John "Jack" A. Kelly

Associate

Jack Kelly focuses his practice on patent litigation, prosecution, and client counseling in mechanical and electrical technologies. Mr. Kelly also participates in advising clients on a wide variety of other patent matters, including licensing, due diligence, and mergers and acquisitions.

Before beginning his legal career, Mr. Kelly worked as design-automation engineer at Pratt & Whitney in East Hartford, CT.

Highlights

• Served as executive editor of The Federal Circuit Bar Journal, 2009-2010.
• Assisted a pro bono client with a 4th Circuit appeal in a Second Amendment case.

Professional Recognition

• Order of the Coif
• Tau Beta Pi

Professional Activities

• Federal Circuit Bar Association
• Virginia Bar Association

Select Publications

•  Coauthor. "Provision of the America Invents Act Retroactively Removing Private Standing for False Marking Suits Does Not Violate Due Process of Fifth Amendment," LES Insights, Feb. 20, 2012.
• Coauthor. "District Court Finds Indirect Competition Sufficient to Support a Permanent Injunction and Determines a Sunset Royalty Rate for Application Before Injunction Takes Effect," LES Insights, Dec. 19, 2011.
• Coauthor. "Licensee May Challenge Patent Validity and Infringement Based on an ITC Complaint Filed Against Its Customers Even When the Complaint Attempts to Exclude the Licensee," LES Insights, Nov 21, 2011.
• Coauthor. "If an Inventor Offers a Not-Yet-Developed Product for Sale, the On-Sale-Bar Clock Starts Ticking When the Product Is Fully Conceived," LES Insights, Oct. 31, 2011.
• Coauthor. "Inventors' Assignment of All 'Inventions and Discoveries' in a Patent Application Resulted in Assignment of Unrelated Patents," LES Insights, Sept. 12, 2011.
• Coauthor. "Letters Threatening a Competitor's Customers With Patent Infringement Are Insufficient to Support Declaratory Judgment Jurisdiction Over the Competitor," LES Insights, Aug. 22, 2011.
• Coauthor. "Patent Owners Cannot Be Forced to Litigate in a Forum Merely for Sending a Cease and Desist Letter and Attempting to Commercialize Their Products in the Forum," LES Insights, May 9, 2011.
• Coauthor. "Licensing or Commercial Activities May Be Sufficient to Award a Permanent Injunction to a Non-Practicing Patent Owner," LES Insights, March 28, 2011.
• "Amgen, Inc. v. ITC: Defying Kinik While Complying with TRIPS," Federal Circuit Bar Journal, Sept. 2010.