Photo, Kevin M. O'Brien

Kevin M. O'Brien

Partner
Baker & McKenzie LLP

Biography

Kevin O’Brien is a partner in Washington, DC and former 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 C-542-801 Issue: Represented the largest Sri Lankan tire manufacturer in a subsidy investigation that resulted in a small margin; succeeded in challenging that margin before the U.S. Court of International Trade.
  • 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 A-580-889 Issue: Successfully obtained an antidumping order covering imports of phthalate-free plasticizer.
  • 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.
  • Represented a copper pipe and tube producer continuously since the 2009 antidumping investigation into imports from China and Mexico; obtained a series of “no dumping” findings, including through federal court litigation; company currently has a zero dumping margin for Chinese imports.
  • 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
    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.
    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.
    Result: Affirmance of ITC finding of patent invalidity.

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; 2011-2017
  • Member: Global Professional Responsibility and Practice Committee, 2003-2006
  • Member: Global Nominating Committee, 2006-2010