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Benjamin (Ben) B. Kelly

Partner
Baker & McKenzie LLP

Biography

Ben Kelly is a partner in Baker McKenzie's Intellectual Property Practice Group in Dallas.

Ben has managed the enforcement and protection of a wide range of technologies, particularly electrical, communications, and networking systems or equipment. His casework experience includes patent litigation and other IP litigation in federal district courts, including courts in Texas, Illinois, Virginia, and California, at the US International Trade Commission, and in international arbitration before the American Arbitration Association.

Practice Focus

Ben’s practice emphasizes patent litigation, trade secret enforcement, and associated business torts.

Representative Legal Matters

  • Acted as trial counsel on behalf of patent owner in a multi-product and multi-patent investigation concerning 3D cinema systems and worked on developing the infringement case and establishing domestic industry by the patent owner. After a full hearing on the merits before the US International Trade Commission, the Administrative Law Judge and Commission found infringement and issued an Exclusion Order for all accused products.
  • Led the presentation of a non-infringement expert witness at trial with over 40 accused products and seven asserted patents before the American Arbitration Association.
  • Successfully secured summary judgment of invalidity based on contested prior art in a long-standing patent fight between two telecommunication network equipment competitors. The summary judgment eliminated over USD 100 million in potential damages exposure (N.D. Illinois).
  • Represented a patent owner in an eight-patent case concerning submerged arc welding power systems, and advised on lost profits and injunction claims. The damages and injunction allegations were largely accepted by the opposing expert witness, resulting in a favorable settlement including an agreed injunction. Ben also defended and took the depositions of marketing and sales executives and the damages expert (E.D. Texas).
  • Assisted with the development of background and strategy which resulted in a jury finding that the patent owner willfully breached its obligation to license the asserted patent on reasonable and non-discriminatory terms (N.D. Illinois).
  • Represented defendant before the US District Court for the Eastern District of Virginia, and developed non-infringement and invalidity expert reports for five patents concerning electronic representations of a physical locate mark depicting an underground utility. All five patents were invalidated under 35 U.S.C. § 101. Ben also took expert and inventor depositions eliciting testimony used as part of inequitable conduct allegations taken to trial.
  • Assisted with preparation of numerous witnesses for deposition and trial testimony, including technical and economic experts, patent inventors, executives, and senior management.

Professional Honors

  • "Texas Rising Star" for Intellectual Property Litigation, Texas Monthly and Texas Super Lawyers, 2015-2016

Professional Associations and Memberships

  • Texas Review of Law & Politics (Board of Directors)
  • State Bar of Texas, Intellectual Property Section (Patent Committee)
  • Dallas Bar Association, Intellectual Property Law Section and Trial Skills Section
  • Dallas Association of Young Lawyers
  • Institute of Electrical and Electronics Engineers

Corporate Responsibility

  • Represented a veteran of Operation Iraqi Freedom to successfully obtain Combat Related Special Compensation.
  • Prepared wills and related ancillary documents for residents of West Dallas.
  • Secured permanent resident status for siblings from Honduras, pro bono, in a Special Immigrant Juvenile Status case by preparing the children for their interviews at a US Citizenship and Immigration Services office. The children were immediately approved to receive permanent resident status, giving them the right to adjust their citizenship status to be US citizens.
  • Mentor, Mercy Street of West Dallas
  • Member, small group leader, and children’s small group leader, Watermark Community Church

Admissions

  • U.S. Court of Appeals, Federal Circuit~United States (2012)
  • Texas~United States (2006)
  • Supreme Court of Texas~United States (2006)
  • U.S. District Court, Eastern District of Texas~United States (2007)
  • U.S. District Court, Northern District of Texas~United States (2006)
  • U.S. Court of Federal Claims~United States (2017)

Education

  • University of Texas School of Law (JD) (2006)
  • University of Texas at El Paso (BS Electrical Engineering cum laude) (2003)

Languages

  • English