Hung H. Bui, Partner, received his B.S. in Electrical and Computer Engineering with minors in International Area Studies from Drexel University in 1990, and his J.D degree from the Washington College of Law, American University, in 1994. Mr. Bui also attended Franklin Pierce Law Center where he studied advanced patent and trademark practices and transactions, and served as a Patent Examiner in the computer group of the U.S. Patent & Trademark Office.
In private practice since 1991, Mr. Bui concentrates on counseling clients regarding intellectual property (IP) matters, with a special focus on prosecution and strategic planning of IP portfolios. Mr. Bui has rendered legal opinions on issues including of trademark availability, patent validity, enforceability, infringement and product clearance, and has participated in litigation matters involving patent infringement claims before the U.S. district courts and the International Trade Commission (ITC). In addition, Mr. Bui is well versed in all aspects of patent preparation, prosecution, license, reissue, reexamination, interference and appeals before the Board of Patent Appeals and Interferences and the U.S. Court
of Appeals for the Federal Circuit. His technology practice covers computer hardware and software architectures, business applications, telecommunications (including cellular and satellite systems), computer networks, network protocols and Internet-related systems (including electronic commerce and network security), semiconductor devices and fabrications, integrated circuits (ICs) and chipsets, medical diagnostics and monitoring systems, test and measurement equipments for advanced electronics and communications, and a wide variety of consumer electronic products, such as: information storage and retrieval systems, photographic and electro-photographic devices, solid state, magnetic and optical memory devices, and high-definition televisions (TVs) and related video systems, including thin-film transistor (TFT) and liquid crystal display (LCD) monitors, and plasma display panel (PDP) monitors.
Active in his community, Mr. Bui has led the development of missions and goals statements, directed start-up activities, including filing of incorporation papers and related applications for IRS §501(c)(3) status, established personnel policies, procedure manuals, and agendas for meetings of Board of Directors for several community-based, non-profit organizations that promote the interests of Asian Americans and Asian immigrants and refugees in the Washington D.C. metropolitan area. Mr. Bui is a founding co-Chair and served as co-Chair and Chair of the Board of Directors of Asian American LEAD,
a non-profit community-based organization dedicated to nurture and develop Asian American youths from low-income families in the Washington D.C. metropolitan area, from 1998 - 2005. In addition to Asian American LEAD, Mr. Bui was a founding member and previously served as General Counsel for the Vietnamese American Society from 1994-2002. From 2002-2003, Mr. Bui served as Board Director of the Asian Pacific American Bar Association of the Greater Washington DC. Currently, Mr. Bui serves on the Board of MOSAICA (The Center for Nonprofit Development and Pluralism). Mr. Bui has also provided a wide variety of pro bono legal services and representations for low-income Asian Americans in both civil and criminal proceedings.
Mr. Bui has spoken on numerous panels on patent law and practice, and is AV rated by his peers through Martindale-Hubbell, reflective of his having achieved the highest levels of competence and expertise in his practice, as well as maintaining exceptional ethical standards and integrity. Prior to co-founding Stein, McEwen & Bui LLP, Mr. Bui was a member of Antonelli, Terry, Stout & Kraus LLP, in Arlington Virginia.
Mr. Bui is admitted to the Bars of the District of Columbia and Pennsylvania, and is registered to practice before the U.S. Patent and Trademark Office, the U.S. Court of Appeals for the Federal Circuit, and the U.S. Court of Federal Claims. He is also a member of the National Asian Pacific American Bar Association, the Asian Pacific American Bar Association of the Greater Washington DC, the American Bar Association, the American Intellectual Property Law Association, the Licensing Executive Society, the Patent Lawyers Club of Washington DC, and the Institute of Electrical and Electronics Engineers.
Publications
KSR: New Hurdle for Patentability But Not So Obvious, IPFrontline™ Intellectual Property & Technology Magazine (October 7, 2008)
Quanta v. LG: Scope of Patent Exhaustion Doctrine, IPFrontline™ Intellectual Property & Technology Magazine (October 16, 2008)
MedImmune v. Genetech: Accused Infringers Strike, IPFrontline™ Intellectual Property & Technology Magazine (October 27, 2008)
In Re Bilski, No. 2007-1130 (Fed. Cir. Feb. 15, 2008): Hedging on the Scope of Patentable Subject Matter for Business Methods under 35 U.S.C. §101, IPFrontline™ Intellectual Property & Technology Magazine (September 17, 2008)
PRACTICAL STRATEGIES TO DEVELOP AN IP PORTFOLIO AND AVOID MISTAKES PERTAINING TO IP FOR HIGH-TECH STARTUP AND SMALL TECHNOLOGY COMPANIES presented at VACETS Technical International Conference 2005 (VTIC'05) in Milpitas, California and republished by IPFrontline™ Intellectual Property & Technology Magazine, on April 26, 2006
Presentations
Mr. Bui has spoken and given lectures and presentations on intellectual property subjects for various associations and at intra-company seminars on patent strategy. Examples of such presentations are as follows:
Hung H Bui, In re Bilski, No. 2007-1130 (Fed. Cir. 2008): Hedging the Scope of Patentable Subject Matter under 35 USC §101 before the AIPLA IP Practice in Japan Committee prior to the AIPLA Annual Meeting in Washington DC (October 21, 2008)
Hung H Bui, An Intellectual Property Update before the National Business Institute (October 17, 2008).
Hung H Bui, Where Are the USPTO and the Federal Circuit Headed With 35 USC §101? Back To The Future: Trends in Patentability of Computer Software, Data Signals and Business Methods on behalf of AIPLA Far East Committee to Korea Patent Attorneys Association (KPAA) (June 23, 2008).
Hung H. Bui, Patent Trolls: Are Patent Trolls Still Viable In View of Recent Case Law & Proposed Patent Reform Legislation?, before the Institute of Intellectual Property (IIP), the Japan Patent Office (JPO), and the Japan Patent Attorney Association (JPAA) in conjunction with AIPLA Japan Committee (April 14-17, 2008).
Hung. H. Bui,KSR AND ITS PROGENY: NOT SO PATENTLY OBVIOUS, the IP Practice in Japan Committee of the American Intellectual Property Law Association at the AIPLA Annual Conference Pre-Meeting (October 16, 2007)
Hung. H. Bui, Recent Developments in US IP Law, Industrial Technology Research Institute, Hsinchu Taiwan on October 8, 2007.
Hung. H. Bui, Recent Developments in US IP Law (The details of the Patent Reform Act of 2005/2006/2007 and the Post KRS Obviousness Cases and The New USPTO rules on claim examination and continuation applications), Asian Pacific Intellectual Property Association (APIPA) on October 9, 2007.
Hung. H. Bui, Post-KSR lower court decisions, IP Practice in Japan Committee of the American Intellectual Property Law Association, AIPLA Annual Conference Pre-Meeting (October 16, 2007).
Hung. H. Bui, Best Practices & Prosecution StrategiesPost-Phillips, Recent IP Cases before the U.S. Supreme Court (including KSR Int’l Co. v. Teleflex, Inc. (obviousness standard), MedImmune v. Genetech (licensing standard), and Microsoft v. ATT (extraterritorial scope of U.S. patent protection) present on June 1, 2007 before the Industrial Technology Research Institute (ITRI), Hsinchu Tawian
Prosecution Strategies Post-Phillips to Maximize Protection and to Avoid Future Challenges and Invalidation, Pre-Meeting of IP Practice in Japan Committee of the American Intellectual Property Law Association for AIPLA Mid-Winter Conference (February 23-24, 2007)
Strategies for Patent Claim ConstructionProtecting Claims Post Phillips v. AWH, to be presented January 9, 2007 and sponsored by Strafford Publications, Inc.
Patent Enforceability - Increasing the Odds, presented on October 26, 2006 and sponsored by Strafford Publications, Inc.
An Overview of IP Considerations for High-Tech Practitioners , presented on September 30, 2006 before the National Conference of Vietnamese American Attorneys in San Jose, California.
"Development & Management of a Global Patent Portfolio: Strategies for Taiwan Technology Companies" at the AIPLA Committee – IP Practice in the Far East Seminar in Taipei presented on May 23, 2006 before the Taiwan Intellectual Property Office, Ministry of Economic Affairs, Taiwan