Elliot Hales
PEOPLE

Elliot Hales

Associate
hales.elliot@dorsey.com

Overview

ELLIOT HELPS CLIENTS LITIGATE INTELLECTUAL PROPERTY DISPUTES IN A WIDE ARRAY OF INDUSTRIES AND VENUES.

Elliot is experienced in patent infringement litigation in the International Trade Commission, in post-grant proceedings before the United States Patent and Trademark Office, and has litigated patent disputes in U.S. District Courts in Utah, California, Delaware, Tennessee, Minnesota, and Texas. He has also litigated trademark disputes internationally and domestically. Elliot has also helped his clients efficiently enforce their intellectual property portfolios without resort to federal litigation. Where litigation is required, Elliot places a particular emphasis on thoughtful, early discovery and motion practice that can significantly reduce the duration and expense of the dispute.

Education & Admissions

Cornell University (J.D., 2013)

Brigham Young University (B.A., 2010)

Admissions

  • California
  • Utah
  • U.S. District Courts for the Districts of Utah, Northern and Central Districts of California, and Western District of Texas

Languages

  • Norwegian

Experience

Representative Litigation

  • Secured favorable settlement of copyright infringement claim for unlicensed use of client’s video footage in a music video
  • Secured through UDRP arbitration the reassignment of web domain infringing client’s registered trademark
  • Secured on appeal to the Federal Circuit a reversal of a summary judgment decision (false advertising)
  • Secured pre-trial settlement for respondent in ITC investigation of infringement of more than 20 claims in related patents (child carrier products)
  • Moved for and received dismissal of inequitable conduct allegations; settled patent infringement allegations before substantial discovery took place (carbon fiber arrow shafts)
  • Moved for and received pre-discovery dismissal of claims under Section 101 (graphical process simulation)
  • Moved for pre-discovery summary judgment of invalidity under Section 101 and settled case shortly before hearing on the motion (weight-loss medication)
  • Secured cancellation of every patent claim asserted against client through IPR proceedings (essential oil diffusion hardware)
  • Successfully defended validity of each of more than 40 challenged claims in an instituted IPR (video conferencing technology)
  • Secured ITC finding that multiple claims in multiple asserted patents were valid and infringed, meriting an exclusion order (networking hardware and software)
  • Secured pre-trial settlement for defendant in multi-patent ITC Investigation (symbol recognition technology)
  • Secured preliminary injunction for infringement of multiple claims of multiple patents; case settled on favorable terms shortly thereafter (hunting scent control)

Industries & Practices

  • Commercial Litigation
  • Electronic Discovery
  • Intellectual Property
  • Intellectual Property Litigation
  • Technology
  • Trademark, Copyright & Advertising

Professional & Civic

Professional Achievements

  • Immigration: Safe Haven Award recipient; assisted DACA applicants secure protected status
  • Election Protection: drafted jurisdictional rights summaries to assist voters; managed call-in center for voting-day rights disputes
  • Identity theft: Assisted former foster child dealing with institutional identity theft and resulting tax burden

Accolades

Contributed 50+ Pro Bono Hours in 2020

  • Contributed more than 50 Challenge pro bono hours, 2020
Elliot Hales