Biography
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
- Received the 2015 IP Legends Award, which recognizes those who have made significant contributions to intellectual property in business, law, and education and which is jointly presented by Georgia State University, Georgia Institute of Technology, the IP Section of the State Bar of Georgia and the Atlanta Bar Association
- 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)
- Honored as a “Top Patent Professional” in Intellectual Asset Management (IAM) Patent, 1000 – the World’s Leading Patent Professionals
- 2020 AV Preeminent rating in Martindale Hubbell
- Selected by his peers as one of the Best Intellectual Property Lawyers in Atlanta, The Best Lawyers in America, annually, 1992-2021
- Recognized in The Best Lawyers in America in the practice areas of Arbitration, Litigation - Intellectual Property Law, 1991-2021
- Named a Georgia “Super Lawyer,” Atlanta Magazine, annually from 2004-2017
- “Highly Recommended Individual,” Intellectual Property, Which Lawyer, Practical Law Company (PLC), annually since 2008
- Named one of the Best of U.S. Intellectual Property Attorneys in Georgia in the Best of U.S. in 2007
- Named an "IP Star" by Managing Intellectual Property Magazine, April 2013
- Named one of Georgia Trend magazine’s “Legal Elite,” from 2003-2016
- Fellow, Lawyers Foundation, State Bar of Georgia
- Emeritus, 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
- U.S. Intellectual Property Law, Renmin University of China Law School (Beijing), April 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, 2006-2019
- School of Biomedical Engineering, University of Alabama at Birmingham, 2005-2016
- 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
- J.D., Emory University School of Law, 1970
- B.S. in Chemistry, Georgia Institute of Technology, 1967
Counsel Comments
- “He has a business pragmatism and has a real common sense approach to his legal analysis.”
-Chambers & Partners USA America’s Leading Business Leaders (2017 Edition)
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