André J. Bahou

Founding Member

Email: AJBahou@BahouMiller.com
Phone: 615-988-9017

André J. Bahou

A.J. Bahou is a trial attorney, mediator, arbitrator, and registered patent attorney who practices in the area of electrical and computer engineering technologies, Blockchain, data privacy, security, healthcare, and intellectual property law, including litigation of patents, copyrights, trademarks, and trade secrets. He has extensive experience in all aspects of infringement litigation, from pre-complaint investigation through trial and appeal. Mr. Bahou has worked on cases involving varying technologies such as Blockchain, smart meters, virtual reality, artificial intelligence, machine learning, medical devices, computer hardware, software, and Internet security systems. He has represented clients in electronic discovery disputes, motion practice, claim construction (“Markman”) hearings, PTAB trials, federal court trials and several appeals before the United States Court of Appeals for the Federal Circuit.

Mr. Bahou co-founded Bahou Miller PLLC and is a Member of the firm. He is a Board Member on LaunchTN, Board Member for Middle Tennessee ISSA (Information Systems Security Association), Chair of the Tennessee Bar Intellectual Property Law Executive Council, and past President of the Tennessee Intellectual
Property Law Association.

Education

  • J.D. and LL.M. in IP Franklin Pierce Law Center at the University of New Hampshire
  • M.S. with Honors in Electrical and Computer
    Engineering from The Johns Hopkins University
  • MBA from Middle Tennessee State University
  • B.S. in Engineering from Tennessee Tech

 

Memberships

  • Giles Sutherland Rich American Inn of Court (Barrister)
  • American Intellectual Property Law Association
  • Federal Circuit Bar Association
  • Tennessee Bar Association

Admissions

  • United States District Courts for the Middle District of Tennessee,
  • Western District of Tennessee, Eastern District of Tennessee, District of Columbia, Maryland, and Various Courts
  • United States Court of Appeals, Federal Circuit
  • United States Patent & Trademark Office
  • United States Supreme Court

Presentations, Publications, And Recognitions

  • Blockchain – An Introduction for IP Lawyers, November 10, 2017. Presented to the Tennessee Intellectual Property Law Association, Nashville, Tennessee.
  • Attorney Ethical Obligations for Cybersecurity, SaaS, & GDPR, November 3, 2017. Presented to the Tennessee Bar Association, Nashville, Tennessee.
  • Blockchain and How it will Change Startup Entrepreneurs, September 28, 2017. Presented to LaunchTN, Nashville, Tennessee.
  • Blockchain: How will it Change Cybersecurity and HIPPA, September 19, 2017. Presented to Information Security Conference (InfoSec 2017), Nashville, Tennessee.
  • Laches Defenses in Patent and Copyright Claims, May 5, 2017. Presented CLE to the Tennessee Intellectual Property Law Association, Nashville, Tennessee.
  • Laches Defenses in Patent and Copyright Claims, May 5, 2017. Presented CLE to the Tennessee Intellectual Property Law Association, Nashville, Tennessee.
  • Legal Market Disruption and Ethical Obligations for Lawyers, April 5, 2017. Presented CLE to the Tennessee Bar Association Intellectual Property Law Conference, Nashville, Tennessee.
  • Attorney Ethical Obligations for Cybersecurity in Law Firms, February 17, 2017. Presented CLE to the Tennessee Bar Association Technology and Law Practice Management Conference, Nashville, Tennessee.
  • Ethical Obligations in Evolving Legal Market, January 26, 2017. Presented CLE to the Tennessee Bar Association Environmental Law Section, Nashville, Tennessee.
  • Panel Member –Developing, Defending and Leveraging Intellectual Property, May 18-19, 2016. Presented to the Southeastern Medical Device Association (SEMDA) 10th Annual Conference at Music City Center, Nashville, TN.
  • Cybersecurity and Attorneys’ Ethical Obligations in Practice of Law, February 19, 2016. Presented CLE to the Tennessee Bar Association Technology and Law Practice Management Conference, Nashville, Tennessee.
  • Ethical Issues in Cloud Computing, December 11, 2015. Presented CLE on behalf of M. Lee Smith Publishers, Tennessee Attorney’s Memo, and Alabama Law Weekly to Attorney Technology Conference in Nashville, Tennessee.
  • Panel Member – Inter Partes Review at the U.S. Patent & Trademark Office, November 4, 2015. Presented CLE program sponsored by Sorell, Lenna, & Schmidt, Memphis, Tennessee.
  • Ethical Issues in Using Gmail and Dropbox, April 14, 2015. Presented to the Rutherford County Lions Club (Judges and Lawyers Group), Murfreesboro, Tennessee.
  • Ethical Issues in Using Gmail and Dropbox, February 26, 2015. Presented to the Tennessee Bar Association (Law Tech Conference), Nashville, Tennessee.
  • Panel Member – Data Loss Prevention (DLP) with a Twist: Taking Care of Business, February 25, 2015. Presented to the Information Systems Security Association (ISSA) and IT Certification and Security Experts (ISC)2, Nashville, Tennessee.
  • Panel Member – Inter Partes Review at the U.S. Patent & Trademark Office, November 3, 2014. Presented CLE program sponsored by Sorell, Lenna, & Schmidt, Memphis, Tennessee.
  • Attorney Ethics and Cloud Computing, August 16, 2014. Presented to the Tennessee Bar Association (General Practice Seminar), Nashville, Tennessee.
  • Cybersecurity Protects Your Company’s Valuable Trade Secrets, March 2014. Published in the ISSA Journal, vol. 12, issue 3 (March 2014) (Co-authored with Fredrick Scholl, PhD).
  • Guest Lecturer, Lipscomb University, Nashville TN (November 2012), Introduction to Intellectual Property for Masters of Information Technology Management.
    Ethical Issues with Cloud Computing, May 6, 2011. Presented to the Tennessee Intellectual Property Law Association, Nashville, Tennessee.
  • Legal Issues with Cloud Computing, November 12, 2010. Presented to the Tennessee Intellectual Property Law Association, Nashville, Tennessee.

Selected Matters*

  • Nicor, Inc. v. Universal Companies, LLC: Patent infringement matter regarding smart meter technology.
  • Nanolumens, Inc. v. PixelFLEX, Inc.: Patent infringement matter regarding flexible and rigid LED display panels for large venues such as concerts, malls, stadiums, etc.
  • Prism Technologies LLC. v. T-Mobile USA, Inc.: Appeals to the U.S. Supreme Court (17-__) and Court of Appeals for the Federal Circuit (16-2013) regarding jury trial of patent infringement matter involving authentication of mobile devices to an IP-based network.
  • Prism Technologies LLC. v. Sprint Spectrum, L.P.: Appeals to U.S. Supreme Court (17-430) and Court of Appeals for the Federal Circuit (2016-1456, 2016-1457, 2018-1108) regarding jury trial of patent infringement matter involving authentication of mobile devices to an IP-based network.
  • PNC Bank, N.A. v. Secure Axcess, LLC: Appeals to U.S. Supreme Court (17-350) and Court of Appeals for the Federal Circuit (16-1353) in Covered Business Method Patent Review on subject matter  regarding authenticating webpages to prevent phishing attacks. (CBM2014-00100).
  • PNC Bank, N.A. v. Secure Axcess, LLC: Represent patent owner in Covered Business Method Patent Review on subject matter regarding authenticating webpages to prevent phishing attacks. (CBM2015-00039).
  • T. Rowe Price Investment Services, Inc., T. Rowe Price Associates, Inc., Datacard Group, and Entrust, Inc. v. Secure Axcess, LLC: Represent patent owner in Covered Business Method Patent Review on subject matter regarding authenticating webpages to prevent phishing attacks. (CBM2015-00027).
  • Maxim Group LLC v. Prism Technologies, LLC, Financial Industry Regulatory Authority (FINRA) Dispute Resolution, Arbitration No. 15-00837 (Filed April 10,  2015). Represented respondent Prism Technologies regarding contractual dispute over transaction fee related to public company merger.
  • Bank of the West; Santander Bank, N.A.; Ally Financial, Inc., Ally Bank, National Association; Raymond James & Associates, Inc., Raymond James Financial, Inc.; Trustmark National Bank; Nationwide Bank, Nationwide Financial Services, Inc.,Nationwide Corporation, Nationwide Mutual Insurance Company; Synchrony Bank, General Electric Company, GE Capital Bank and General Electric Capital Corporation; Commerce Bank, Commerce Bancshares, Inc.; and, Cadence Bank, National Association, v. Secure Axcess, LLC: Represent patent owner in Covered Business Method Patent Review on subject matter regarding authenticating webpages to prevent phishing attacks. (CBM2015-00009).
  • EMC Corporation and RSA Security, LLC v. Secure Axcess, LLC: Represent patent owner in Inter Partes Review on patents related to authenticating data while accessing webpages. (IPR2014-00475).
  • PNC Bank, N.A., U.S. Bank, N.A., and U.S. Bancorp v. Secure Axcess, LLC: Represent patent owner in Covered Business Method Patent Review on subject matter regarding authenticating webpages to prevent phishing attacks. (CBM2014-00100).
  • Baxter Healthcare Corp. v. Millenium Biologix, LLC: Represent patent owner in an Inter Partes Review for claims that methods of using a synthetic biomaterial compound comprising calcium, oxygen, and phosphorous, wherein a portion of at least one of these elements is substituted with an element having an ionic radius of approximately 0.1 to 0.6 Å. (IPR2013-00590 and IPR2013-00591 re U.S. Patent No. 6,585,992).
  • Baxter Healthcare Corp. v. Millenium Biologix, LLC: Represent patent owner in an Inter Partes Review for claims that cover a bone grafting synthetic biomaterial compound based on stabilized calcium phosphates and adapted for supporting bone cell activity. (IPR2013-00582 and IPR2013-00583 re U.S. Patent No. RE41,251).
  • Secure Axcess v. Ally Bank, et al. (~12 other banks): Patent infringement matter involving image authentication while accessing webpages to reduce the likelihood of phishing.
  • Millenium Biologix, LLC v. Baxter Healthcare & ApaTech Ltd.: Patent infringement matter regarding bone grafting chemical compound and method of treatment.
  • Secure Axcess v. Bank of America, et al. (~15 other banks): Patent infringement matter involving image authentication while accessing webpages to reduce the likelihood of phishing.
  • Prism Technologies LLC. v. AT&T Mobility, LLC: Patent infringement matter involving authentication of mobile devices to an IP-based network.
  • Prism Technologies LLC. v. Cellco Partnership dba Verizon Wireless.: Patent infringement matter involving authentication of mobile devices to an IP-based network.
  • Prism Technologies LLC. v. Sprint Spectrum, L.P.: Patent infringement matter involving authentication of mobile devices to an IP-based network.
  • Prism Technologies LLC. v. T-Mobile USA, Inc.: Patent infringement matter involving authentication of mobile devices to an IP-based network.
  • Prism Technologies LLC. v. U.S. Cellular Corp.:Patent infringement matter involving authentication of mobile devices to an IP-based network.
  • Prism Technologies LLC. v. Adobe Systems, Inc., Autodesk, Inc, McAfee, Inc., National Instruments Corp., Nuance Communications, Inc., Quark, Inc., Sage Software, Inc., Symantec Corp., Mathworks, Inc., and Trend Micro, Inc.: Patent infringement matter involving software product activation for authenticating software using the Internet.
  • Prism Technologies LLC v. RIM (Research in Motion) Ltd. (ITC): Patent infringement investigation involving mobile cellular devices for authenticating users over an untrusted network, such as the Internet.
  • Prism Technologies LLC v. RIM (Research in Motion) Ltd. and Microsoft Corp.: Patent infringement case involving smart cards, software product activation, and mobile cellular devices for authenticating users over an untrusted network, such as the Internet.
  • Tulip Computers, Int’l B.V. v. Dell Computer Corp.: Patent infringement case involving computer riser card technology. Cross Medical Products, Inc. v. Medtronic Sofamor Danek, Inc. et al.: Patent infringement case involving several patents directed to spinal implant products.
  • Prism Technologies LLC v. VeriSign, Inc., Computers Associates International, Inc., Netegrity, Inc., RSA Security, Inc., and Johnson and Johnson Services, Inc.: Patent infringement case involving software and hardware for authenticating users over an untrusted network, such as the Internet.
  • Juniper Networks, Inc. v. Dr. Abdullah Ali Bahattab: Patent infringement and invalidity matter regarding network routers.
  • DePuy Spine, Inc. et al. v. Medtronic Sofamor Danek, Inc. et al.: Patent infringement case involving pedicle screw spinal implants.
  • Medtronic Sofamor Danek, Inc. et al. v. NuVasive, Inc.: Patent infringement matter involving twelve patents on surgical methods, minimally invasive surgery, and medical devices that are implanted during spinal surgery.
  • Fastenetix LLC v. Medtronic Sofamor Danek, Inc. et al.: Patent infringement case involving spinal implants.
  • Related Companies L.P. v. Government of the District of Columbia: Litigation involving the disposition of the old D.C. Convention Center site, real estate, and construction.

* Past results are reported to provide the reader with an indication of the type of litigation in which I have practiced. These matters, however, do not and should not be construed to create an expectation of result in any other case, as all cases are dependent upon their own unique fact situation and applicable law.

Events

  • Events list coming soon.

Areas of Focus

  • Intellectual Property Litigation
  • Blockchain Technology
  • Patent Litigation & Prosecution
  • PTAB Trials
  • Patent Appeals to Federal Circuit & U.S. Supreme Court
  • Trade Secrets
  • Data Privacy & Cybersecurity
  • SaaS Agreements
  • EU GDPR
  • Copyright Litigation
  • Trademark Litigation & Prosecution
  • Mediation & Arbitration

Professional Honors & Activities

  • Giles Sutherland Rich American Inn of Court (Barrister)
  • American Intellectual Property Law Association
  • Federal Circuit Bar Association
  • Tennessee Bar Association

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