Carl B. Wischhusen
Counsel
Counsel
Areas of Expertise
Patent prosecution and litigation in the fields of electrical engineering, business/finance, biomedical engineering, and mechanical engineering
Opinions and counseling on patent validity, infringement, and freedom-to-operate
Patent portfolio management and development
Counseling on licensing, engineering design changes, design-around solutions and other patent-related legal issues
Professional Summary
Mr. Wischhusen has extensive experience in patent prosecution, opinions, counseling and litigation in a wide variety of technology areas, including electrical engineering, business/finance, biomedical engineering, and mechanical engineering. His current practice focuses primarily on patent prosecution, which he has been doing since 1996, as well as client counseling and opinion preparation.
Mr. Wischhusen handles prosecution for a large portfolio of U.S., international, and foreign patent applications, including the preparation of patent applications, amendments, appeals, reexaminations, reissues, and other prosecution-related filings. He counsels clients on prosecution strategy and prepares patentability, freedom-to-operate, and validity opinions. Mr. Wischhusen’s practice also includes advising clients regarding strategies for patent portfolio management and development, licensing, engineering design changes and design-around solutions, and other patent-related legal issues.
In addition, Mr. Wischhusen has experience managing patent prosecution for large and small high-technology companies, as well as managing a portfolio of electrical and biomedical engineering technologies for a large university.
His litigation experience includes preparation of claim construction briefs and invalidity contentions, preparation of claim construction and technology tutorial materials for Markman hearings, infringement analysis of accused products, validity analysis of asserted patents, and researching and interviewing expert witnesses. Other aspects include pre-litigation analysis of portfolios of pending patent applications to evaluate strength, developing prosecution strategies in view of potential future litigation, and performing infringement analysis on competitors’ products and invalidity analysis on competitors’ patents.
Mr. Wischhusen is a regular lecturer at the Practising Law Institute.
Mr. Wischhusen worked as an electrical engineer in the defense industry for nine years prior to his career in patent law. His engineering work included the following technology areas: microwave/RF circuit design and analysis; phased array antenna systems research, design and development; phased array RADAR antenna systems analysis; satellite communication systems analysis and design; and satellite earth station design, implementation, and testing.
Education
J.D., Georgetown University Law Center, 2000
M.S.E.E., Johns Hopkins University, 1991
B.S.E.E., Virginia Polytechnic Institute and State University, 1987
Admissions
New York
U.S. District Courts for the Southern and Eastern Districts of New York
U.S. Patent and Trademark Office
Memberships
American Bar Association
New York State Bar Association
American Intellectual Property Law Association
New York Intellectual Property Law Association
Articles and Lectures
“Patent Specification Drafting,” Fundamentals of Patent Prosecution 2009: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, June 2009.
Contributor to published materials and lecturer for claim drafting clinic (since 2006).
“Obviousness in the USPTO After KSR v. Teleflex,” Prior Art & Obviousness 2009: The PTO & CAFC Perspective on Patent Law Sections 102 & 103, Practising Law Institute, July 2009.
Contributor to published materials and lecturer.
Representative Litigation Matters
St. Clair Intellectual Property Consultants Inc. v. Research In Motion LTD. et al, 1:08cv 00371 (D. Del.).
Gillette Company et al v. Dorco Company Ltd. et al, 1:08cv10703 (D. Mass.).
Patents
U.S. Patent No. 4,973,971, “Broadband circular phased array antenna”, Sinsky, et al.
Mr. Wischhusen has extensive experience in patent prosecution, opinions, counseling and litigation in a wide variety of technology areas, including electrical engineering, business/finance, biomedical engineering, and mechanical engineering. His current practice focuses primarily on patent prosecution, which he has been doing since 1996, as well as client counseling and opinion preparation.
Mr. Wischhusen handles prosecution for a large portfolio of U.S., international, and foreign patent applications, including the preparation of patent applications, amendments, appeals, reexaminations, reissues, and other prosecution-related filings. He counsels clients on prosecution strategy and prepares patentability, freedom-to-operate, and validity opinions. Mr. Wischhusen’s practice also includes advising clients regarding strategies for patent portfolio management and development, licensing, engineering design changes and design-around solutions, and other patent-related legal issues.
In addition, Mr. Wischhusen has experience managing patent prosecution for large and small high-technology companies, as well as managing a portfolio of electrical and biomedical engineering technologies for a large university.
His litigation experience includes preparation of claim construction briefs and invalidity contentions, preparation of claim construction and technology tutorial materials for Markman hearings, infringement analysis of accused products, validity analysis of asserted patents, and researching and interviewing expert witnesses. Other aspects include pre-litigation analysis of portfolios of pending patent applications to evaluate strength, developing prosecution strategies in view of potential future litigation, and performing infringement analysis on competitors’ products and invalidity analysis on competitors’ patents.
Mr. Wischhusen is a regular lecturer at the Practising Law Institute.
Mr. Wischhusen worked as an electrical engineer in the defense industry for nine years prior to his career in patent law. His engineering work included the following technology areas: microwave/RF circuit design and analysis; phased array antenna systems research, design and development; phased array RADAR antenna systems analysis; satellite communication systems analysis and design; and satellite earth station design, implementation, and testing.
Education
J.D., Georgetown University Law Center, 2000
M.S.E.E., Johns Hopkins University, 1991
B.S.E.E., Virginia Polytechnic Institute and State University, 1987
Admissions
New York
U.S. District Courts for the Southern and Eastern Districts of New York
U.S. Patent and Trademark Office
Memberships
American Bar Association
New York State Bar Association
American Intellectual Property Law Association
New York Intellectual Property Law Association
Articles and Lectures
“Patent Specification Drafting,” Fundamentals of Patent Prosecution 2009: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, June 2009.
Contributor to published materials and lecturer for claim drafting clinic (since 2006).
“Obviousness in the USPTO After KSR v. Teleflex,” Prior Art & Obviousness 2009: The PTO & CAFC Perspective on Patent Law Sections 102 & 103, Practising Law Institute, July 2009.
Contributor to published materials and lecturer.
Representative Litigation Matters
St. Clair Intellectual Property Consultants Inc. v. Research In Motion LTD. et al, 1:08cv 00371 (D. Del.).
Gillette Company et al v. Dorco Company Ltd. et al, 1:08cv10703 (D. Mass.).
Patents
U.S. Patent No. 4,973,971, “Broadband circular phased array antenna”, Sinsky, et al.
