Sean S. Wooden
Partner
Sean’s practice focuses on advising clients on their intellectual property needs (including patents, copyrights, trademarks and trade secrets) and other areas of law related to technology. He advises on developing, managing and exploiting IP portfolios. Sean handles numerous technology and IP licensing transactions and a wide variety of other types of agreements. Sean helps clients pursue infringers through litigation and licensing. His litigation experience includes matters in federal district courts, the Trademark Trial and Appeal Board and the U.S. International Trade Commission. Sean’s practice involves the procurement of intellectual property rights such as patents, trademarks and trade secrets, and the rendering of opinions and advice regarding patentability, infringement and validity issues.
Sean advises clients on various export matters, including obtaining export licenses, registration, licensing and compliance with and under the US Commerce Department Export Administration Regulations ("EAR"), International Traffic in Arms Regulations ("ITAR") and the Bureau of Industry and Security ("BIS") requirements. He also advises clients on compliance with Office of Foreign Assets Control ("OFAC") regulations. He regularly reviews client products and services to determine whether such products and services are subject to the EAR or ITAR or BIS requirements and advises clients in dealing with the BIS in export licensing matters. Sean also has experience with export regulations of other US government agencies, including the Department of Defense and Department of Energy.
Sean’s technical areas of expertise include:
- Software
- Alternative and renewable energy
- Semiconductors and other circuitry
- Telecommunications
- Digital signal processing
- Network technology
- Mechanical devices and systems
Representative Experience
- B-50, LLC v. XFormity, Inc., Civil Action No. 3:04-CV-0542-B. Second chair for the alleged infringer in a patent infringement case involving a point of sale reporting system using the Internet. (2006)
- SecureInfo Corporation v. Telos Corporation, et al., Civil Action No. 1:05CV505 (GBL). The case involved two patent counterclaims filed against SecureInfo involving web-based certification and accreditation systems. (2005)
- The SCO Group, Inc. v. International Business Machines Corporation, Civil No. 2:03CV-0294 DAK (D. Utah). The case involved three patent counterclaims filed by IBM and copyright infringement and contract claims against IBM arising out of IBM's source code contributions to LINUX. (2004)
- Ion Beam Applications S A, et al. v. The Titan Corporation, et al., Case No. 00CV 1994J (BEN) (C.D. Calif.). The case involved a patent infringement claim for irradiation system patent.
Publications
- Post-Grant Review Aspect of New Patent Law IP and Technology Developments - January 2012 (January 2012)
- Apple's Expanding App Reach IP and Technology Developments - April 2011 (April 19, 2011)
- Patent Litigation and Dispute Resolution: Leading Lawyers on Understanding Key Components of a Case, Evaluating Settlement Opportunities and Preparing for Trial (Inside the Minds), “Navigating the Complex World of Patent Law: Business, Legal and Academic Challenges,” Frederick S. Frei and Sean S. Wooden, Thomson/Aspatore 2007.
Events
- Lecturer, Masters of Advanced Studies in Intellectual Property, ETH Zurich, Module 231, Business Plan Module, May 13-16, 2008, and Module 220, US IP Law, May 22, 2008
- Lecturer and Moderator, Nation Council of Entrepreneurial Tech Transfer, Lecture 2: Copyright and Trademarks, April 24, 2008
- Panelist, WIREC 2008 Official Side Event, hosted by Andrews Kurth LLP and TEDCO, “Legal Considerations and Strategies for Cleantech Start-ups,” March 6, 2008
- Panelist, Clean Energy Venture Summit, “Legal Considerations and Strategies for Cleantech Start-ups,” May 14, 2007
