Phong D. Nguyen

Partner

Washington, D.C.
T +1.202.861.1610
F +1.202.861.1783

Overview

Phong Nguyen closely collaborates with in-house counsel to develop robust strategies that best serve his clients' needs. He is proactive in managing patent portfolios to obtain varying scopes of protection and in strategically advising on the acquiring and divesting of patents. He prepares and prosecutes patent applications for clients in various technologies including computers, software (interfaces), cellular phones, wireless transmission, semiconductors, electronic diagnostic devices, oil tool equipment, medical devices (contact lenses with sensors) and mechanical devices, while litigating and participating in adversary proceedings related to their patents. He analyzes the markets and attends conventions in which his clients operate, and uses the knowledge he gains to develop valued-added portfolios and litigation strategies beneficial to business success. He renders opinions regarding infringement, freedom to operate and validity of patents. He also drafts and negotiates license agreements and conducts due diligence.

Select Experience

  • Defended ex parte reexamination for pharmaceutical compound client. Original patent claims were upheld.
  • Defended ex parte reexamination for diagnostic tool client. Original patent claims were upheld.
  • Participated in an ITC investigation regarding certain shirts with pucker-free seams. Case was dismissed by the petitioner during trial.
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Experience

  • Defended ex parte reexamination for pharmaceutical compound client. Original patent claims were upheld.
  • Defended ex parte reexamination for diagnostic tool client. Original patent claims were upheld.
  • Participated in an ITC investigation regarding certain shirts with pucker-free seams. Case was dismissed by the petitioner during trial.
  • Participated in a misappropriation of trade secrets relating to leak detector technology. Obtained monetary settlement for damages and for the forcing of a redesign of the leak detector.

Recognitions and Memberships

Memberships

  • National Asian Pacific American Bar Association: Co-Chair IP Committee
  • American Bar Association
    • ABA Presidential Appointment to the Cybersecurity Legal Task Force
    • Fellow for Torts, Trial and Insurance
    • ABA Presidential Appointment to the Commission on Racial and Ethnic Diversity
    • Standing Committee on Technology and Information Systems
    • Business Law Ambassador
    • Intellectual Property Section
  • National Vietnamese American Bar Association: Board Member
  • Vietnamese-American Bar Association of D.C.: Founding Board Member
  • AIPLA

Community

  • National Youth Leadership Forum Law Section: Speaker
  • D.C. Bar Pro Bono Program

Prior Positions

  • City of San Antonio: Assistant City Attorney

Admissions

  • U.S. Patent and Trademark Office, Registration No. 43,833
  • U.S. District Court, Northern District of Texas
  • U.S. District Court, Eastern District of Texas
  • Texas
  • District of Columbia

Education

  • J.D., St. Mary’s University School of Law, 1997
  • M.S., The University of Texas at San Antonio, 1994
  • B.A., The University of Texas at Austin, 1991