Hugh has more than 30 years of experience in patent litigation, prosecution and opinion matters. He has served as lead trial counsel in bench and jury trials as well as part of a larger trial team in dozens of litigated matters. Hugh has argued appeals before the Federal Circuit and participated in numerous proceedings in the Patent and Trademark Office, and he has prosecuted hundreds of patent applications and handled numerous transaction and opinion-related matters.
Prior to joining Shook, Hugh spent 20 years as an equity partner in the Intellectual Property Litigation Group at Sidley Austin LLP and 12 years as partner at two intellectual property boutique firms. He has handled matters in numerous technologies, including pharmaceuticals, medical devices, computer networks and software, automotive technology, chemical processes and complex electronics.
Hugh’s transactional work includes the preparation, drafting and negotiation of numerous license and sales agreements, joint venture agreements and consulting agreements. He has also drafted, negotiated and reviewed IP representations and warranties, license provisions and IP ownership allocations as part of larger merger and acquisition transaction teams. During his career, Hugh has spent substantial time in Japan working for Japanese companies and has a working knowledge of the Japanese language.
In his patent practice, Hugh has represented clients in a number of industries, including:
Pharmaceutical and Medical Device. Hugh’s work representing pharmaceutical and medical device companies includes serving as:
- lead trial counsel in a patent infringement suit involving an endovascular graft for treatment of abdominal aortic aneurysms, which resulted in a $37.5-million settlement from one defendant;
- lead trial counsel in a four-week jury trial involving a contract dispute over the ownership of patents, which settled after a successful jury verdict in favor of the defendant on all counts;
- lead trial counsel for a major university teaching hospital in a patent infringement lawsuit involving ownership of patents relating to replacement heart valves;
- counsel for a major medical device manufacturer in a case involving nine patents on balloon angioplasty catheters;
- lead trial counsel for a major medical device manufacturer in a patent infringement case involving neurocatheter devices for treatment of brain aneurysms; and
- trial counsel for a major medical manufacturer in a case involving ten patents on various aspects of insulin pumps for treatment of diabetes.
Industrial. Hugh’s work has also included representing a number of clients in the industrial products manufacturing industry. His work includes serving as:
- lead trial counsel for a major steel manufacturer in a case involving patents on processing of boron containing steels;
- co-lead trial counsel for a major steel manufacturer in a case involving patents on alloy additions to motor lamination steels;
- lead trial counsel for a polymer processing company in a case involving patents on a polymer/wood fiber composite and in a case involving a polymer extrusion process;
- lead trial counsel for a major automotive parts manufacturing in a case involving electronic engine controls and in a cases involving automotive transmission components; and
- drafter and prosecutor of dozens of patent applications for various automotive related companies in subject matter involving engines, transmissions, electronic engine controls, and turbochargers.
Pro Bono. Hugh has also served as lead counsel for a defendant on a collateral appeal of a conviction and death sentence in Alabama, which involved an evidentiary hearing involving a claim of mental retardation (Smith v. State, -- So.3d --, 2012 WL 1890750 (Ala. Crim. App. 2012)).