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. "Inventor's Employment Agreement Did Not Affect His Freedom to Assign and Assert Patents Broadly Related to His Employment", LES Insights, July 19, 2016.
- Coauthor. "Attorney-Client Communications Can Be Privileged and Protected from Production Even When They Contain Discoverable Facts," LES Insights, June 28, 2016.
- Coauthor. "Exclusive Field of Use Licensee Must Join Patent Owner to Sue for Patent Infringement," LES Insights, June 21, 2016.
- Coauthor. "Court Finds an Agreement Not-to-Sue Is a Patent License Despite Language to the Contrary," LES Insights, June 14, 2016.
- Coauthor. "Patent Eligibility Requires Claims to Specific Improvement of Computer Functionality: Patent Eligibility of Categorical Data Storage Claims Not Saved by Federal Circuit’s Enfish Decision," LES Insights, June 7, 2016.
- Coauthor. "Company Principals Who Act as Litigation Counsel May Be Barred from Reviewing Confidential Information and from Prosecuting Patents," LES Insights, May 31, 2016.
- Coauthor. "Subsequent Clarifying Provision Does Not Cause Plain Language of License to Be Redundant or Permit It to Be Ignored," LES Insights, May 24, 2016.
- Coauthor. "Infringers Seeking to Establish a Patent Marking Defense May Bear the Burden of Showing Unmarked Products Are Covered by the Asserted Patents," LES Insights, May 17, 2016.
- Coauthor. "Recent Federal Circuit Decision Broadening the Attribution Standard for Divided Infringement Results in Reinstatement of Infringement Claims," LES Insights, May 10, 2016.
- Coauthor. "Seeking Only a Reasonable Royalty for Past Infringement May Be a Factor that Prevents Injunctive Relief," LES Insights, May 3, 2016.