Kevin O' Brien is a partner in Washington, DC and Chair of the North America Intellectual Property Group. He has more than 27 years of experience practicing in the areas of intellectual property and international trade law, with an emphasis on counseling and enforcement. Mr. O' Brien has been recognized as a leading lawyer for intellectual property by Chambers USA (District of Columbia) in 2010 and 2011 and has been selected as one of the "best lawyers" for IP law in the 2010 and 2011 editions of Best Lawyers in America.

Practice Focus

Mr. O' Brien focuses on counseling, licensing and international litigation concerning products imported into or exported from the United States. He has handled numerous matters with the US International Trade Commission and Customs Service, including patent, trademark and trade secret matters covering machine parts, semiconductors, telecommunications equipment, and other products. He also has been involved in numerous antidumping investigations and related unfair competition actions. Mr. O’ Brien frequently appears in federal district court and before the Department of Commerce and the International Trade Commission.

Representative Legal Matters

The following is a partial listing of district court and International Trade Commission intellectual property litigation matters handled by Kevin M. O’ Brien:

• Investigation No. 337-TA-660 Principal Issue: Patent Infringement–Footwear
  Result: Defeated motion for summary judgment; Case settled

• Investigation No. 337-TA-548 Principal Issue: Patent Infringement—Tissue Converting Machinery
  Related District Court Case: Fabio Perini North America, Inc. v. Chan Li Machinery Ltd., Inc.
  Result: Case settled while motions for invalidity are pending and complaint withdrawn
  

• Investigation No. 337-TA-524 Principal Issue: Patent Infringement—Point of Sale Terminals
  Related District Court Case: Verve v. Thales e-Transactions, Inc.
  Result: Case won on all issues
  

• Investigation No. 337-TA-442 Principal Issue: Design Patent—CD and DVD Holders
  Result: Case settled
  

• Investigation No. 337-TA-424 Principal Issue: Trademark Infringement/Dilution—Cigarettes
  Result: Case won on all issues against multiple opposing parties
  

• Investigation No. 337-TA-371 Principal Issue: Patent Infringement—DRAMs
  Related District Court Case: Hazani v. Mitsubishi Electric Corp., et al.
  Result: Case won on summary judgment finding of invalidity
  

• Investigation No. 337-TA-357 Principal Issue: Patent Infringement—Footwear
  Result: Case settled
  

• Investigation No. 337-TA-351 Principal Issues: Trade Secret Theft & Trademark Infringement—Removable Disks and Disk Drives
  Related District Court Case: Syquest Corp. v. Nomai et al.
  Result: Obtained partial summary judgment, then case settled
  

• Investigation No. 337-TA-330 Principal Issue: Patent Infringement—Save/Restore Software
  Result: Case settled
  

• Investigation No. 337-TA-300 Principal Issue: Patent Infringement—Oncology Drug Doxorubicin
  Result: Case won on finding of non-infringement
  

Professional Honors

• Leading Lawyer in Intellectual Property, Best Lawyers in America, 2010-2011

• Leading Lawyer in Intellectual Property in District of Columbia, Chambers USA, 2010-2011
  

Professional Associations and Memberships

• Washington Foreign Trade Society
• International Trade Commission Trial Lawyers Association
• American Intellectual Property Law Association
• American Bar Association

Admission

U.S. Supreme Court~United States (1995)
U.S. Patent & Trademark Office~United States (1989)
U.S. Court of International Trade~United States (1987)
District of Columbia~United States (1985)
U.S. Court of Appeals, Federal Circuit~United States (1984)
Illinois~United States (1983)

Education

Loyola University School of Law  (J.D. Honors) (1983)
New York University Polytechnic Institute  (B.S. Chemical Engineering Honors) (1978)