Carl B. Wischhusen

Member

New York

(212) 883-4991

(646) 588-1376

Carl B. Wischhusen has over 20 years of experience in intellectual property law, including patent prosecution, litigation, licensing, and due diligence, in a wide range of electrical and mechanical technology areas, including:

  • Software and software systems, including: database architecture and systems; mobile and web-based apps; and industrial machine–related data communications and data storage.
  • Electronics, including photocontrollers and light-emitting diode (LED) driver circuitry.
  • Telecommunications and data communication networks, including mobile internet protocol (IP)–based networks and data encryption and authentication.
  • Semiconductor devices, including light-emitting diodes (LEDs).
  • Financial (Fintech) systems, including securities trading platforms and systems and bank card–related data communication systems.
  • Mechanical devices and processes, including design and fabrication of tires and plastic and paperboard containers.

His practice includes:

Drafting patent applications and handling all aspects of patent prosecution before the U.S. Patent and Trademark Office (USPTO). Preparation and handling of ex parte appeals to the Patent Trial and Appeal Board. Post-grant proceedings, including inter partes review (IPR), reissue, and re-examination. Managing the filing and prosecution of counterpart patent applications in foreign patent offices around the world.

Preparation of invalidity, patentability, and freedom-to-operate opinions. Counseling clients on patent prosecution strategy, design-around solutions, and patent licensing. Analysis of existing and proposed products for freedom-to-operate clearance and patentability.

Intellectual property due diligence in support of business and investment deals, including analysis of patent portfolios and evaluation of IP-related representations and warranties and other IP-related portions of asset purchase and licensing contracts. Drafting of intellectual property licensing and technology transfer agreements.

Performing pre-litigation research and analysis, including analyzing portfolios of pending patent applications to evaluate strength and propose prosecution strategies in view of potential future litigation. Performing infringement analysis on competitors’ products and invalidity analysis on competitors’ patents. Supporting patent litigation, including preparing claim construction filings, and technology tutorial materials.

His technical background as a practicing electrical engineer included: microwave and radio-frequency (RF) communications and devices; antennas, including electronically-steerable phased-arrays; radar systems; and satellite communication systems.

Education

  • Georgetown University Law Center, J.D., 2000
  • Virginia Polytechnic Institute and State University, B.S.E.E.
  • Johns Hopkins University, M.S.E.E.
  • New York
  • United States Patent and Trademark Office
  • U.S. District Court -- Eastern District of New York
  • U.S. District Court -- Southern District of New York

New York Intellectual Property Law Association (NYIPLA) – Co-chair, Patent Law & Practice Committee