D. Brian Kacedon

Partner

Brian Kacedon focuses on patent licensing, litigation, prosecution, and opinion work. A substantial portion of his practice involves patent licensing and related litigation. Mr. Kacedon's role in these matters has included assisting clients in conducting market assessments for their patents, conducting licensing negotiations, drafting licensing agreements, and participating in related litigations. He also has extensive experience in drafting patent, know-how, and software license agreements in many industries.

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. In addition, he prepares opinions on patentability, infringement, and validity, and handles all phases of preparing and prosecuting patent applications before the U.S. Patent and Trademark Office.

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, the Licensing Executives Society, as well as other organizations.

Highlights

• Assisted in setting up and directing of an international patent licensing and enforcement program resulting in over 500 license agreements.
• Served as adjunct professor teaching licensing at the George Mason University Law School.
• Designated as a Certified Licensing Professional (CLP).

Professional Recognition

• Listed in Intellectual Asset Management (IAM) magazine as one of 250 of the world's leading patent and technology licensing practitioners, 2010-2011; recommended for patent licensing in the D.C. area, 2012.

Professional Activities

• 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

Select Publications

• Coauthor. "Fifth Circuit Holds That Assignee of Deferred License Payments Can Enforce the Provisions of the Agreement, and That Fixed, Bargained-For Payments Do Not Generally Constitute a 'Royalty'," LES Insights, April 30, 2013.
• Coauthor. "Current Standard for Induced Infringement Allows for Liability Even Where No Single Party Performed All Steps of a Claimed Method," LES Insights, April 23, 2013.
• Coauthor. "Licensee's Former Subsidiary Retains a License Because the License Extends to Entities Who Were Subsidiaries as of the Effective Date of the Agreement," LES Insights, April 16, 2013.
• Coauthor. "Reissue Patents Are Treated as Licensed Patents Absent Explicit Exclusion," LES Insights, April 9, 2013.
• Coauthor. "Suppliers May Ask Courts to Rule that They Do Not Indirectly Infringe Patents When They Have Agreed to Supply an Allegedly Infringing Product Even Before Their Customers Have Had an Opportunity to Directly Infringe the Patents," LES Insights, April 2, 2013.
• Coauthor. "U.S. Supreme Court Holds that Books Printed and Sold Abroad May Be Freely Resold in the U.S. Because the Copyrights Are Exhausted Under the First-Sale Doctrine," LES Insights, March 26, 2013.
• Coauthor. "Challenges to the Validity or Termination of a License Agreement Must Be Decided by an Arbitrator When Agreement Contains an Arbitration Clause," LES Insights, March 19, 2013.
• Coauthor. "Accused Activities Occurring Outside the United States Found Insufficient to Support a Finding of Infringement," LES Insights, March 12, 2013.
• Coauthor. "Court Orders Production of Corporate Communications Discussing Legal Strategies for Possible Patent Litigation, Finding No Attorney-Client Privilege or Work-Product Immunity," LES Insights, March 5, 2013.
• Coauthor. "Recent U.S. Court Decisions and Developments Affecting Licensing," les Nouvelles, March 2013.