Zachary A. Higbee

Patent Prosecution and Counseling

• Leading a team of attorneys and agents prosecuting patent applications and conducting patentability and freedom to operate studies for a major household appliance manufacturer.
• Counsel to a global medical diagnostic equipment manufacturer directing utility and design patent prosecution.
• Prepared and drafted patent applications directed to active optical cables, vertical cavity surface emitting lasers (VCSELs), and corresponding transceivers.
• Counsel to a global conglomerate regarding international protection and enforcement strategies for an industry-leading line of bar code scanning products.
• Counsel to a startup steam turbine developer.
• Counsel to a national plumbing fixture manufacturer.
• Performed freedom to operate analyses for a hydraulic equipment manufacturer related to the release of a new product line.
• Counsel to a global leader in online commerce, data analytics, machine learning, and mobile application content delivery.
• Counsel to a leading multinational company in child car seating, strollers, and accessories.

IP Transactions

• Represented a large telecommunications company in intellectual property matters associated with the acquisition of a carve-out division of another company.
• Represented a private-equity-backed chip manufacturer in intellectual property matters related to its acquisition of a high-efficiency server processor business. 
• Prepared license agreements and supporting documents for the monetization of a startup client’s patent portfolio.

Post-Grant Proceedings

• Represented the patent owner in inter partes review proceedings related to expandable downhole drilling tools, securing dismissal at the institution stage or a final decision on the merits upholding all claims from two challenged patents related to expandable downhole tools.
• Obtained the broadening reissue of a client patent with new claims directed to a specific component of a previously claimed assembly.

Representative Technologies

• Consumer products, including household appliances, mobile devices, user interfaces, child safety seats, apparel, strollers, and sporting equipment.
• Industrial products, including downhole drilling and well completion tools, wastewater treatment systems, hydraulic sludge removal systems, agricultural bearings, plumbing fixtures, and dust collection systems.
• Medical technologies, including diagnostic testing machines, localized iontophoretic treatment devices, sample isolation and centrifugation containers, PET scanners, tangential flow filtration systems, treatment vessels, and storage containers.
• Automotive devices, including shifters, seat belt load cells and sensing equipment, racetrack fixtures, and safety harnesses.
• Optical communications, including active optical cables and transceivers using VCSELs.
• Business and e-commerce products, including merchant point-of-sale interfaces, image recognition software and hardware, promotion and marketing systems, barcode scanners, and touch panels.
• Marine electronics, including sonar mapping, depth sounders, fish finders, chart-plotters, and related instruments and components.

With a background in mechanical engineering and economics, Zack Higbee practices in Alston & Bird’s Intellectual Property – Mechanical Patents and Electrical & Computer Science Patents Groups. Zack focuses his practice on patent solicitation and counseling, as well as intellectual property transactions, licensing, and due diligence.

He prepares and prosecutes U.S. and foreign patent applications, partners with his clients to develop targeted and cost-effective patent portfolio strategies, and advises clients on patentability and freedom-to-practice issues. He has also represented clients in post-grant, inter partes review proceedings before the U.S. Patent and Trademark Office.

He also frequently advises clients on intellectual property issues in business transactions and conducts due diligence intellectual property investigations related to acquisitions of technology companies and patent portfolios. He regularly assists clients with negotiating and drafting complex intellectual property agreements, including patent and trademark licenses, confidentiality agreements, and patent brokerage agreements.

He received his J.D., with honors, from The George Washington University Law School, where he was a member of the American Intellectual Property Law Association Quarterly Journal. Before law school, Zack earned a B.S. in mechanical engineering and a B.S. in business economics and management from the California Institute of Technology, where he was also a decathlete and captain of the track and field team.

Bar Admissions

• North Carolina
• U.S. Patent and Trademark Office

Education

• The George Washington University (J.D., 2013)
• California Institute of Technology (B.S., 2009)

Memberships