, and Trade Secrets
    • Mediated copyright infringement cases involving product packaging and software programs
    • 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
    • Arbitrated a matter involving theft of trade secrets and claims under the Securities Act for breach of fiduciary duties
    • Mediated misappropriation of trade secrets matters, including those associated with an energy accounting and scheduling system
    • 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

Honors, Memberships, and Professional Activities

  • Chair, committee that drafted model trademark jury instructions for the 11th Circuit Court of Appeals (appointed by Judge William S. Duffey, Jr., N.D. Ga.), 2011–2012 
  • Member, committee that formulated Local Rules of Practice for Patent Cases before the U.S. District Court for the Northern District of Georgia, 2003–2004
  • Founding Board Member and Co-Chair, IP Law Section of the Atlanta Bar Association, 2007-2008
  • Received the highest ranking as a first-tier intellectual property attorney in Georgia in Chambers USA America's Leading Business Lawyers, annually from 2003-2015, where he has been referred to as being “widely recognized as a leader in dispute resolution. He has extensive experience across patent, trademark and copyright litigation, and is sought after as a mediator and arbitrator” (2011 Edition); and as “an expert in patent, trademark, copyright, and trade secret law, as well as an active teacher on the subject, with adjunct professorships at two universities.” (2010 Edition)
  • Selected by his peers as one of the Best intellectual Property Lawyers in Atlanta, The Best Lawyers in America, annually since 1992 
  • Named a Georgia “Super Lawyer,” Atlanta Magazine, annually since 2004
  • “Highly Recommended Individual,” Intellectual Property, Which Lawyer, Practical Law Company (PLC), annually since 2008
  • Best of U.S. Intellectual Property Attorneys in Georgia, annually since 2007
  • Named an "IP Star" by Managing Intellectual Property Magazine, April 2013
  • Who’s Who Legal, The International Who’s Who of Business Lawyers, Patent Law, annually from 2007-present
  • Named one of Georgia Trend magazine’s “Legal Elite,” annually since 2003
  • Member, Academy of Court-Appointed Masters
  • Fellow, Lawyers Foundation, State Bar of Georgia
  • Master, Atlanta IP Inn of Court, 2010 to present
  • Certified "Memphis in May" Barbecue Judge 

Teaching Positions (Adjunct Professor)

  • U.S. Intellectual Property Law, Beijing Normal University School of Law, May 16-28, 2016, April 17-29, 2017
  • Faculty, Kessler-Eidson Trial Technique Program, Emory University School of Law, 2016
  • Patent Law (1983-1997) and Licensing Law (1998-2009), Emory University School of Law
  • Patent Law, Georgia State University School of Law, 1991-2011
  • Patent Law, University of Georgia School of Law, 1985-1987
  • Intellectual Property Law, Charleston School of Law, 1996

Advisory Boards

  • Technological Innovation: Generating Economic Results (TI:GER), a collaborative program between Georgia Tech and Emory Law School, 2006-present
  • School of Biomedical Engineering, University of Alabama at Birmingham, 2005-present
  • College of Sciences, Georgia Institute of Technology, 2005-present
  • School of Chemistry and Biochemistry, Georgia Institute of Technology, 2008-present
  • Emory Law School's IP Society, 2010-present

Publications

Background and Education

  • J.D., Emory University School of Law, 1970
  • B.S. in Chemistry, Georgia Institute of Technology, 1967

Disclaimer

This page is for general information purposes.  JAMS makes no representations or warranties regarding its accuracy or completeness.  Interested persons should conduct their own research regarding information on this website before deciding to use JAMS, including investigation and research of JAMS neutrals. See More

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