Lawyer Bio : Barry J. Herman

Barry Herman is a member of Womble Carlyle’s Intellectual Property Group practicing in the firm’s Baltimore office. A chemical engineer by training, Barry litigates matters across a wide array of technologies in the chemical, mechanical, and electrical arts. He represents both domestic and foreign clients in a full range of patent, trademark and other intellectual property disputes before the United States Federal District Courts, the International Trade Commission (ITC), and the United States Patent & Trademark Office.

Barry has significant first-chair trial experience and has consistently demonstrated the ability to provide cost-effective representation by tailoring strategy and staffing to meet the needs of the client for that particular case.

Barry served as first-chair litigator in a landmark patent infringement case for client Saint-Gobain, one of the world’s largest glass companies and the leading windshield manufacturer for European cars. Saint-Gobain won a $10.9 million damages award against a Chinese windshield manufacturer, and the jury found the infringement was willful. The district court subsequently doubled the damages award and awarded Saint-Gobain attorneys’ fees and costs for a total award of over $24 million.

Barry also has significant appellate experience at the Court of Appeals for the Federal Circuit. In a seminal case involving the applicability of Section 102(g), Barry successfully argued that United States reproduction of technology conceived overseas does not qualify a United States manufacturer as a prior inventor under the statute. Solvay S.A. v. Honeywell Int'l, Inc., 622 F.3d 1367 (Fed. Cir. 2010). He has also represented other industry leaders such as DAK Americas, SMC Corp., and Mirowski Family Ventures in various matters in district courts across the country and before the ITC.

Barry has successfully represented clients in trademark and trade secret litigation.  While his focus is litigation, Barry’s practice also includes drafting opinions and advising clients with respect to patent portfolio development, management and optimization.
 
Previously, Barry worked at a large intellectual property boutique in Alexandria, VA, where he was co-chair of the patent litigation and ITC practice groups. Prior to law school, he worked for several years as a chemical engineer, first in a hydrosulfuric acid manufacturing plant, and then in various oil refineries on the East Coast, where he specialized in anti-foulant and anti-corrosion chemical technology.

Representative Matters

• Serving as first chair, represented Saint-Gobain in a patent infringement action involving windshields in which the jury returned a $10.9 million verdict in favor of Saint-Gobain and found that Xinyi willfully infringed the two patents-in-suit. On March 31, 2010 Judge Sara Lioi doubled the damages Xinyi must pay Saint-Gobain Autover for its willful infringement of Saint-Gobain’s patents, and ordered payment of attorney fees and costs for a total award of over $24 million. Saint-Gobain v. Xinyi, No. 1:06-cv-2781 (N.D. Ohio 2010)
• Represented SMC in a patent infringement action brought by Tokyo Keiso concerning an ultrasonic flow meter. The district court held the patent invalid as obvious on summary judgment and the Federal Circuit affirmed the holding. Tokyo Keiso v. SMC Corporation, 2009 U.S. App. LEXIS 302 (Fed. Cir. Jan. 9, 2009)
• Represented SMC in a § 337 proceeding before the ITC involving connectors used in pneumatic control systems and was instrumental in the Commission’s initial finding of non-infringement. In the Matter of Certain Connecting Devices, 337-TA-587
• Represented co-plaintiff MFV in patent infringement action concerning an implantable cardioverter defibrillator. After the district court held the patent infringed but invalid, the Federal Circuit reversed the invalidity finding and found in favor of the plaintiffs, remanding the case to the district court for a determination of damages. Cardiac Pacemakers, Inc. and Mirowski Family Ventures, LLC v. St. Jude Medical, 576 F.3d 1348 (Fed. Cir. 2009)