Engineer Electrical
Resume:
Bui Garcia-Zamor
Intellectual Property Attorneys
**** *********** ***., *.*., Suite 200 Office: 202-***-****
Washington, D.C. 20036 Facsimile: 202-***-****
****@*********.*** Mobile: 202-***-****
FIRM RESUME
Bui Garcia-Zamor specializes in intellectual property and technology-related matters
worldwide. We help our clients create and protect intellectual property portfolios and defend
against and determine ways to avoid infringement of all forms of intellectual property, such as
patent, trademark, copyright, trade secret, Internet and related areas of law. In addition to
traditional intellectual property counseling, we provide a full range of services designed to
maximize the value of our clients new ideas and developments.
Bui Garcia-Zamor has a diverse client base, ranging from individual inventors and
entrepreneurs, to universities, start-up companies, and large multinational corporations.
Our attorneys have extensive experience handling all aspects of patent and trademark
prosecution matters, including preparation and prosecution of U.S. and International patent
applications, licenses, reissues, reexaminations, interferences, protests, and negotiations. Our
expertise also extends to complex prosecution matters, such as appeals to the Board of Patent
Appeals and Interferences and appeals to the Federal Circuit from the Board, arbitration and
litigation matters in Federal Courts and before government agencies, including the International
Trade Commission.
Professionals:
Hung H. Bui, Esq.
Ruy M. Garcia-Zamor, Esq.
Jessica H. Bui, Esq.
Henry M. Zykorie, Esq.
John M. Pipan
HUNG H. BUI, Esq.
Hung H. Bui received his B.S. in Electrical and Computer Engineering with a minor in
International Area Studies from Drexel University in 1990, and his J.D. degree from the
Washington College of Law, American University, in 1994. Mr. Bui attended Franklin Pierce Law
Center on scholarship where he studied advanced patent and trademark practices and
transactions. Prior to joining the firm, Mr. Bui was a partner in the law firm of Antonelli, Terry,
Stout & Kraus, LLP, Arlington, VA, a named partner in the law firm of Stein, McEwen & Bui, LLP,
Washington, DC, and a Patent Examiner in the computer group (Group 230) of the U.S. Patent &
Trademark Office.
In private practice since 1991, Mr. Bui concentrates on counseling clients regarding intellectual
property (IP) matters, with a special focus on prosecution and strategic planning of IP portfolios.
Mr. Bui has rendered legal opinions on a wide variety of IP issues including trademark availability,
patent validity, enforceability, non-infringement, product clearance, offensive and defensive
patent strategies, and has participated in litigation matters involving patent infringement claims
before the U.S. district courts and the International Trade Commission (ITC). In addition, Mr. Bui
is well versed in all aspects of patent preparation, prosecution, license, reissue, reexamination,
interference and appeals before the Board of Patent Appeals and Interferences and the U.S.
Court of Appeals for the Federal Circuit. Mr. Bui has prepared and prosecuted thousands of
patent applications including hundreds of original patent applications to issue in the electrical,
electronic and computer arts including specialties in computer hardware and software
architectures, business applications, telecommunications (including cellular and satellite
systems), computer networks, network protocols and Internet-related systems (including
electronic commerce and network security), semiconductor devices and fabrications, integrated
circuits (ICs) and chipsets, medical diagnostics and monitoring systems, test and measurement
equipments for advanced electronics and communications, and a wide variety of consumer
electronic products.
Mr. Bui has spoken on numerous panels on U.S. patent law and practice, and has conducted
comprehensive IP training programs, lectures and seminars on IP subjects and IP strategies
before various government agencies, IP associations, research institutes, and multinational
corporations both in the U.S. and Asia. Mr. Bui is AV rated by his peers through Martindale-
Hubbell, reflective of his having achieved high levels of expertise in his practice as well as
maintaining exceptional ethical standards and integrity.
Mr. Bui is admitted to the Bars of the District of Columbia and Pennsylvania, and is registered to
practice before the U.S. Patent and Trademark Office, the U.S. Court of Appeals for the Federal
Circuit, and the U.S. Court of Federal Claims.
In addition to his involvement with the patent community in the U.S., Mr. Bui is also active with the
local community. Mr. Bui has provided a wide variety of pro bono legal services and
representations for low-income Asian Americans, and has volunteered his time to a variety of
community-based organizations. For example, Mr. Bui was a founding co-Chair and served as
Chair of the Board of Directors of Asian American LEAD, a non-profit community-based
organization dedicated to nurture and develop Asian American youths from low-income families in
the Washington D.C. metropolitan area, from 1998-2005. In addition to Asian American LEAD,
Mr. Bui was a founding member and previously served as General Counsel for the Vietnamese
American Society from 1994-2002. From 2002-2003, Mr. Bui served as pro bono Counselor and
Board Director of the Asian Pacific American Bar Association of the Greater Washington D.C.
Currently, Mr. Bui serves as a Board Member and General Counsel to the Center for Nonprofit
Development and Pluralism (MOSAICA), Washington D.C.
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Mr. Bui is admitted to the Bars of the District of Columbia and Pennsylvania, and is registered to
practice before the U.S. Patent and Trademark Office, the U.S. Court of Appeals for the Federal
Circuit, and the U.S. Court of Federal Claims.
PROFESSIONAL ACTIVITIES & MEMBERSHIPS
American Intellectual Property Law Association (AIPLA)
o IP Practice in Japan, Active Delegate, 2004-Present;
o IP Practice in the Far East, Vice Chair, 2010-Present (responsible for educational
exchanges, updates on IP laws and cooperation between AIPLA and IP
organizations in the Far East, including South Korea, Taiwan, and countries in
Asia and the Pacific Rim);
American Bar Association
Licensing Executive Society
National Asian Pacific American Bar Association
Asian Pacific American Bar Association of the Greater Washington D.C.
Patent Lawyers Club of Washington D.C.
Institute of Electrical and Electronics Engineers
Strafford Publications, Inc. (Editorial Intellectual Property Law Advisory Board Member,
May 2007-Present).
SPEECHES & PROGRAMS
USPTO Updated KSR Guidelines for Obviousness & Therasense & Strategies to
Comply with Duty of Candor and Avoid Inequitable Conduct, presented to members of
Korean Patent Attorneys Association (KPAA), Seoul, Korea, November 23, 2010
Patent Misuse after the Federal Circuit en banc Decision in Princo v. ITC: Implications
for Licensing, Patent Pools and Litigation, MIP Program, Hongik University, Seoul,
Korea, November 22, 2010
Current Trends at the Federal Circuit Re: PATENT DAMAGES, American Intellectual
Property Law Association, IP Practice in the Far East, presented to members of Korean
Patent Attorneys Association (KPAA), Seoul, Korea, July 22, 2010
Recent Federal Circuit en banc Decisions for Y2009-Y2010 & Implications to
Practitioners presented to members of Korean Patent Attorneys Association (KPAA),
Seoul, Korea, April 30, 2010
Patent Trolls Update 2010, Including New Species of Marker Trolls in the United
States, MIP Program, Hongik University, Seoul, Korea, April 28, 2010
Separate Written and Enablement Requirements under Ariad Pharmaceuticals, Inc. v.
Eli Lilly & Co., No. 2008-1248 (Fed. Cir. March 22, 2010): Implications on USPTO
Practice & Patent Prosecution, American Intellectual Property Law Association, IP
Practice in Japan Committee, presented to Japan Patent Office (JPO), Tokyo, Japan,
April 21, 2010
Treatment of Product-By-Process Claims after Abbott Laboratories v. Sandoz Inc:
Continued Chasm (or Closing the Loophole) between Claim Interpretation during
Litigation and Examination for Product-by-Process Claims?, American Intellectual
Property Law Association Mid-Winter Institute, IP Practice in Japan Committee,
presented to members of AIPLA and Japan Patent Attorneys Association (JPAA), Palm
Spring, California, January 26, 2010
The Future of Business Methods and Computer Software in the United States after In re
Bilski, American Intellectual Property Law Association, IP Practice in Japan Committee,
presented to the International Association for the Protection of Intellectual Property Japan
(AIPPI), the Japan Federation of Bar Associations (JFBA), and the Institute of Intellectual
Property (IIP), Tokyo, Japan, April 23, 2009
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The Future of Business Methods and Computer Software after In re Bilski, American
Intellectual Property Law Association Mid-Winter Institute, IP Practice in Japan
Committee, presented to members of AIPLA and Japan Patent Attorneys Association
(JPAA) and LES Japan, Miami, Florida, January 26, 2009
In re Bilski, No. 2007-1130 (Fed. Cir. 2008): Hedging the Scope of Patentable Subject
Matter under 35 U.S.C. 101, American Intellectual Property Law Association Annual
Meeting, IP Practice in Japan Committee, presented to members of AIPLA and Japan
Patent Attorneys Association (JPAA) and LES Japan, Washington, DC, October 21, 2008
An Intellectual Property Update, National Business Institute (NBI), presented to bar
members for continuing legal education (CLE), Washington, DC, October 17, 2008;
Where Are the USPTO and the Federal Circuit Headed With 35 U.S.C. 101? Back To
The Future: Trends in Patentability of Computer Software, Data Signals and Business
Methods, American Intellectual Property Law Association, IP Practice in the Far East,
presented to members of the Korea Patent Attorneys Association (KPAA), Seoul, Korea,
June 23, 2008
Patent Trolls: Are Patent Trolls Still Viable In View of Recent Case Law & Proposed
Patent Reform Legislation?, American Intellectual Property Law Association, IP Practice
in Japan Committee, presented to the Institute of Intellectual Property (IIP), the Japan
Patent Office (JPA), and the Japan Patent Attorneys Association (JPAA), Tokyo, Japan,
April 16, 2008
KSR AND ITS PROGENY: NOT SO PATENTLY OBVIOUS, American Intellectual
Property Law Association, IP Practice in Japan Committee, presented to members of
AIPLA and Japan Patent Attorneys Association (JPAA) and LES Japan, Washington, DC,
October 16, 2007
Recent Developments in US IP Law: The Details of the Patent Reform Act of
2005/2006/2007, Post KRS Obviousness Cases and New USPTO Rules on Claim
Examination and Continuation Applications, Asian Pacific Intellectual Property
Association (APIPA), presented to members of the Taiwanese Bars, Hsinchu, Taiwan,
October 9, 2007
Post-KSR Lower Court Decisions & Best Practices & Prosecution Strategies Post-
Phillips, Recent IP Cases before the U.S. Supreme Court, Industrial Technology
Research Institute (ITRI), Hsinchu, Taiwan, October 9, 2007
Prosecution Strategies Post-Phillips to Maximize Protection and to Avoid Future
Challenges and Invalidation, American Intellectual Property Law Association, IP Practice
in Japan Committee, presented to members of AIPLA and Japan Patent Attorneys
Association (JPAA) and LES Japan, Washington, DC, February 24, 2007
Strategies for Patent Claim Construction Protecting Claims Post Phillips v. AWH,
Strafford Publications, Inc., presented to bar members for continuing legal education
(CLE), Washington, DC, January 9, 2007
Patent Enforceability - Increasing the Odds, Strafford Publications, Inc., presented to
bar members for continuing legal education (CLE), Washington, DC, October 26, 2006;
An Overview of IP Considerations for High-Tech Practitioners, National Conference of
Vietnamese American Attorneys, San Jose, California, September 30, 2006
Development & Management of a Global Patent Portfolio: Strategies for Taiwan
Technology Companies, American Intellectual Property Law Association, IP Practice in
the Far East, presented to the Taiwan Intellectual Property Office (TIPO), Ministry of
Economic Affairs, Taipei, Taiwan, May 23, 2006.
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RUY GARCIA-ZAMOR, ESQ.
Ruy Garcia-Zamor received his B.S. in Mechanical Engineering from the University of Virginia in
1994, and his J.D. from the University of Virginia, School of Law, in 1997. Prior to joining the firm,
Mr. Garcia-Zamor was a Patent Attorney in the law firm of Akin, Gump, Strauss, Hauer & Feld,
Philadelphia, PA and Volpe and Koenig, Philadelphia, PA with more than a decade of experience
helping clients develop and enforce their intellectual property portfolios.
Mr. Garcia-Zamor is a specialist in mechanical and electromechanical technologies including
automated packaging and material handling equipment, consumer electronics such as storage
devices, printers, toner devices, bottles and other food containers, food processing equipment,
jewelry pieces and manufacturing, color photocopiers, anti-theft devices, shock absorbing
materials, powered wheelchairs, oil extraction equipment, medical devices and medical device
sterilizers, toys, including remote control vehicles and seasonal novelty items, and automotive
components, such as brake systems, batteries, vehicle air conditioning, air bag design, two/four
wheel drive shift mechanisms, combustion engine design, and anti-theft systems.
As part of his practice, Mr. Garcia-Zamor regularly advises clients on infringement matters and
prepares well-considered patent opinions in connection with both routine product clearance
studies and infringement lawsuits. He advises clients of infringement risks for products currently
in development, conducts detailed studies of the public record and prior art literature, and
evaluates competitors' patents to identify defects.
Mr. Garcia-Zamor also counsels clients on trademark, cybersquatting, and unfair competition
issues. In addition, he has advised clients on various issues relating to doing business on the
internet, including domain name registration strategy for new products and services, policing
brand abuse and domain name registration scams, online copyright infringement, and web site
linking. Mr. Garcia-Zamor has also negotiated and drafted trademark licenses, domain name
transfer agreements and other internet related documents. In addition, Mr. Garcia-Zamor has
litigated trademark and unfair competition issues in federal courts and handled domain name
disputes.
Mr. Garcia-Zamor is a member of the Bar in Maryland, New Jersey, Pennsylvania, and is
admitted to practice before the U.S. Patent and Trademark Office, the U.S. District Court for the
Eastern District of Pennsylvania and the U.S. Court of Appeals for the Federal and Third Circuits.
Mr. Garcia-Zamor is also active in bar association activities, was Chairman of the PTO
Coordination Committee of the Philadelphia Intellectual Property Law Association from 1999 to
2001, and taught in the areas of law, technology, and e-commerce as an Adjunct Professor at
Temple University School of Law.
Mr. Garcia-Zamor is a member of the American Intellectual Property Law Association, the
American Bar Association, the Maryland State Bar Association, the Pennsylvania Bar
Association, and the Journal of the Patent and Trademark Office Society. He is also a member
of, and active in, the Howard County Chamber of Commerce which represents businesses in
Howard County, Maryland on issues that affect budget and taxes, economic development and
positive business climate (regulatory climate, redevelopment, etc.), education and workforce
development, environmental issues and legislation, health care and transportation.
Mr. Garcia-Zamor is also a member of the United States-Mexico Chamber of Commerce which is
a leading bi-national business organization dedicated to promote trade and investments between
the U.S. and Mexico.
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JESSICA H. BUI, Esq.
Jessica H. Bui received her B.S. in General Biological Science with Genetic Emphasis from the
University of Maryland in 1989 and obtained her J.D. from the University of Baltimore in 1994.
Ms. Bui received her MS in Biotechnology from Johns Hopkins University in 2005.
Ms. Bui focuses her practice on prosecution and strategic IP planning, including infringement and
validity studies. Ms. Bui has technical expertise in the areas of biotechnology, pharmaceuticals,
and chemistry. She has extensive experience with pharmaceuticals, and advises generic and
branded drug companies on new product introduction, including Orange Book issues and
strategic planning. Ms. Bui has prepared and prosecuted patent applications in the areas of
biotechnology, pharmaceuticals, polymers, textiles, and papermaking technologies.
Prior to entering private practice, Ms. Bui was a Patent Examiner at the U.S. Patent and
Trademark Office from 1990 to 1991. After leaving the Patent Office, she was associated with
law firms in Washington, D.C. and New York.
Ms. Bui is a member of the Bar of Pennsylvania and U.S. Court of Appeals for the Federal Circuit.
She is also registered to practice before the U.S. Patent and Trademark Office.
HENRY M. ZYKORIE, Esq.
Henry M. Zykorie received his B.S. in Electrical Engineering from Polytechnic Institute of
Brooklyn, (now Polytechnic Institute of New York University), and received a M.S. in Electrical
Engineering from Pratt Institute. After working as an engineer for several years, designing state
of the art electronic systems and becoming a Licensed Professional Engineer in the State of New
York, Mr. Zykorie received a J.D. from Memphis State University Law School, (now Cecil C.
Humphries School of Law of the University of Memphis).
As a patent attorney in private practice with Washington D.C. area boutique Intellectual Property
law firms, as an associate, partner and of counsel, Mr. Zykorie prepared and prosecuted patent
applications, represented major multinational corporations before the U.S. Patent and Trademark
Board of Patent Appeals and Interferences, and rendered patent infringement, validity, and
clearance opinions. Mr. Zykorie also prepared and filed numerous copyright applications under
the Semiconductor Chip Protection Act.
In addition, Mr. Zykorie has prepared original patent applications based on invention disclosures
and inventor interviews and also prepared patent applications based on literal English language
translations of foreign filed applications. His technical areas of expertise include computer
technology, semiconductor devices, LCD, LED, OLED, and plasma display devices,
telecommunication technology including Internet, network, and cellular communication
technology, and video recording and compression technology.
Mr. Zykorie is a member of the District of Columbia, Federal District Court for the District of
Columbia, Court of Appeals for the District of Columbia, Court of Appeals for the Federal Circuit,
and U.S. Supreme Court. In addition, he is a registered Patent Attorney, a registered non-
resident Canadian Patent Agent, and a licensed Professional Engineer.
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John Pipan Technical Specialist
John Pipan received his M.S. in Mathematics from California State University, a B.S. in
Aerospace Engineering from the University of Virginia, and a B.S. in Biology from the College of
William and Mary. John Pipan is a technical specialist in intellectual property law and focuses on
patent prosecution, primarily in electrical, mechanical, and aerospace areas. He is currently
pursuing a doctorate in mathematics from the University of California, Irvine. Mr. Pipan has
lectured and tutored in the field of mathematics, business analysis and strategic planning in the
banking industry, and served as a technology consultant in the aerospace industry.
PUBLICATIONS
A Scripting Tool for Arithmetic Circuit Design in Reconfigurable Architecture, presented at
UCLA Engineering Research Review
Lecture Notes and Laboratory Guide, Computer Communication Systems Laboratory,
UCLA Computer Science Department
Application of Error-Correcting Turbo Codes to Spacecraft Communication, presented at
UCLA Computer Science Department seminar
Comparison of Arithmetic Units in Commercially Available Processors, presented at
UCLA Computer Science Department seminar
Combinational Logic for Function Approximation, presented at UCLA Computer Science
Department seminar
Orbital Mechanics of Tethered Systems, Undergraduate Thesis, University of Virginia
School of Engineering and Applied Sciences
Tethered System for Orbital Payload Delivery, AIAA Undergraduate Space Systems
Design competition, University of Virginia School of Engineering and Applied Sciences.
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rms of intellectual property, such as
patent, trademark, copyright, trade secret, Internet and related areas of law. In additi
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