TwitterLinkedInShare

A.J. Bahou

A.J. Bahou is an intellectual property attorney who focuses on the intersection of law and technology. A registered patent attorney, trial lawyer, mediator and arbitrator, A.J. has extensive experience in the areas of electrical and computer engineering technologies, including Blockchain, virtual reality, medical devices, computer hardware and software, and Internet security systems. With 15 years of patent litigation experience, A.J. handles the full spectrum of intellectual property litigation from pre-complaint investigation through trial and appeal in matters involving patents, copyrights, trademarks, trade secrets, and commercial disputes. He has represented both plaintiffs and defendants in IP litigation in jurisdictions across the United States.

A.J. often serves as outside general counsel for technology companies that value his assistance with patent prosecution and enforcement as well with the drafting of employment and independent contractor agreements that are critical tools in the protection of intellectual property assets.

A significant segment of A.J.’s practice involves emerging technologies, most notably Blockchain and artificial intelligence. He has filed patent applications for clients that are utilizing distributed ledger technology and artificial intelligence/machine learning tools in educational, marketing and healthcare contexts.

Professional and Industry Leadership

A.J. serves on the Boards of Directors of LaunchTN, the Middle Tennessee chapter of the Information Systems Security Association and the Tennessee Intellectual Property Association. He currently chairs the Intellectual Property Executive Council of the Tennessee Bar Association and is the former chair of the Nashville Bar Association’s Intellectual Property Law Section. He was recently appointed to the Evolving Legal Market Committee of the Tennessee Bar Association which focuses on the changing nature of the practice of law.

Experience

  • SmileDirectClub, LLC v. SnapDent, LLC d/b/a SnapCorrect – Federal Lanham Act trademark infringement, unfair competition, and state trademark infringement action.
  • Forever Gifts, Inc. v. Quanxin Lighting & Electrical (USA) Inc. – Defended company regarding patent infringement for lighting devices.
  • 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.
  • Prism Technologies LLC. v. T-Mobile USA, Inc. – Appeals to the U.S. Supreme Court (17-716) 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 and damages award of $30 million 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-__) 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 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.

Professional

  • Member, Giles Sutherland Rich American Inn of Court (Barrister)
  • Member, American Intellectual Property Law Association
  • Member, American Bar Association
  • Member, Federal Circuit Bar Association
  • Member, Board of Directors, LaunchTN, 2011-present
  • Member, Board of Directors, Middle Tennessee Chapter, Information Systems Security Association, 2017-present
  • Member, Tennessee Intellectual Property Law Association
    • President, 2014-2015
    • Member, Board of Directors, 2010-present
  • Chair, Tennessee Bar Association Intellectual Property Executive Council, 2017-2018
  • Chair, Nashville Bar Association Intellectual Property Law Section, 2012-2014
  • Executive Counsel, Tennessee Bar Association, General Practice Section, 2012-2014

Prior Affiliations

  • Managing Member, Bahou Law PLLC, Nashville, Tenn., 2009-2018
  • Vice President, Chief Legal Officer and Chief Intellectual Property Officers, Prism Technologies LLC, Nashville, Tenn., 2009-2018
  • Attorney, Dewey & LeBoeuf LLP, Washington, D.C., 2007-2009
  • Attorney, Robins, Kaplan, Miller & Ciresi LLP, 2003-2007
  • Legal Intern for the Honorable Steven J. McAuliffe, United States District Court, District of New Hampshire, 2003

Education

  • J.D., Franklin Pierce Law Center,
    • Senior Articles Editor, IDEA® The Journal of Law and Technology
  • LL.M., Franklin Pierce Law Center, Intellectual Property
  • M.S., with honors, Johns Hopkins University, Electrical and Computer Engineering
  • M.B.A., Middle Tennessee State University
  • B.S.C.E., Tennessee Technological University

Legal Services

Industries Served

Bar Admissions

  • Tennessee
  • District of Columbia
  • Maryland, Inactive

Court Admissions

  • U.S. Patent and Trademark Office
  • United States Court of Appeals Federal Circuit
  • United States Supreme Court
  • U.S. District Court, All Districts of Tennessee
  • U.S. District Court, Eastern District of Texas