Partner
Kathleen also counsels clients on obtaining and protecting intellectual property rights, including providing infringement and validity opinions and advising on strategic patent prosecution matters. She has been involved in more than 60 post-grant proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including reexamination and inter partes review (IPR) proceedings. She has served as lead counsel before the PTAB and has successfully represented both petitioner and patent owner.
Kathleen has extensive experience with licensing and technology transfer issues, including preparing and negotiating technology transfer agreements and advising clients regarding disputes under existing agreements. She has lectured and taught courses on drafting patent and know-how license agreements.
Her practice encompasses a wide range of technologies, such as mechanical devices, semiconductor devices, and pharmaceuticals, with a particular emphasis on medical devices. While a patent examiner at the USPTO, she examined applications in the medical arts.
Kathleen has served as member of the firm's management committee and as leader of the mechanical practice group.
Certain Balloon Dissection Devices and Products Containing Same
Represented Covidien in a patent infringement case involving medical equipment. The ITC issued a consent order barring importation and sale of all of respondent Pajunk's accused products.
337-TA-865, ITC, Judge Essex
Home Diagnostics, Inc. v. LifeScan, Inc.
Represented Home Diagnostics in a patent litigation concerning blood glucose meters; securing judgments of noninfringement from two district courts, which were affirmed on appeal.
5:99-cv-21269; 5:01-cv-20725, N.D. Cal., Judges Ware, Trumbull, Seeborg
01-1428, 03-1370, Fed. Cir., Judges Rader, Dyk, Prost, Mayer, Michel
Defended Nike in action involving hockey pads; obtained summary judgment of no infringement, and Federal Circuit affirmed.
5:95-cv-01428, N.D.N.Y., Judges Mordue, DiBianco
05-1140, -1176, Fed. Cir., Judges Clevenger, Schall, Bryson
Aerin Medical Inc. et al. v. Neurent Medical Inc. et al.
1:23-cv-00756, D. Del., Judge Williams
01-19-0001-6937; 01-20-0000-5081, American Arbitration Association (AAA)
WCM Industries, Inc. v. IPS Corp.
19-1773, Fed. Cir., Judges Prost, Linn, Taranto
16-2211, -2268, Fed. Cir., Judges Prost, Taranto, Wallach
2:13-cv-02019, W.D. Tenn., Judge McCalla
Articles
Using Patents to Make Greener Healthcare Using Patents to Make Greener Healthcare
June 19, 2023
Med-Tech Innovation NewsAt the PTAB Blog
Finnegan Attorneys Author the Third Edition of The Practitioner’s Guide to Trials Before the Patent Trial and Appeal Board Finnegan Attorneys Author the Third Edition of The Practitioner’s Guide to Trials Before the Patent Trial and Appeal Board
November 28, 2022
Books
The Practitioner's Guide to Trials Before the Patent Trial and Appeal Board, Third Edition The Practitioner's Guide to Trials Before the Patent Trial and Appeal Board, Third Edition
September 2022
Articles
Medical Device Licensing Pitfalls to Avoid Medical Device Licensing Pitfalls to Avoid
June 16, 2022
Medical Design & OutsourcingArticles
How to Pass the Patent Eligibility Test for Software as a Medical Device How to Pass the Patent Eligibility Test for Software as a Medical Device
April 14, 2022
Medical Design & OutsourcingArticles
Supreme Court’s Arthrex Decision Creates More Review for Patent Owners
— And More Questions
Supreme Court’s Arthrex Decision Creates More Review for Patent Owners
— And More Questions
February 18, 2022
Medical Design & OutsourcingPress Release
55 Finnegan Attorneys Named to 2020 Capital Pro Bono Honor Roll 55 Finnegan Attorneys Named to 2020 Capital Pro Bono Honor Roll
April 2, 2021
Media Mention
Fed. Circ. Clears Reworked Enhanced Damages Over Drain IP Fed. Circ. Clears Reworked Enhanced Damages Over Drain IP
April 20, 2020
Law360Commentary
CAFC Denies Arthrex Rehearing CAFC Denies Arthrex Rehearing
March 24, 2020
Intellectual Property MagazineMedia Mention
Divided Federal Circuit Upholds $140 Million Sprint Patent Verdict Divided Federal Circuit Upholds $140 Million Sprint Patent Verdict
November 30, 2018
The National Law JournalPress Release
48 Finnegan Attorneys Named to 2017 Capital Pro Bono Honor Roll 48 Finnegan Attorneys Named to 2017 Capital Pro Bono Honor Roll
February 20, 2018
Press Release
42 Finnegan Attorneys Named to 2016 Capital Pro Bono Honor Roll 42 Finnegan Attorneys Named to 2016 Capital Pro Bono Honor Roll
February 17, 2017
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