George R. McGuire
George is a registered patent attorney and chair of the firm's intellectual property and technology practice. He concentrates his practice in all facets of intellectual property law, including, for example, patent and trademark preparation and prosecution, litigation involving intellectual property issues, patent and trademark clearance opinions, patent novelty, validity and (non)infringement opinions, due diligence investigations in merger and acquisition, asset purchase, or other financial transactions, proceedings before the Patent Trial and Appeal Board and the Trademark Trial and Appeal Board, negotiating and drafting technology transfer and license agreements, and internet and computer law matters. George practiced for five years as a patent agent before receiving his law degree.
In addition to his practice, George is also an adjunct professor at Syracuse University College of Law where he has been teaching a course on Internet Law since 2004, and prior to that taught and lectured on courses in computer law, entertainment law, trademark and unfair competition law, intellectual property and technology transfer.
- US 7,722,446 System and device for thinning wafers that have contact bumps
- US 6,782,931 Tubeless tire compound and a system and method for retrofitting non-tubeless tires
- US 7,766,308 Theater rigging system
- US 6,801,335 Method of controlling impact printer noise
- US 8,032,523 Method and system for data migration
- US 7,088,008 Electronic package with optimized circuitization pattern
- US 7,937,609 Disaster recovery in a data processing system
- US 8,086,675 Generating a fingerprint of a bit sequence
- US 7,459,190 Fire protection containers incorporating novel low free water insulation materials
- US 7,196,783 Optical fiber bundle utilizing electromagnetic radiation feedback
- US 7,785,409 Fire-resistant ground cover and fire-resistant coatings for biomass, wood and organic mulches
- US 7,391,333 System for monitoring quality of water system
- US 7,825,853 Man-portable counter mortar radar system
- US 7,289,691 Lithium-Niobate fiber optic sensor and system
- US 8,137,380 Closure device, deployment apparatus, and method of deploying a closure device
- US 7,083,574 Non-invasive device and method for the diagnosis of pulmonary vascular occlusions
Representative Litigation Matters
- ProtectConnect, Inc. v. Leviton Manufacturing Co, Inc., et al., (S.D. Ca.) (Lead counsel in defense of Pass & Seymour, Inc. – a leading manufacturer and provider of ground fault circuit interrupters, wiring devices, electrical switches and outlets, and other electrical wiring devices – against patent infringement claims brought by a non-practicing entity and assisted with successfully settling the case prior to trial and after successfully invalidating two and narrowing one of the asserted patents in an ex parte reexamination proceeding at the USPTO).
- Wacoh Company v. Kionix, Inc., (N.D.N.Y.) (Lead counsel in defense of leading manufacturer and provider of micro-electromechanical systems (MEMS) sensors against a claim of patent infringement and assisted with successfully settling the case prior to trial. Case was originally brought against multiple parties in the District of Delaware and was successful in severing Kionix from that case and in getting the case transferred to the N.D.N.Y.).
- Ameranth, Inc. v. PAR Technology Corp., et al., (E.D. Tex.) (Lead counsel in defense of leading manufacturer and provider of point of sale software systems and other technology solutions for hospitality companies against a claim of patent infringement brought by a non-practicing entity and assisted with successfully settling the case prior to trial).
- The Metraflex Company v. Flex-Hose Company, Inc., (N.D. Ill.) (Lead counsel in defense of leading manufacturer and provider of HVAC products against a claim of patent infringement and assisted with successfully settling the case prior to trial).
- Total Containment Systems, LP v. Central Painting Inc. et al., (E.D. Wis.) – (Represented patent owner in a patent infringement action involving bridge platform systems against one of its competitors and an alleged contributory infringer; case was successfully settled after the lawsuit was filed).
- In re Certain Ground Fault Circuit Interrupters & Prods. Containing Same, Inv. No. 337-TA-615 (Int'l Trade Comm'n) (Represented patent owner/complainant Pass & Seymour, Inc. in a proceeding for patent infringement and obtained exclusion order against foreign manufacturers after a bench trial).
- Hubbell Inc. v. Pass & Seymour, Inc., (D. Conn.) (Lead counsel for leading manufacturer and provider of ground fault circuit interrupters, wiring devices, electrical switches and outlets, and other electrical wiring devices. Obtained summary judgment of patent non-infringement and patent invalidity in favor of nationally known electrical wiring device manufacturer).
- D & D Group Pty Ltd et al v. Nationwide Industries Inc., (S.D. Ca.) – (Lead counsel for leading manufacturer of fence products. Obtained summary judgment of non-infringement, affirmed at Federal Circuit. Also used ex parte reexamination at USPTO to narrow asserted patent).
- Pass & Seymour, Inc. v. Hubbell, Incorporated, (N.D.N.Y.) (Lead counsel for leading manufacturer and provider of ground fault circuit interrupters, wiring devices, electrical switches and outlets, and other electrical wiring devices. Prosecuted patent infringement claims involving ground fault circuit interrupters with case settling prior to trial).
- Kernius et al. v. International Electronics, Inc., (D. Md.) Obtained favorable construction of asserted patent claims at a Markman hearing as well as finding of non-infringement as a matter of law;
- Leonardi Mfg. Co. Inc. v. CMD, (N.D.N.Y.) -- Obtained favorable construction of asserted patent claims at a Markman hearing and settled case prior to trial.
Honors and Affiliations
- Listed in:
- The Best Lawyers in America® 2017, Litigation - Intellectual Property; Litigation - Patent; Patent Law (listed for 5 years)
- New York Super Lawyers 2016®, Intellectual Property (listed for 10 years)
- Who's Who in America
- Who's Who In American Education
- Who's Who in American Law
- Who's Who in Emerging Leaders
- American Bar Association
- New York State Bar Association
- Onondaga County Bar Association
- American Intellectual Property Law Association
- Central New York Patent Law Association, President
- Rochester Intellectual Property Law Association
- Justinian Honorary Law Society
- Panel Member, Intellectual Property Management and how it Affects Contract Negotiations, NCURA Region II 2017 Spring Meeting, 5/1/17
- Panel Member, Managing Intellectual Property - Pre-Award Office, What to Look for in Contract Negotiations, NCURA Region II 2017 Spring Meeting, 4/30/17
- Legal Issues Surrounding BlockChain Technology, Rochester Institute of Technology, 3/28/17
- Intellectual Property | Copyright 101, New York State Bar Association Bridging the Gap CLE, 3/7/17
- Overview of aspects of U.S. Patent Practice of interest to Foreign Entities: Subject Matter Eligibility; Post-Grant Proceedings; International Trade Commission Investigations, 2017 International IP Seminar in Guangzhou, China, 2/22/17
- Overview of aspects of U.S. Patent Practice of interest to Foreign Entities: Subject Matter Eligibility; Post-Grant Proceedings; International Trade Commission Investigations, 2017 IP Seminar in Seoul, 2/20/17
- Overview of aspects of U.S. Patent Practice of interest to Foreign Entities: Subject Matter Eligibility; Post-Grant Proceedings; International Trade Commission Investigations, 2017 International IP Seminar in Tokyo, Japan 2/17/17
- Strangers in a Strange Lab: Identifying and Addressing Concerns with University Visitors, National Association of College and University Attorneys (NACUA) Conference - Academic Sponsored Research and Technology Transfer: Accountability, Transparency, and Resilience in the Research Enterprise, 11/16-18/16
- Panel Member, Patent Protection, NEXT 2016 - The Event for Technology, Manufacturing & Innovation, 10/11/16
- Intellectual Property 101 - Patents and Trademarks, New York State Bar Association CLE, 3/24/16
- Protecting Patents and Trademarks in Europe, Institute for Veterans and Military Families, 3/18/16
- Structuring Trademark Clearance Opinions: Assessing Search Results to Identify Infringements, Overcoming Clearance Challenges, and Preparing Opinions to Reduce Legal Risks, Strafford Publications, Inc., 3/15/16
- United States Patent Overview, IPO Association and IPP Association, Kunshan, China, 11/3/15
- Intellectual Property 101 - Copyright, Trademarks, New York State Bar Association Bridging the Gap CLE Program, 3/19/15
- The Invention Process and How IP Laws Impact the Process, TACNY John Edson Sweet Lecture, 1/13/15
- Patent Law Update, NDNY Federal Court Bar Association CLE, Hot Topics in Intellectual Property, 12/4/14
- Structuring Trademark Clearance Opinions, Strafford Publications Webinar, 9/10/14
- Intellectual Property Considerations for the Pre-Award Office, National Council of University Research Administrators, 8/13/14
- Intellectual Property Challenges in Globally Sponsored Research, National Council of University Research Administrators, 8/11/14
- Intellectual Property (IP): Patents, Trademarks and Copyrights, State University of New York College of Environmental Science and Forestry, ESF Outreach, 5/12/14
- Intellectual Property Management and Negotiating Strategies for Research Administrators, National Council of University Research Administrators Spring Meeting, 5/4/14
- Technology Transfer & Working with the Corporate Sector; University Spin-offs and Other Small Business, National Council of University Research Administrators Conference, 3/18/14
- Understanding 35 U.S.C.§ 101, Rochester Intellectual Property Law Association, Annual Intellectual Property Law Seminar, 118/13
- Workshop on Intellectual Property Management, National Council of University Research Administrators, University of Maryland, College Park, MD, 11/4/13
- Becoming Conversant with Patent and Trademark Issues, New York State Bar Association, 102/13
- Understanding and Guiding Principles under the AIA's Changes to Section 102, Rochester Intellectual Property Law Association, 119/12
- The Change to First to File from First to Invent: Strategies on how to Protect Your IP Post-American Invents Act, NEXT 2012, The Event for Technology, Manufacturing & Innovation, 11/8/12
- Intellectual Property Know-How for University Research Administrators, NACUA Annual Meeting, 11/6/12
- Prometheus v. Mayo, New York State Science and Technology Law Center, Lab to Market Series, 6/6/12
- IP Management, National Council of University Research Administrators, Region II Spring Meeting, 4/12
- "What do you think PR and other communication professionals need to know about cybersecurity, and the threat of cyberattacks?, What Communicators Need to Know About Cyberattacks: A Legal Perspective," International Association of Business Communicators Communication World, 2/3/16
- George R. McGuire, Blaine T. Bettinger, "How the Supreme Court Got It Right in Mayo v. Prometheus," The SciTech Lawyer, Volume 10, Issue 1, Fall 2013
- George R. McGuire, Nelson A. Blish, Stephen H. Shaw, "Reexamining Reexamination: An Alternative to Patent Litigation," ACC Docket, 9/09
- Adjunct Professor of Internet Law, Syracuse University College of Law
- Board Member, East Area Family YMCA of Greater Syracuse
- Board of Trustees, Everson Museum of Art, 2000-2006
- Editorial Advisory Board, Journal of the Association of University Technology Managers (AUTM)
- Board of Trustees, Make-A-Wish Foundation of Central New York, Board Chair 2004-2006
- Foundation Board of Directors, Milton J. Rubenstein Museum of Science and Technology (MOST)
- Board of Trustees, March of Dimes of Central New York
- Advisory Board, New York State Science and Technology Law Center
- 2003 Class, 40 Top Business and Community Leaders in Central New York under the age of 40