Thomas R. Makin
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Thomas R. Makin

Partner

Thomas is a first-chair trial counsel and appellate specialist, with a practice focused on intellectual property litigation, in federal and state court, in arbitration, and before the International Trade Commission.
 

Thomas is a first-chair trial counsel and appellate specialist, with a practice focused on intellectual property litigation, in federal and state court, in arbitration, and before the International Trade Commission. He also participates in post-grant proceedings before the United States Patent and Trademark Office, and counsel clients regarding substantive patent law, patent valuation and licensing issues.

Thomas represents clients across a wide range of technologies: vehicular safety, propulsion, infotainment, and control systems; semiconductor circuitry, fabrication, and packaging; lighting systems; fintech software; chemical processes; monoclonal antibodies; and medical devices. These clients have included DENSO, GE HealthCare, Genmab, Nichia, Olympus, SS&C, Toyota, Vantage Specialty Chemicals, Volkswagen, and Wonderland.

Thomas recently won a multi-year battle on behalf of Nichia, defeating charges of infringement of several patents, spread across two complaints in the NDCA.  The litigation culminated in a win, on motion to dismiss, on the basis of both patent indefiniteness and lack of written description.  Thomas handled the successful appeal.

Thomas has been recognized and ranked in a number of legal publications, including Chambers & Partners and IAM Patent 1000. Chambers recently has noted that “Thomas is the real deal. He is a sophisticated trial lawyer.”

Expertise

Industries

Experience

Representative matters

  • Nichia Corporation, as lead trial counsel, in a 3-patent ITC Investigation in which all asserted claims were found not infringed, not supportive of a technical domestic industry, and/or invalid.
  • Nichia Corporation in defending, as lead counsel, their LED packages in a 5-patent infringement case, winning complete victory through IPRs, district court motion practice, and appellate work. 
  • Nichia Corporation in winning a motion to dismiss for reasons of both patent indefiniteness and lack of written description.
  • Volkswagen Group of America in winning a first-of-its kind writ of mandamus from the Court of Appeals for the Federal Circuit vacating WDTX denial of motion to dismiss or transfer for improper venue. Dealerships in WDTX not proven to be agents of Volkswagen.
  • SS&C as plaintiff in trade secret litigation, resulting in $44M jury award, plus fees, against a key competitor.
  • Boston Scientific Corporation in its $3.7B acquisition of Axonics Inc.

Pro bono

  • Received City Bar Justice Center 2023 Outstanding Pro Bono Service Award for Thomas’ long-standing commitment to assisting entrepreneurs in realizing their dreams of economic self-sufficiency and community building as part of the Neighborhood Entrepreneur Law Project.
  • Active participant in Volunteer Lawyers for the Arts (VLA) Pro Bono Clinics since 2015.

Published Work

  • Makin, Thomas, Co-author, (2024) “Why Fed. Circ. Affirmed Attorney Fee Award In PersonalWeb”, Law360
  • Makin, Thomas, (2016) “Attorney-Client Privilege: Issues Surrounding Communication with Those Who Do Not Have Japanese Legal Qualifications”, International Business Law and Practice, Vol. 44, No. 6, p. 843 - 848
  • Makin, Thomas, (2016) “Navigating Today’s Patent Landscape: Practical Considerations for Innovation, Enforcement, and Defense”, Inside the Minds: Developing a Patent Strategy, Aspatore
  • Makin, Thomas, Co-author, (2016) “Checks and Balances in the Inter Partes Review Statute”, Law360

Leadership Positions And Professional Affiliations

  • Member, American Society of Mechanical Engineers (ASME)
  • Member, Sigma Xi, the Scientific Research Society

Recognition

Thomas is the real deal. He is a sophisticated trial lawyer.
Chambers USA, 2026
Tom is smart, no nonsense and gets to the point of the issue, all while being highly knowledgeable in his field.
Chambers USA, 2025

Awards

  • Ranked in Intellectual Property: Patent – New York, Chambers USA, 2024-2025
  • IAM Patent 1000 – United States: New York – Silver – Individuals: litigation, IAM, 2015 – 2025

Qualifications

Admissions

New York, 2001

Courts

United States District Court for the Southern District of New York
United States District Court for the Eastern District of New York
United States District Court for the Eastern District of Michigan
United States Court of Appeals for the Federal Circuit

Academic

B.S., Swarthmore College, 1997
– Tau Beta Pi, The Engineering Honor Society
– Sigma Xi, The Scientific Research Society
– Senior Design Project: hybrid vehicle entry in Tour de Sol

B.A., Swarthmore College, 1997
– Editor in Chief, Common Sense

J.D., Columbia University, 2000
– James Kent & Harlan Fiske Stone Scholar
– Staff Editor, Columbia - VLA Journal of Law & the Arts
– Technical & Co-Founding Editor, Columbia Science and Technology Law Review
Disclaimer
A&O Shearman was formed on May 1, 2024 by the combination of Shearman & Sterling LLP and Allen & Overy LLP and their respective affiliates (the legacy firms). Any matters referred to above may include matters undertaken by one or more of the legacy firms rather than A&O Shearman.