Profile
Katie Albanese is a registered patent attorney focusing her practice on litigating intellectual property matters, including patents, trademarks, and copyright. Katie’s complex patent litigation experience includes medical devices, ANDA/Hatch Waxman matters, electronics, and a variety of software-based technologies. In addition to litigation, Katie handles patent prosecution matters before the U.S. Patent and Trademark Office, such as drafting and prosecuting patents and handling post-grant review proceedings before the Patent Trial and Appeal Board including inter partes reviews. Katie also has experience before the U.S. International Trade Commission (ITC), having handled investigations under Section 337 of the Tariff Act of 1930. Katie’s trademark experience includes protection, enforcement, and defense of trademarks and trade dress in federal courts throughout the United States. Katie has also handled defense of trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board.
From 2022-2023, Katie clerked under Chief Judge Rodney Gilstrap in the U.S. District Court for the Eastern District of Texas. While in law school, Katie externed with the Honorable Richard G. Andrews in the U.S. District Court for the District of Delaware.
Capabilities
Experience
- Lexos Media IP, LLC v. eBay, Inc. (N.D. Cal.): Counsel for eBay in defense of a 3 patent case related to cursor modification technology. Secured transfer of case out of the Western District of Texas and successfully pursued dismissal of certain patent claims for lack of priority. Also served as counsel in parallel IPR proceedings for which eBay’s joinder motions were granted.
- Vetnos LLC v. SidePrize d/b/a PrizePicks (N.D. Ga.): Counsel for a daily fantasy sports company in a patent enforcement and trade secret case.
- Sachiskin v. Seemark Brands, Inc. (S.D.N.Y): Counsel for a skincare company in defense of lawsuit for alleged trademark infringement.
- Andrew Walker v. eBay, Inc. et al. (S.D.N.Y.): Counsel for eBay in defense of a design patent action related to an oil-burning lamp. Secured dismissal of complaint for failure to state a claim for infringement.
- Invicta Watch Company of America v. Aeromantenimiento S.A. (T.T.A.B.): Counsel for an El Salvadoran aircraft maintenance company in defense of trademark cancellation proceeding. Also served as counsel in parallel expungement proceeding at the United States Patent and Trademark Office as well as in a declaratory judgment action in the Southern District of Florida.
- Soltura LLC d/b/a Bucanero USA v. Cerveceria La Tropical et al. (S.D. Cal.): Counsel for a Miami-based beer manufacturer in the defense of a suit for trade dress infringement on beer cans. Secured motion to dismiss for improper venue. Also served as counsel in follow-up declaratory judgment action in the Southern District of Florida.
- Harper Engineering Corp. v. FACC Operations GmbH, et al: Counsel for a global aerospace solutions provider in patent and trade secret litigation brought by a contract manufacturer regarding overhead bin technology.
- Certain Filament Light-Emitting Diodes and Products Containing Same (II); Inv. No. 337-TA-1220: Representing Satco in the defense of a suit brought at the International Trade Commission by complainant, the Regents of the University of California at Santa Barbara, over four patents relating to LEDs. The trial was conducted from Aug. 30-Sept. 3, 2021. Also serving as counsel in parallel district court litigations on the same patents which have been stayed pending the resolution of the ITC investigation.
- Pop Top Corp. v. Rakuten Kobo Inc. (N.D. Cal.): Counsel for Rakuten Kobo in patent litigation relating to a method of highlighting internet documents. Obtained summary judgment of non-infringement.
- Sinostar Global Ltd. v. Rakuten Kobo, Inc. (E.D. Tex.). Counsel for Rakuten Kobo in patent litigation relating to electronic book hardware technology.
- Vifor Fresenius Medical Care Renal Pharma Ltd., et al. v. Teva Pharmaceuticals USA, Inc. (D. Del.): Counsel for Teva in a fully remote Hatch-Waxman bench trial involving the VELPHORO® patents directed to iron oxy-hydroxide formulations and associated methods for treating hyperphosphatemia.
- Orthopaedic Hospital v. Aesculap Implant Systems (D. Del.): Counsel for Aesculap in patent suit relating to joint replacement technology.
- Theallet, et al. v. H&M Hennes and Mauritz, L.P. (S.D.N.Y.):Counsel for H&M in litigation relating to alleged copyright and trade dress infringement.
- Uniloc 2017 LLC v. Samsung Electronics America, Inc. (E.D. Tex.): Counsel for Samsung in 3 patent cases alleging infringement of patents concerning TV receivers, wireless communication networks, and anti-theft protection for mobile phones and other devices.
- Sovereign Peak Ventures, LLC v. LG Electronics, Inc. (E.D. Tex.): Counsel for LG Electronics in a case involving 7 patents concerning streaming video, WiFi Direct and electronic assistants.
- In the Matter of Certain Electronic Devices With Optical Filters and Optical Sensor Systems and Components Thereof (ITC): Counsel for Optrontec Inc. in an ITC action brought by Viavi Solutions Inc. involving three patents concerning 3D optical filters and sensors systems used in cellphones, tablets and other mobile devices.
- Represented Black Dragon Capital in connection with its acquisition of Grass Valley, a leading technology supplier of advanced broadcast and media solutions, with operations in over 20 different jurisdictions worldwide.
- Represented an affiliate of Centre Partners in connection with its acquisition of Outdoor Recreation Company of America, LLC, a leading manufacturer of coolers and various drinkware.
- Judicial Extern, Hon. Richard G. Andrews, U.S. District Court for the District of Delaware, 2017
- Patent Professional Intern, IBM, 2017
Recognition & Leadership
- Team Member, a Best Law Firms® “Law Firm of the Year” in Information Technology Law, 2024
- Winner, Federal Circuit Bar Association, George Hutchinson Writing Competition, 2019
- Mentor, Leading Youth Through Empowerment (Wilmington, DE), 2020-2022
- Member, Federal Circuit Bar Association
- Member, CHiPS
- Volunteer, Friends of Marshall Animals Charity, Texas
- Member, American Association of Physicists in Medicine, 2014-Present
- Member, American Physical Society, 2009-Present
- Member, American Bar Association, 2016-Present
- Member, Benjamin Franklin American Inns of Court, 2016-2019
- Member, New York Intellectual Property Law Association, 2016-Present
- Member, Croatian-American Bar Association, 2016-Present
- Member, American MENSA, 2013-Present
- Scholarship Judge, 2013-Present
Credentials
Education
-
J.D., Villanova University School of Law
- Concentration in Intellectual Property Law
- Nominated, Jan Jancin Award for Excellence in the Study of Intellectual Property
- President, Intellectual Property Society
- President, Fashion Law Society
-
M.S., Medical Physics, Duke University
- Recipient, Director’s Award for Exemplary Service
-
B.A., Physics, New York University
- Minor in Mathematics
Clerkships
- U.S. District Court for the Eastern District of Texas, 2022-2023
Admissions
- New York
- U.S. Patent and Trademark Office
- U.S. District Court for the Eastern District of New York
- U.S. District Court for the Southern District of New York
- U.S. District Court for the Eastern District of Texas
- U.S. Court of Appeals for the Federal Circuit
- Supreme Court of the United States
Languages
- Spanish, Conversational