Tom Makin focuses his practice on patent litigation, both in federal court and before the International Trade Commission. He also manages significant inter partes proceedings before the Patent & Trademark Office incident to, or in lieu of, litigation. And, he counsels clients on a broad spectrum of patent issues, including infringement, invalidity, and unenforceability; the relative value of patents in specific technical fields; and licensing issues, including in the context of bankruptcy.

Mr. Makin has represented both plaintiffs and defendants in patent cases involving a wide range of technologies, including automotive and aircraft safety and propulsion systems; smartphones and telematics systems; e-commerce applications; imaging and video systems, including cameras, displays, and medical devices; and semiconductor fabrication and circuitry.

Mr. Makin’s clients in these areas include Toyota, Elpida Memory (subsidiary of Micron Technology), Olympus, Nippon Steel & Sumitomo Metal, Airbus, Fan Vision Entertainment, and Fresh Direct.  Other clients that he has represented include Fisher-Price, Sony, Protex Security Systems, and Magnetar Capital.

Representative Experience

  • Toyota, as lead counsel, in multiple ongoing cases originally involving 24 patents.  Multiple patents dismissed before claim construction.  Three of the remaining cases are currently stayed pending resolution of 12 inter partes review petitions filed by Toyota, all of which were instituted by the Patent Trial and Appeal Board. American Vehicular Sciences LLC v. Toyota et al. (E.D. Tex).
  • Elpida (subsidiary of Micron Technology) in an eight-patent semiconductor memory litigation involving district actions and an ITC investigation, which was successfully settled after summary determination briefing and prior to a hearing.  Intellectual Ventures v. Elpida et al. (D.Del., W.D. Wash., ITC).
  • Toyota in a litigation relating to vehicle telematics, successfully stayed pending inter partes reexamination.  In all three reexaminations, all claims stand rejected.  Fernandez v. Toyota (C.D. Cal.). 
  • Toyota in a six-patent litigation involving district court actions and an ITC investigation, in which Toyota avoided the injunction on hybrid cars sought by plaintiff.  Paice LLC v. Toyota et al. (E.D. Tex., ITC).
  • Sony in a summary judgment of noninfringement of an asserted patent on V-chip television technology.  Soundview v. Sony et al. (D. Conn.).
  • Olympus in a complex, eight-patent litigation regarding swallowable endoscopes, settled on behalf of Olympus after the counter-assertion of Olympus’s patent portfolio.  Olympus v. Given Imaging (E.D. Pa.).
  • Airbus in a litigation relating to fuel tank inerting systems, successfully stayed pending inter partes reexamination.  In all four reexaminations, all asserted claims stand rejected.  Firepass v Airbus (EDNY).
  • Fisher-Price in a bench ruling of invalidity and noninfringement of an asserted patent on learning toys.  Leapfrog v. Fisher-Price (D. Del.).
  • Automotive defendants in a summary judgment of non-infringement of asserted patents on fuel injectors.  Abbey v. Mercedes et al. (D. Fla.).

representative matters

Additional Representative Matters

  • Toyota, as lead counsel, in multiple ongoing cases originally involving 24 patents.  Multiple patents dismissed before claim construction.  Three of the remaining cases are currently stayed pending resolution of 12 inter partes review petitions filed by Toyota, all of which were instituted by the Patent Trial and Appeal Board. American Vehicular Sciences LLC v. Toyota et al. (E.D. Tex).
  • Elpida (subsidiary of Micron Technology) in an eight-patent semiconductor memory litigation involving district actions and an ITC investigation, which was successfully settled after summary determination briefing and prior to a hearing.  Intellectual Ventures v. Elpida et al. (D.Del., W.D. Wash., ITC).
  • Toyota in a litigation relating to vehicle telematics, successfully stayed pending inter partes reexamination.  In all three reexaminations, all claims stand rejected.  Fernandez v. Toyota (C.D. Cal.). 
  • Olympus in a complex, eight-patent litigation regarding swallowable endoscopes, settled on behalf of Olympus after the counter-assertion of Olympus’s patent portfolio.  Olympus v. Given Imaging (E.D. Pa.).
  • Airbus in a litigation relating to fuel tank inerting systems, successfully stayed pending inter partes reexamination.  In all four reexaminations, all asserted claims stand rejected.  Firepass v Airbus (EDNY).
  • Automotive defendants in a summary judgment of non-infringement of asserted patents on fuel injectors.  Abbey v. Mercedes et al. (D. Fla.).
bar and court admissions
  • New York
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Southern District of New York
professional organizations

International Association for the Protection of Intellectual Property ("AIPPI")
American Society of Mechanical Engineers
Sigma Xi, the Scientific Research Society