Jeffrey C. Totten
Jeff Totten focuses his practice on patent and trade secret litigation, post-grant validity challenges, and client counseling in the mechanical and electrical fields.
Mr. Totten represents clients in multiple U.S. district courts and before the U.S. International Trade Commission (ITC). He actively participated in several trials, where he examined and cross-examined fact and expert witnesses. Mr. Totten has extensive experience managing litigation teams involved in complex intellectual property disputes, developing and briefing claim construction and summary judgment positions, and taking discovery in the United States and abroad.
Mr. Totten's litigation practice includes representing clients in post-grant validity challenges before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). His work includes preparing petitions, coordinating PTAB proceedings and ongoing district court litigation, taking PTAB discovery, and making oral arguments before the Board.
Mr. Totten counsels clients on a wide range of non-litigation matters, including the preparation of written opinions regarding patent infringement and validity. He also assists clients with patent portfolio management, strategic planning, and patent mapping.
Mr. Totten works on matters involving a wide array of technologies, including computer databases, internet-based communications and payment systems, business methods, steel-manufacturing technology, wind-turbine generators, biomedical devices, exhaust-treatment systems, chemical-manufacturing methods, and mechanical devices.
- Rackspace Hosting, Inc. v. Clouding, Inc. (PTAB). Represented Rackspace Hosting in post-grant validity challenges before the PTAB relating to distributed computing systems. Successfully argued before PTAB, resulting in findings of anticipation of all claims.
- Nippon Steel & Sumitomo Metal Corp. v. POSCO Corp. (D.N.J.). Represented POSCO in a district court patent infringement, Lanham Act, and unfair competition action against a Japanese competitor in the area of grain oriented electrical steel.
- Represented Mitsubishi Heavy Industries in a years-long
patent infringement dispute with General Electric Company regarding
wind-turbine generators, including representation before the ITC, the U.S. Court of Appeals for the Federal Circuit, and in multiple district courts.
- Represented a group of 13 defendants in a patent infringement lawsuit brought by a subsidiary of Acacia Research Corporation regarding
credit card payment systems.
- Represented multiple pro bono criminal defendants in misdemeanor and felony cases before the D.C. Superior Court.
- Intellectual Property Owners Association (Litigation Committee, 2013-present; U.S. Post-Grant Patent Office Practice Committee, 2016)
- ITC Trial Lawyers Association
- American Bar Association
- American Intellectual Property Association
- Serves as an editor and contributor for Finnegan's AIA blog on PTAB trials and AIA provisions.
- Coauthor. "How Patent Clearance Strategy Might Change Post-Halo," Law360, July 13, 2016.
- "From Cell Phone to Solar Cell: Five Practical Patenting Lessons from the Apple-Samsung Patent War," North American Clean Energy Magazine, July 6, 2016.
- Coauthor. "Stay Awhile: The Evolving Law of District Court Stays in Light of Inter Partes Review, Post-Grant Review, and Covered Business Method Post-Grant Review," Buffalo Intellectual Property Law Review, Dec. 4, 2015.
- Coauthor. "How Changes to U.S. Civil Procedure Rules Will Affect Patent Litigation," Managing Intellectual Property, Oct. 6, 2015.
- Coauthor. "Four Strategies to Stay Litigation in Favor of IPR," Managing Intellectual Property, May 2014.
- Coauthor. "An Accused Infringer's Guide to Parallel Proceedings," Law360, April 21, 2014.
- Coauthor. "The Surprising Breadth of Post-Grant Review for Covered-Business-Method Patents: A New Way to Challenge Patent Claims," The Columbia Science and Technology Law Review, Spring 2014.
- Coauthor. "Avoid Redundancy in Post-Grant Proceedings," Law360, Feb. 5, 2014.
- Coauthor. "Licensing Entities and the U.S. International Trade Commission: Establishing a 'Domestic Industry' Sufficient to Enforce IP Rights," Financier Worldwide, April 1, 2013.