D. Brian Kacedon
Brian Kacedon’s practice focuses on patent and technology licensing and litigation. In his transactional practice, Mr. Kacedon assists clients in conducting market assessments for their patents, conducts licensing negotiations, drafts licensing agreements, and participates in related litigations. Over the course of his career, he has drafted hundreds of patent, know-how, and software license agreements in many industries, including pharmaceutical, medical device, and consumer electronics. He has also assisted several leading technology companies in negotiating and drafting licenses for wireless technologies as well as navigating related standards-setting issues.
Mr. Kacedon has broad experience in all aspects of patent litigation, including drafting claim construction and summary judgment motions, examining and cross-examining witnesses, and managing day-to-day litigation activities. He also has extensive experience litigating agreement disputes, appearing as counsel in multiple arbitrations over the last several years. Mr. Kacedon has been retained as an expert witness relating to the interpretation of license agreements.
A frequent presenter at legal and industry workshops and conferences, Mr. Kacedon has lectured on drafting patent and know-how licenses for the Patent Resources Group and the Licensing Executives Society, as well as other organizations. He is a coauthor of a leading treatise on patent licensing, Drafting Patent Licenses, published by BNA Books.
- Lead counsel in arbitration for leading pharmaceutical company in contract dispute with inventor.
- Represented semiconductor company in arbitration concerning joint development agreement.
- Represented AbbVie in two arbitrations, prevailing in both.
- Abbott Biotechnology v. Centocor Ortho Biotech (D. Mass.). Represented AbbVie in district court litigation concerning Humira®, one of the best selling drugs in the world.
- Represented 3M in arbitration concerning trade secret misappropriation.
- Advised various companies such as Caterpillar, Sony, LG, FIS, DuPont, Bosch, Abbott, and AbbVie on licensing and settlement matters.
- Assisted in setting up and directing an international patent licensing and enforcement program resulting in more than 500 license agreements.
- Served as adjunct professor teaching licensing at the George Mason University Law School.
- Designated as a Certified Licensing Professional (CLP).
- Listed in Intellectual Asset Management (IAM) magazine as one of 250 of the world's leading patent and technology licensing practitioners, 2010, 2011; recognized in the D.C. area as a leading patent litigator, 2014-2016; and for patent transactions, 2012-2016.
- Recognized by The Legal 500 U.S. as one of the leading lawyers in patent licensing and transactional work, 2012-2014.
- Licensing Executives Society, U.S.A. and Canada (chair, High Technology Sector, 2009; chair, Computer Hardware and Consumer Electronics Subcommittee, 2005-2006)
- American Intellectual Property Law Association
- Maryland Bar Association
- Serves as an editor of IP Marketplace, Finnegan's monthly update on developments affecting licensing and other IP transactions.
- Coauthor. "Assignor May Challenge Validity of a Patent It Assigned by Using Patent Office IPR Proceedings Despite Being Precluded from Challenging Validity in Court," LES Insights, Oct. 11, 2016.
- Coauthor. "Patent Validity Challenge May Proceed Despite Covenant Not to Sue for Patent Infringement," LES Insights, Oct. 4, 2016.
- Coauthor. "License Defense Is Waived Due to Unjustified Delay and Prejudice," LES Insights, Sept. 27, 2016.
- Coauthor. "Expert Opinion on Reasonable Royalty Based on Prior Settlement Agreement Must Depend on Facts of the Case Rather than Generic Statistics," LES Insights, Sept. 20, 2016.
- Coauthor. "Licensing Proposals May Be Used to Determine Reasonable Royalty Damages," LES Insights, Sept. 13, 2016.
- Coauthor. "Enhanced Damages and Willful Infringement Depend on What the Infringer Knew at Time of Infringement," LES Insights, Sept. 6, 2016.
- Coauthor. "Purchaser of Patents Barred from Asserting Patents Against Practicing Entity Led to Believe It Would Not Be Sued by Prior Owner," LES Insights, Aug. 30, 2016.
- Coauthor. "Alleged Omitted Inventor with No Patent Ownership Fails to Adequately Allege Reputational Harm to Sue for Inventorship Correction," LES Insights, Aug. 23, 2016.
- Coauthor. "A Prior Agreement to Outsource Manufacturing Does Not Invalidate a Patent," LES Insights, Aug. 16, 2016.
- Coauthor. "'Most-Favored' Licensee Clause Entitles Paid-Up Licensee to Refund of $69M Amount Exceeding Lump-Sum Payment of Subsequent Licensee," LES Insights, Aug. 9, 2016.