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.

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. "Difficulty Collecting Judgment from Foreign Defendant May Be Sufficient to Establish Irreparable Harm Needed for Preliminary Injunction," LES Insights, March 12, 2012.
• Coauthor. "Hypothetical License Fee for Copyright Infringement Damages Must Be Based on Objective Benchmark Evidence," LES Insights, March 5, 2012.
• Coauthor. "Court Enjoins Infringing Drug Seller Despite Previously Denying a Preliminary Injunction and Payments by Patent Owner to its Exclusive Licensee to Offset Harm of a Generic Drug Entering the Market," LES Insights, Feb. 27, 2012.
• 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. "Licensee Estoppel Precludes a Trademark Licensee from Challenging the Validity of the Licensed Trademark but Does Not Preclude an Affiliated Entity from Such a Challenge," LES Insights, Feb. 13, 2012.
• Coauthor. "District Court Finds Willful Infringement Does Not Necessarily Warrant Full Enhancement of Treble Damages," LES Insights, Feb. 6, 2012.
• Coauthor. "Patent Exhaustion Does Not Bar Claims Against Later Generations of Self-Replicating Technology," LES Insights, Jan. 30, 2012.
• Coauthor. "The ITC May Look to Conduct Occurring Outside the United States When Investigating "Unfair Methods of Competition and Unfair Acts" Related to Importation," LES Insights, Jan. 23, 2012.
• Coauthor. "Court Doubles On-Going Royalty Rate Based on Finding of Willful Infringement," LES Insights, Jan. 17, 2012.
• Coauthor. "Patent Owner Need Not Produce License Agreements in Litigation Relating to Patents Other than the Patent-in-Suit When Relevant Licenses Under the Patent-in-Suit Exist," LES Insights, Jan. 9, 2012.