Overview

Edmond Bannon has been successfully representing both large and mid-sized national and international companies as well as small family-owned businesses in intellectual property disputes for more than 35 years. He has appeared in U.S. District Courts in more than 20 states on behalf of his clients.

Ed’s practice emphasizes patent and trademark litigation and prosecution in numerous areas of technology including physics, electrical engineering, medical and radiological devices, mechanical devices, computer hardware, optics, chemicals, and nanotechnology. He also represents clients in appeals to the U.S. Court of Appeals for the Federal Circuit.

He also counsels clients on patent and trademark protection, has prepared and negotiated dozens of intellectual property agreements and provides opinions on the validity and infringement of patents.

Ed was named a “top patent practitioner” in the 2021 edition of IAM Patent 1000: The World’s Leading Patent Practitioners. American Lawyer Media selected him as a “2013 Top Rated Lawyer in Intellectual Property.” He has also been rated as “Excellent” in the category of New York’s Best Law Firms for Patent Litigation by the International Legal Alliance Summit. In 2016, Corporate LiveWire named Ed as its “SME IP Lawyer of the Year – USA.” Corporate Insider selected him as its “Most Outstanding Trademark Litigator – New York” in 2017 and 2019. Ed was also recognized as a “Global IP Star” and a “Trademark IP Star” by Managing Intellectual Property magazine in 2018.

In his spare time, Ed enjoys travelling and scuba diving with his wife Catherine and three children.

Experience

DSM Desotech Inc., et al. v. Momentive UV Coatings Co. Ltd., et al. (International Trade Commission, 337-TA-1031) – Lead trial counsel for Respondent Momentive UV Coatings in the matter of certain UV Curable Coatings for Optical Fibers, Coated Optical Fibers, and Products Containing Same.  DSM Desotech Inc. et al. (“DSM”) accused Momentive UV Coatings Co. Ltd. (“MUV”) and OFS Fitel (“OFS”) of infringing U.S. Pat. Nos. 6,961,508, 7,171,103, 7,067,564, and 7,706,659 (“the patents-in-suit”). Specifically, DSM sought to block the importation of MUV’s UV curable coating products into the United States. The ITC, however, issued a Final Determination finding all asserted claims of the patents-in-suit either invalid or not infringed by MUV.

FloodBreak, LLC v. Art Metal Industries, LLC and Kevin F. Biebel – Lead trial counsel for FloodBreak in asserting patent on a Mechanical Closure Device for flood prevention. Case is pending.

Wayne Lederer v. Avotec, Inc. – Lead trial counsel for Mr. Lederer in asserting his patent on noise attenuating headsets for MRI machines. Case settled favorably for Mr. Lederer.

Corning Incorporated v. DSM Desotech, Inc. and DSM I.P. Assets, B.V. – Trial counsel for Corning in a nine-patent declaratory judgment action involving optical fiber coatings and coated optical fibers. Case settled favorably for Corning.

Chrimar Systems, Inc. et al. v. Phihong USA Corporation – Lead trial counsel for Phihong in a four-patent case involving power-over-ethernet devices. Case settled favorably for Phihong shortly after Phihong moved to transfer the case from Texas to California.

Retirement Corporation of America, Inc. v. Voya Financial, Inc., Voya Investment Management, LLC and Voya Services Company – Lead trial counsel for Voya in alleged trademark infringement case involving the RETIREMENT UNIVERSITY mark. Case settled favorably for Voya.

RES Development Corp. v. Momentive Performance Materials Inc. – Lead trial counsel and lead appellate counsel defending Momentive against a charge of infringing patent on thermoset polymers with polyfluoroalkylsiloxane modified surfaces.  Judgment was entered for Momentive by the trial court and the patent was held invalid by anticipation on summary judgment.

CooperSurgical, Inc. v. Teleflex Medical, Incorporated and Teleflex, Inc. – Lead trial counsel for CooperSurgical in asserting patent on a surgical suture guide.  Case settled favorably for CooperSurgical.

CooperSurgical, Inc. v. Medtek Devices, Inc. – Lead trial counsel for CooperSurgical in asserting patent on a smoke evacuation system for use during surgical procedures.  Case settled favorably for CooperSurgical.

Wayne Lederer v. Newmatic Sound Systems, Inc. and Nine Eighteen Medical, Inc. – Lead trial counsel for Mr. Lederer in asserting his patent on noise attenuating headsets for MRI machines.  Case settled favorably for Mr. Lederer.

Newmatic Sound Systems, Inc. v. Magnacoustics, Inc. – Lead trial counsel for Magnacoustics in declaratory judgment action on patent for noise attenuating headsets used in MRI machines.  Judgment was entered for Magnacoustics on Article III grounds following favorable ruling on motion to dismiss Newmatic’s complaint.

Droplets, Inc. v. E*Trade Financial Corporation, et al. – Trial counsel for Merrill Lynch & Co., Inc. and Merrill Lynch, Pierce, Fenner & Smith, Inc. in defending against patent infringement claims relating to graphical user interfaces.  Case settled following the filing of a motion for summary judgment.

Digital Technology Licensing LLC v. Sprint Nextel Corp. v. Sanyo North America Corp., Kyocera Communications, Inc. and Palm Inc. – Lead trial counsel for third-party defendant Palm Inc. in patent infringement action involving mobile phones, Bluetooth headsets and indemnity agreement.  Case settled favorably for Palm following successful motion to dismiss the third-party complaint.

Japan Cash Machine Co. Ltd. & JCM American Corp. v. Mars Electronics, Inc., – Lead trial counsel for MEI in a patent infringement action involving bill validators for the gaming industry.  Obtained jury verdict invalidating JCM’s bar code reading bill acceptor patent on the ground of obviousness.

Mars Electronics International, Inc. v. International Currency Technologies Corp. and International Currency Technologies Inc. – Lead trial counsel for MEI in asserting a patent covering bill validators for vending machines and slot machines.  Case settled.

JDS Uniphase Corporation v. Metconnex, Inc., – Lead trial counsel defending Metconnex in the United States case for alleged infringement of a patent on a MEMS switching systems for fiber optic communications.  Case settled prior to trial.

In the Matter of Certain Light-Emitting Diodes and Products Containing Same – Trial counsel for Complainant Osram GmbH in a ten patent ITC case against Dominant Semiconductors Sdn. Bhd. involving patents on white light LEDs and surface-mountable devices (SMDs).  The Commission issued an exclusion order against Dominant following trial.

BioElectronics Corp. v. 709072 BC Ltd. et al., – Lead trial counsel for BioElectronics in action for infringement of the trademark ACTIPATCH.  Final judgment entered in favor of BioElectronics based on a consent decree.

PowerDsine, Ltd. v. Phihong USA Corp. and Phihong Taiwan, – Lead trial counsel for Phihong in defending against a patent involving Power-over-Ethernet networks.  Case settled.

Seagate Technology LLC v. Cornice, Inc., – Trial counsel for Seagate in seven patent case involving high-capacity disc drives.  Case settled.

Plasma Physics Corp. v. LSI Logic Corp. – Lead trial counsel for LSI in five patent case involving plasma enhanced chemical vapor deposition equipment and processes.  Case settled favorably for LSI following claim construction ruling.

U.S. Philips Corp. v. Atmel Corp. et al. – Trial counsel for Atmel and LSI in patent case involving a two-wire bus system for communicating between integrated circuits.  Case settled favorably following oral argument on several motions for summary judgment.

Methode Electronics and Stratos Lightwave v. Finisar Corp. – Lead trial counsel for Finisar in a five patent case involving optoelectronic transceivers and gigabit interface converters.  Case settled.

Farnbach & Swift Technology v. Agilent Technologies Inc. – Trial counsel for Agilent in patent case involving digital signal fault detection devices.  Case settled.

J. Carl Cooper et al. v. Hewlett-Packard Co. – Trial counsel for HP in patent case involving resolution enhancement technology.  Case settled.

Hewlett-Packard Co. v. Pitney Bowes – Trial counsel for HP in patent case involving ink jet printer technology.  Case settled.

Pitney Bowes v. Hewlett-Packard Co. – Trial counsel and appellate counsel for HP in patent case involving resolution enhancement technology for laser printers.  Case settled.

Hewlett-Packard Co. v. GenRad Inc. – Trial counsel for HP in two patent case involving in-circuit testing of printed circuit boards by capacitive coupling.  Case settled during trial.

Acuson Corp v. Hewlett-Packard Co. – Trial counsel for HP in patent case involving ultrasonic imaging devices.  Case settled.

The Laitram Corp. v. Hewlett-Packard Co. – Trial counsel, appellate counsel and reexamination counsel for HP in five patent case involving calculator and computer keyboards.  Case settled following a lengthy reexamination proceeding and successful transfer motion.

Union Camp Corp. v. Ozonia et al – Trial counsel for Union Camp in multi-defendant patent case involving ozone bleaching technology.  Case settled.

Medtronic, Inc. v. Shiley Inc. – Trial counsel for Shiley in patent case involving blood oxygenators.  Case settled.

Surgical Laser Technologies, Inc. v. Sharplan Lasers, Inc. – Trial counsel for Sharplan in patent case involving surgical laser probe tips.  Obtained judgment for Sharplan following successful motion for summary judgment of noninfringement.

Ametec, Inc. v. Hewlett-Packard Co. – Trial counsel for HP in patent case involving X-Y plotters.  Case settled.

Hewlett-Packard Co. v. Bausch & Lomb, Inc. – Trial counsel for HP in patent case involving X-Y plotters.  Case settled during damages phase after obtaining successful verdict for HP during liability phase.

White Water Wave Systems v. Aquatic Amusement Associates – Trial counsel for Aquatic in patent case on pneumatic wave generators.  Case settled.

ALM Surgical Equipment Inc. v. Kirschner Medical Corp. – Trial counsel for ALM in patent case involving prismatic surgical lights.  Obtained jury verdict of willful infringement in favor of ALM as well as enhanced damages.

Epelo Corp. v. Hewlett-Packard Co. – Trial counsel for HP in patent case involving actuator motors for heads in fixed disc drives.  Case settled after successful transfer motion.

Billings Computer Co. and Sanders Associates v. Tandon Corp. – Trial counsel for Billings and Sanders in patent case involving dual-sided floppy disc drives.  Case settled during trial.

Klein v. Cannondale Corp. – Trial counsel and appellate counsel for Cannondale in patent case involving wide tube aluminum bicycle frames.  Obtained judgment in favor of Cannondale based on successful motion for summary judgment of invalidity which was affirmed by the Federal Circuit.

Professional associations

  • Association of the Bar of the City of New York
  • New York State Bar Association
  • American Bar Association
  • New York Intellectual Property Law Association (Committee on Litigation Practice and Procedure 2002-2011; Committee on Legislative Oversight and Amicus Briefs 2004-2005; Committee on Antitrust, Inequitable Conduct & Misuse 2004-2005)
  • Conner Inn of Court, Master Member (2013 - Present)