JENNIFER A. ALBERT

Jennifer Albert is a partner in the firm’s Litigation Department and member of its Patent Litigation Practice. She primarily focuses on litigation of claims relating to patent, trademark and copyright matters.

WORK FOR CLIENTS

Ms. Albert’s litigation work includes infringement claims; unfair competition and deceptive trade practices; misappropriation of trade secrets; false advertising; claims relating to licensing, distribution and other contracts relating to intellectual property rights in U.S. district and appellate courts and before the International Trade Commission; counseling clients on the protection, enforcement, licensing and acquisition of trademark, copyright, patent, trade secret and other intellectual property rights as well as the preparation and negotiation of agreements relating to such activities; and counseling clients on issues involving cyberspace, ecommerce and online information services as well as the preparation and negotiation of various types of computer and IT-related agreements.

Ms. Albert’s recent cases include:

• Lead trial counsel for patent owner ePlus in ePlus Inc. v. Lawson Software, Inc., Civil Action No. 3:09-CV-620 (E.D.V.a.).  Trial involved claims that adjudicated infringer Lawson Software is in contempt of Court’s injunction issued following jury verdict in favor of ePlus.  Awaiting decision in case.
• Trial counsel for patent owner ePlus in ePlus, Inc. vs. Ariba, Inc., Civil Action No. 1:04-cv-612 (E.D. Va.). Patents related to electronic procurement systems. The Ariba Buyer and Ariba Supplier Network were the accused systems. After a two-week trial on liability issues, the jury returned a verdict finding Ariba to have willfully infringed all of the claims at issue from the three patents-in-suit. Following the jury's verdict, the parties entered into a settlement and license agreement pursuant to which Ariba paid ePlus $37M.
• Trial counsel for patent owner ePlus in ePlus vs. SAP AG and SAP America, Inc., Civil Action No. 3:05cv281 (E.D. Va.). Case involved claims of patent infringement relating to SAP’s Enterprise Buyer Professional and Supplier Relationship Management products. Three week trial. While awaiting the Court’s decision, the case was settled.
• Trial and appellate counsel for patent owner ePlus in ePlus, Inc. v. Lawson Software, Inc., Civil Action No. 3:09-CV-620 (E.D. Va.).  Case involved claims of patent infringement relating to various Lawson procurement systems.  Three week trial.  Jury found several different Lawson systems infringed ePlus’s patents and that all the claims were valid.  Subsequent to the trial, the Court held an evidentiary hearing on ePlus’s motion for entry of a permanent injunction.  The Court granted ePlus’s motion for a permanent injunction and denied Lawson’s motion to stay entry of the injunction.
• Trial and appellate counsel for patent-owner MercExchange in MercExchange vs. eBay et al., Civil Action No. 2:01-CV-736 (E.D. Va.). Patents related to online markets and auctions. The jury returned a $35M verdict against defendants eBay and Half.com and found the defendants to have willfully infringed 41 claims in two patents in suit. At the Federal Circuit, judgment for $25M upheld and an injunction against defendants was ordered. The U.S. Supreme Court granted eBay’s petition for certiorari on the injunction issue and reversed and remanded for further proceedings.
• Trial counsel for Complainant Pass & Seymour, Inc. in Certain Ground Fault Circuit Interrupters and Products Containing Same, ITC Investigation No. 337-TA-615.  In that investigation, the administrative law judge ruled in favor of Pass & Seymour and against four Chinese-based manufacturers of ground fault circuit interrupters and six U.S. distributors finding all six asserted patents valid, enforceable and infringed. The administrative law judge further recommended entry of a general exclusion order as a remedy for the infringement, and that cease and desist orders be issued against the U.S. distributors.
• Trial counsel for Respondent OSRAM GmbH in Certain Light-Emitting Diodes and Products Containing Same, Inv. No. 337-TA-802.  LG Electronics contended that certain OSRAM LEDs and products containing such LEDs infringed eight LG patents.  Over the course of the investigation, LG withdrew its contentions with respect to six of the eight patents-in-suit.  The trial involved only two LG patents.  Prior to the issuance of the Administrative Law Judge’s decision, the parties entered into a settlement.
• Counsel for Complainant Tessera, Inc. in Certain Semiconductor Chips With Minimized Chip Package Size and Products Containing Same, ITC Investigation Nos. 337-TA-605 and 649.  In the 605 Investigation, the Commission found that the Respondents infringed the patents-in-suit both directly and indirectly and that the patents were not invalid.  The Court of Appeals for the Federal Circuit affirmed.
• Trial counsel representing patent owner First USA Bank, N.A. (now known as JP Morgan Chase Bank, N.A.) in a patent infringement action against PayPal, Inc., First USA Bank, N.A. vs. PayPal, Inc., Civil Action No. 02-1462-JJF (D.Del.). Patents related to online payment systems and verification techniques. Action resulted in a favorable settlement following the completion of the fact discovery phase of the case.
• Counsel for patent owner MercExchange in MercExchange v. GoTo.com (now Yahoo!, Inc.), Civil Action No.2:00-CV-826 (E.D. Va.). The case settled favorably during the fact discovery phase.
• Counsel for Respondent Fujitsu in In re Certain Dynamic Random Access Memories, Components Thereof and Products Containing Same, Inv. No. 337-TA-242 (U.S.I.T.C.).  the case involved claims of infringement of Texas Instruments’ DRAM patents under Section 337 of the Customs Act.  Fujitsu’s DRAM products were found not to infringe the TI patents.
• Trial counsel for plaintiff in APA-The Engineered Wood Ass'n v. Professional Service Indus., Inc., Civil Action No. 97-C-2901 (N.D. Ill). This action involved claims of copyright infringement, passing off and false advertising. Plaintiff obtained a preliminary and permanent injunction on the copyright infringement and passing off claims following a preliminary injunction hearing. The parties settled the false advertising claim in a mediation conducted just prior to trial.
• Lead trial counsel for plaintiff in Central Parking Corp. v. Park One Incorporated, Civil Action No. 97-2638 (E.D. La.); claims of trademark and copyright infringement and trade secret misappropriation. Following a preliminary injunction hearing with live witnesses, Plaintiff obtained a preliminary and permanent injunction on its copyright infringement claim and then favorably settled its trademark infringement claim.
• Trial and appellate counsel for defendant Mitsuboshi Cutlery, Inc. in McCoy v. Mitsuboshi Cutlery, Inc., 67 F.3d 917 (Fed. Cir. 1995). Case involved claims of patent and trademark infringement and breach of contract counterclaim. U.S. Court of Appeals for the Federal Circuit held that Mitsuboshi was not liable for patent or trademark infringement as a matter of law and affirmed jury’s verdict in Mitsuboshi’s favor on its breach of contract counterclaim. Case of first impression on issue of interplay between U.C.C. and patent law.
• Lead trial counsel for plaintiff Master Trading, Inc. in Master Trading, Inc. v. Adapt-A-Ball, Inc., Civil Action No. 4-95-520 (D. Minn.). This action involved claims of trademark and copyright infringement. Plaintiff obtained summary judgment of liability on its claims prior to trial. A monetary settlement of plaintiff’s claims followed.
• Lead trial counsel representing defendant IDB Mobile Communications in Synergistic Technologies, Inc. v. IDB Mobile Communications, Inc., 871 F. Supp. 24 (D.D.C. 1994). Case involved claims of copyright infringement, fraud, RICO violations, unfair competition and counterclaims of breach of contract and warranties and violations of Virginia Computer Crimes Act in connection with switching equipment for mobile satellite communications systems. On IDB Mobile’s motion for summary judgment at the close of discovery, all of the plaintiff’s claims were dismissed. A favorable settlement of IDB Mobile’s counterclaims was also reached.
• Trial counsel for patent owner Stant, Inc. in In re Certain Automotive Fuel Caps and Radiator Caps and Related Packaging and Promotion Materials, Inv. No. 337-TA-319, 1992 W.L. 813790 (U.S.I.T.C. 1992). The case involved claims of patent, trademark and copyright infringement under Section 337 of the Customs Act. Stant alleged that various Chinese manufacturers and their importers, distributors, and retailers infringed six Stant patents and various Stant trademarks and copyrighted promotional materials. Stant obtained an exclusion order preventing the importation of the infringing products and related materials.
• Represented a computer network/information services provider in connection with an agreement pursuant to which the management, operations, technical and customer support, marketing, sales and promotional services for the electronic data interchange (EDI)/electronic commerce network for the booksellers and publishing industry would be outsourced to the client.
• Represented a major financial institution in connection with an agreement pursuant to which the client outsourced its automated teller and electronic funds transfer data processing, check processing and bank card production and fulfillment services.
• Represented a large international supplier of fiber and paper technologies and services in connection with an agreement to acquire the assets of a company engaged in the development and delivery of supervisory control and data acquisition (SCADA) and simulation systems used in the oil and gas industries including the acquisition of the underlying patent, trademark and copyright rights associated with such systems and the assignment of licenses to various computer software programs used in conjunction with such systems.
• Represented a major insurance provider in connection with an agreement pursuant to which the client was to purchase various computer systems, license various software products, obtain various information services and custom-developed software from an information services provider and whereby the service provider was to integrate the software and systems into the client's existing computer systems.
• Represented both Internet service providers (ISPs), web site owners/operators and web site developers in connection with various agreements relating to the conduct of business over the Internet, including agreements relating to web site development, web site hosting and maintenance, Internet access, retail web site operations, advertising services, web site hyperlinks, corporate Internet and email use policies, web site privacy policies, shrinkwrap/clickwrap licenses, web site sweepstakes and/or contests policies, content provider licenses, domain name licenses and/or assignments, Internet/online services subscriptions, joint ventures and strategic alliances, research and development, product and software distribution and/or resale, bulletin board/ chat room operator/information and content provider policies, electronic agencies, retail web site sales, data security and disaster recovery and the provision of services from trusted third parties for the authentication and/or certification of digital signatures and encryption keys.

PROFESSIONAL ACTIVITIES

Since 2002, Ms. Albert has served as general counsel to the American Intellectual Property Law Association (AIPLA).

Ms. Albert is a member of the Electronic Commerce and Information Technology Committee of the Licensing Executives Society (International Chapter), the American Intellectual Property Law Association, the Federal Circuit Bar Association and the Intellectual Property, Litigation and Antitrust Committees of the American Bar Association. She also serves as the chair of the Public Policy Section of the Computer Law Committee of the Licensing Executives Society (U.S./Canada Chapter), and co-chair of the UCITA Committee of Intellectual Property Owners (IPO) Association.

MEDIA

Ms. Albert is the co-author of numerous articles and publications, including “Strategies of Tech Business Include Utility Patents” in The National Law Journal; “The New Frontier – Computer Software Patents” in Corporate Counsel’s Quarterly; “Snared by a Bankruptcy Trap, Special Report on Intellectual Property” in Washington Legal Times; and Internet World - Using the Web to Compete in a Global Marketplace (John Wiley & Sons, Inc.).

In addition, Ms. Albert is a frequent featured speaker at various industry seminars and events, such as the Intellectual Property Institute, the Intellectual Property Law Section Annual Meeting, Mealey’s Publications Emerging Coverage Issues Conference and Mealey’s Publications Cyberspace and Information Technology Law Conference.

PROFESSIONAL EXPERIENCE

Prior to joining Goodwin Procter in 2007, Ms. Albert was a partner at Hunton & Williams LLP. Before that, she was a partner at Arent Fox.

BAR AND COURT ADMISSIONS

Ms. Albert is admitted to practice in the District of Columbia and South Carolina, and before the U.S. Patent and Trademark Office; U.S. Court of Appeals for the Fourth, Federal and District of Columbia Circuits; U.S. Court of Federal Claims; and U.S. District Courts for the Districts of Columbia, Maryland and South Carolina.

RECOGNITION

Ms. Albert was named to the DC Super Lawyers listing for Intellectual Property Litigation in 2012 and 2013. The Super Lawyers listing is chosen through a peer balloting process and through the independent research firm of Thomson Reuters.

Ms. Albert has received a perfect 5.0 AV Peer Rating from Martindale for the past two years and has also been recognized by The Legal 500 - United States for her patent litigation work.