Kevin M. O'Brien

Partner
Baker & McKenzie LLP

Biography

Kevin O’Brien is a partner in Washington, DC and Chair of the North America Intellectual Property Practice Group. Mr. O'Brien also serves as Co-Chair of the Patent Litigation Committee of the Federal Circuit Bar Association and has taught a course on Trade and Competition at Johns Hopkins University.

He has more than 30 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 by Chambers USA (District of Columbia) and has been selected as one of the “best lawyers” for IP law in Best Lawyers in America and in the Legal 500.

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 US Customs and Border Protection, 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 the Court of Appeals for the Federal Circuit 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-939 Issue: Patent Infringement – 3D Cinema Systems and Components
    Related District Court Case: Real D, Inc. v. MasterImage 3D, Inc. et al.
    Result: Obtained exclusion order and cease & desist order on three patents against all defendants.

  • Investigation No. 337-TA-892 Principal Issue: Patent Infringement – Network Streaming Devices and Applications
    Related District Court Case: Straight Path IP Group, Inc. v. Vizio, et al.
    Result: Complainant withdrew complaint prior to hearing.

  • Investigation No. 337-TA-863 Principal Issue: Trade Secret Misappropriation - Paper Shredders and Components
    Related District Court Case: Fellows Inc. v. New United et al.
    Result: Obtained consent judgment against all defendants.

  • Wells Fargo Bank, N.A. v. WMR e-PIN, LLC (MLW No. 62720/Case No. 09-3800) (U.S. Court of Appeals, 8th Circuit)
    Result: Obtained affirmance of arbitration panel determination of trade secret misappropriation.

  • Sued Chemie, Inc. v. Multisorb Technologies, Inc., 54 F. 3d 1001 (Fed. Cir. 2009)
    Result: Obtained reversal of lower court decision, patent held invalid.

  • Co-Steel Raritan, Inc. v. United States ITC, 03-1006, 03-1099, United States Court of Appeals for the Federal Circuit, 357 F.3d 1294; 2004 U.S. App. LEXIS 1097; 25 Int'l Trade Rep. (BNA) 2099, January 26, 2004, On remand, Co-Steel Raritan v. United States ITC, 2005 Ct. Intl. Trade LEXIS 65 (Ct. Int'l Trade, June 7, 2005)
    Result: Obtained reversal of ITC decision, no injury caused by unfair price competition.

  • Hazani v. United States ITC, 96-1231, 96-1262, 96-1411, 96-1415, United States Court of Appeals for the Federal Circuit, 126 F.3d 1473; 1997 U.S. App. LEXIS 28447; 44 U.S.P.Q.2D (BNA) 1358, October 14, 1997, Rehearing En Banc and Rehearing Denied January 22, 1998, Reported at: 1998 U.S. App. LEXIS 1370. Rehearing, en banc, denied by Hazani v. United States ITC, 1998 U.S. App. LEXIS 1370 (Fed. Cir., Jan. 22, 1998)
    Result: Affirmance of ITC finding of patent invalidity.

  • 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 were 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-351 Principal Issues: Trade Secret Theft and 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.

Professional Honors

  • Co-Chair, Patent Litigation Committee, Federal Circuit Bar Association

  • Instructor, Johns Hopkins School of Advanced Studies: Trade and Competition

  • Federal Circuit Bar Association Committee Leadership Award

  • Leading Lawyer in Intellectual Property, Best Lawyers in America

Professional Associations and Memberships

  • American Intellectual Property Law Association
  • Federal Circuit Bar Association
  • American Bar Association

Admissions

  • U.S. Court of Appeals, Federal Circuit~United States
  • U.S. Supreme Court~United States
  • District of Columbia~United States
  • Illinois~United States
  • U.S. Patent & Trademark Office~United States
  • U.S. Court of International Trade~United States

Education

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

Languages

  • English

Firm Committee Memberships

  • Managing Partner, Washington Office, 1997-1998, October 2007-2010
  • Chair of North America Intellectual Property Group, 1998-2001; 2011-Present
  • Member: Global Professional Responsibility and Practice Committee, 2003-2006
  • Member: Global Nominating Committee, 2006-2010