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William F. Long

Partner / Atlanta

William F. Long is  a Partner in the Intellectual Property Practice of Smith, Gambrell & Russell, LLP.

  • Full Bio

    Mr. Long’s practice focuses on patent, copyright, trade secret and other intellectual property and technology-related disputes. Mr. Long has tried and arbitrated numerous cases involving a wide range of technology and intellectual property issues. In patent disputes, Mr. Long has served as lead counsel in matters involving a wide range of intellectual property and technology issues, including, for example, patent and trade secret disputes involving computer software and hardware, pharmaceutical products (including Hatch-Waxman cases), chemicals, medical devices, industrial machines, and consumer products. Mr. Long is registered to practice before the US Patent and Trademark Office.

    Mr. Long also represents clients as lead counsel in complex commercial litigation not involving intellectual property issues, in both federal and state courts.

    Mr. Long also counsels clients on a variety of patent, copyright, trade secret and trademark issues, including intellectual property strategy, portfolio management, and licensing issues.

  • Representative Experience

    • Johnson Controls Tech. Co. v. Price Industries (N.D. Ga.): Represented industrial/commercial HVAC equipment and controls manufacturer against competitor’s claims of infringement involving five patents. Case settled following discovery and claim construction ruling.
    • Bombardier v. Killick Aerospace Ltd. (Texas and Kansas state courts): Represented a leading aftermarket parts and engine supplier for commercial jets. Claims involved alleged theft of trade secrets asserted by Bombardier, filed in both Texas and Kansas. Entire dispute settled after winning dismissal of Texas case.
    • Veritiv Operating Co. v. Berman (N.D. Ga.): Represented executive against claims filed by former employer based on alleged misappropriation of trade secret, breach of confidentiality agreement, computer fraud and abuse act, and related claims. Case settled following discovery and after winning major claims on summary judgment.
    • Weaver Leather v. Climbing Innovations (N.D. Ohio): Represented manufacturer of climbing gear accused of patent infringement by a competitor. Case settled following discovery and a non-infringement ruling by a Special Master.
    • Mollers North America v. Maschinenfabrik Mollers Gmbh (W.D. Mich.): Represented German manufacturer accused of trademark infringement. Following discovery, case was resolved with a co-existence agreement.
    • Maxim Integrated Products v. BBVA Compass Bank (W.D. Tex.): Represented bank against claims of patent infringement involving encrypted mobile financial transactions (e.g., money transfer, bill pay, remote deposit), mobile device hardware/software, and supporting server infrastructure. Case resolved favorably after our early summary judgment motion was fully briefed and ready for decision.
    • Covered business method review (CBM) for BBVA Compass Bank (PTAB): Served as lead counsel in 2 CBMs and backup counsel in 1 CBM challenging patents involving encrypted mobile financial transactions. Proceedings resolved favorably.
    • Mission Abstract Data v. Cumulus (D. Del.): Representing radio company against claims of patent infringement related to radio automation. Proceedings resolved favorably
    • Maxim Integrated Products v. U.S. Bank, Bank of the West, and Comerica Bank (E.D.Tex. and MDL in W.D.Pa): Represented banks against claims of patent infringement involving encrypted mobile financial transactions (e.g., money transfer, bill pay, remote deposit), mobile device hardware/software, and supporting server infrastructure. Cases resolved favorably at the end of fact discovery.
    • Global Sessions v. TD Bank and Comerica Bank (W.D. Tex.): Represented banks against claims of patent infringement related to web system management and web sessions. Cases resolved favorably after filing inter partes review petitions and Markman decision construing many terms in our clients’ favor.
    • Inter partes review (IPR) for TD Bank (PTAB): Lead counsel in 4 IPRs challenging patents relating to web system architecture and web sessions. Proceedings resolved favorably.
    • Reefedge v. ADTRAN (D. Del.): Represented a wireless network equipment manufacturer against infringement claims directed to seamless wireless roaming and related routers/network infrastructure. Case resolved favorably after Markman briefing.
    • General Protecht Group v. Leviton (D.N.M., N.D.Cal., ITC, and Fed. Cir.): represented a manufacturer of electric outlet protection devices (GFCIs) in a declaratory judgment action in New Mexico and in related actions before the International Trade Commission (ITC), in district court in California and before the Federal Circuit Court of Appeals. Obtained a preliminary injunction requiring patent owner to dismiss patent claims due to a prior settlement between patent owner and our client; the Federal Circuit affirmed, resulting in complete dismissal of all claims with prejudice.
    • APP vs. Hospira (D.N.J.): obtained dismissal of Hatch Waxman pharmaceutical patent infringement suit.
    • Automed Technologies, Inc. v. Knapp Logistik Automation, GmbH (N.D. Ga.): obtained summary judgment for Knapp, a logistics integration company in a patent infringement action involving automated prescription drug filling software and related equipment.
    • Equifax, Inc. v. Verid, Inc. (N.D. Ga.): represented Equifax in asserting patents directed to Internet/online authentication technology. The matter settled favorably after Markman briefing.
    • Depomed, Inc. v. Ivax Pharmaceuticals (N.D. Cal.): represented a major pharmaceutical company (Ivax) in a case relating to polymer controlled release delivery systems. The case settled favorably through mediation on the eve of trial.
    • Freebairn v. Finazzle Corporation (N.D. Ga.): won summary judgment in a copyright action involving television advertising.
    • Softcard v. Target & Visa (N.D.Ga.): represented Softcard in asserting its smart card technology patents in a case that settled favorably through mediation.
    • The Medicines Company vs. Hospira (D.Del.): defended generic pharmaceutical company in Hatch Waxman litigation involving bivalirudin.
    • CryoLife v. Tenaxis (N.D. Cal.): represented CryoLife, a surgical adhesive manufacturer, in a patent related action under 28 U.S.C. § 1492.
    • Pass & Seymour v. General Protecht Group (N.D.N.Y, ITC, and Fed. Cir.): represented a manufacturer of electric outlet protection devices (GFCIs). We took over as counsel after an administrative law judge (ALJ) at the International Trade Commission (ITC) entered an adverse infringement ruling against our client and obtained full reversal of all findings of patent infringement before the full ITC and Federal Circuit Court of Appeals, resulting in ultimate dismissal of all infringement claims in district court.
    • Coleman, Inc. v. Essential Gear (N.D. Ga.): enforced patents and trademarks related to camping equipment against a large chain of retail stores and related companies.
    • AstraZeneca vs. Impax Laboratories, et al. (S.D.N.Y.): defended pharmaceutical company in Hatch Waxman litigation involving omeprazole, through trial and appeal.
    • FHS Acquisition Company, LLC. v. EMS Technologies, Inc. (D. Mass.): represented FHS, a manufacturer of computer related equipment in a patent infringement action. We obtained a seven-figure settlement prior to trial.
    • Lo-Q v. QLess (S.D. Fla. and C.D. Cal.): Represented Lo-Q in action to enforce patents covering wireless technology for automated reservations. Case resolved favorably.
    • Palmtop Productions, Inc. v. Lo-Q PLC and Six Flags (N.D. Ga.): represented Lo-Q, a developer of software and related wireless technology used by Six Flags amusement parks to eliminate the need for patrons to wait in line, in a patent infringement action.
    • Sanofi-Aventis v. Barr Laboratories (D.N.J.): defended pharmaceutical company in Hatch Waxman litigation involving oxaliplatin.
    • ActNow Media, Inc.: represented a consumer goods manufacturer against multiple suits of patent infringement. Case settled favorably.
    • The Homebingo Network, Inc. v. Cadillac Jack, Inc., (S.D. Ala.): represented a manufacturer and designer of casino electronic gaming equipment in a patent infringement action. Case settled favorably following related arbitration evidentiary hearing.
    • Ser Solutions, Inc. v. Noble Systems Corporation (S.D.N.Y.): represented Noble, a developer of call center software and related technology, in a patent infringement action.
    • TTS v. Winko-Matic, et al. (Texas state court): represented traffic equipment manufacturer in obtaining jury verdict for defendants in 5 week trial involving alleged theft of trade secrets and breach of non-competition covenants.
    • DirecTV cases: represented DirecTV in hundreds of user copyright piracy cases in the Northern and Middle Districts of Georgia.

  • Bar Admissions

    Georgia
    US Patent and Trademark Office
    Northern District of Georgia
    Middle District of Georgia
    Western District of Michigan
    Northern District of Ohio
    Eastern District of Texas

  • Education

    Undergraduate
    • Mississippi State University

    Law School
    • Emory University School of Law

    MBA
    • Mississippi State University

  • Memberships

    Intellectual Property, Technology and Trial Practice Sections, State Bar of Georgia

  • Recognitions


    Chambers USA: Leading Lawyers for Business, Intellectual Property - Band 4, Georgia (2010-2013, 2015-2018, 2020-2022)
    Chambers USA: Leading Lawyers for Business, Intellectual Property - Band 3, Georgia (2023)
    The Legal 500. Life Sciences (2016)
    The Best Lawyers in America®, Atlanta, Litigation – Intellectual Property; Litigation – Patent (2011-2023); Patent Law (2021-2023); Technology Law (2023)
    Georgia Super Lawyers (2008-2022)
    Intellectual Asset Management (IAM) magazine's Patent 1000, Georgia Intellectual Property Litigation and Transactions (2016-2017)
    Georgia Trend magazine - Legal Elite, Best Lawyers in Georgia, Intellectual Property (2012-2014, 2018)

  • Publications and Speaking Engagements


    Speaker, “Legal Issues Impacting the Industry,” GPhA/FDA Fall Technical Conference, October 3-5, 2011

    Speaker, “Legal Cost Prenuptials: Your Money or Theirs,” 22nd Annual North American Entertainment, Sports and Intellectual Property Law Conference, November 4-8, 2010

    Speaker, “Containing Fees Associated with Employing Outside Counsel in a Period of Economic Instability,” 7th Annual Patents and the Financial Services Conference, July 2010

    Moderator, “Expert Issues in IP Litigations,” 15th Annual Intellectual Property Law Institute, November 2009

    Speaker, “Intellectual Property Essentials for Engineers: Patents, Trademarks, Copyrights and Trade Secrets,” Legal Issues for Georgia Professional Engineers Seminar, March 27, 2008

    “Doctrine of Equivalents: Where We Now Stand,” Intellectual Asset Management, December/January 2007

    Speaker, “Getting the Data for a Defensible Damages Study Through Discovery and 30(b)(6) Depositions,” Calculating and Providing Patent Damages Workshop, October 8, 2004

    Speaker, “The Mobile Employee,” Leveraging Trade Secrets Workshop, June 30, 2003

  • SGR Publications

  • Press

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