Thomas R. Makin

Thomas R. Makin — Patent Litigation Practice Summary

Specialty & technology focus. Makin is a New York-based first-chair trial and appellate IP litigator whose practice spans patent infringement suits in federal court, Section 337 investigations at the ITC, and PTAB post-grant proceedings (A&O Shearman bio; Legal 500; Chambers USA). His technology docket is broad and heavily hardware/engineering-oriented: LED and lighting systems, semiconductor circuitry/fabrication/packaging, automotive vehicular safety/propulsion/infotainment systems, rechargeable batteries, medical devices, chemical processes, plus fintech software and monoclonal antibodies (A&O Shearman; Legal 500).

Side preference & firm context. Makin works almost entirely for operating companies and against NPE/competitor assertions — consistent with the tracked data showing a defendant-side, lead-counsel appearance (1 of 1). His client roster includes Nichia, Toyota, Volkswagen, DENSO, Genmab, Olympus, GE Healthcare, and Boston Scientific. He joined Shearman & Sterling around 2013 from Kenyon & Kenyon (where he defended Toyota against American Vehicular Sciences), and is now a partner at Allen Overy Shearman Sterling (A&O Shearman) following the firm's 2024 merger (Legal 500; pro hac vice declarations; Super Lawyers profile). He has also handled plaintiff-side work, including SS&C's trade-secret suit that firm materials report yielded a $44M jury award plus fees.

Notable cases & PTAB/IPR experience. Makin was lead trial counsel for Nichia in ITC Inv. No. 337-TA-1168 (Certain Light-Emitting Diode Products, Systems, and Components Thereof (III)), where the ITC found the asserted LED patents not infringed, unsupported by a technical domestic industry, and/or invalid — a result confirmed by the Commission in 2020. He also led Nichia's defense of its LED packages in a five-patent NDCA suit, winning through IPRs, district court motion practice, and an appeal he handled (including a dismissal on indefiniteness and written description grounds). In In re Volkswagen Group of America (Fed. Cir. 2022), he obtained a first-of-its-kind writ of mandamus vacating a W.D. Tex. venue denial by holding independent dealerships are not the automaker's regular places of business (CourtListener; Vitallaw). Earlier, at Kenyon & Kenyon, he helped win Toyota's years-long defense against American Vehicular Sciences. He is a frequent PTAB participant — typically as pro hac vice back-up counsel (he is not a registered patent practitioner) — appearing in numerous IPRs (e.g., IPR2013-00412 series, IPR2016-01750–55, IPR2018-00965/966, IPR2018-01165–67, the Nichia LED IPRs, IPR2020-00908) and CBM2019-00019–24 involving Price f(x)/Vendavo (PTAB dockets; Docket Alarm).

Bar & education. Admitted New York (2001); also admitted to the SDNY, EDNY, E.D. Mich., and the Federal Circuit. He holds a J.D. from Columbia Law School (2000) and an undergraduate engineering degree from Swarthmore College (Legal 500; Super Lawyers).