Partner
Jeff Totten focuses on trial-level patent and trade secret litigation, post-grant validity challenges, and strategic client counseling in the mechanical and electrical fields. He enjoys helping clients achieve their business goals in court, at the Patent Office, and across the negotiating table.
Jeff represents clients in patent and trade secret matters in U.S. district courts and before the U.S. International Trade Commission (ITC), including stand-up roles in bench and jury trials. In addition to trial work, Jeff has extensive experience managing litigation teams involved in complex intellectual property disputes; developing, briefing, and arguing claim construction and summary judgment positions; selecting and working with technical experts; and taking discovery in the United States and abroad. He also assists clients with appeals to the U.S. Court of Appeals for the Federal Circuit.
Jeff has represented patent owners and petitioners in dozens of post-grant validity challenges before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). His work includes presenting oral arguments, preparing petitions and patent owner replies, taking PTAB discovery, and coordinating PTAB proceedings with ongoing district court litigation. Jeff has also helped clients prepare for potential derivation proceedings at the PTAB.
Jeff provides clients with strategic counsel, pre-litigation assessments, and opinions of counsel. He writes opinions regarding patent infringement and validity. He counsels clients regarding patent inventorship and ownership, derivation, and trade secrets. He also assists clients with patent prosecution, portfolio management, and strategic planning.
Jeff serves as a leader of Finnegan's manufacturing industry working group. He presents seminars and webinars on IP issues facing manufacturing companies and has advised multiple manufacturing companies on the impact wide-spread adoption of additive manufacturing and 3D printing will have on their IP portfolios.
In his pro bono practice, Jeff has represented criminal defendants in misdemeanor and felony cases before the D.C. Superior Court.
Certain Variable Speed Wind Turbine Generators and Components Thereof
337-TA-1218, ITC, Judge Cheney
General Electric Co. v. United Technologies Corp.
Represented patent owner in a series of inter partes review challenges and related appeals to pioneering technology on next-generation aircraft engines. Successfully secured non-institution of several proceedings and claims, and in several cases that proceeded to final written decision, persuaded the Board to confirm some or all of the challenged claims.
IPR2016-00524, -00527, -00531, -00533, -00855, -00857, -00952, -01286, -01304, IPR2017-00428, -00431, -00999, -01123, -01489, PTAB, Judges Renya, Taranto, Hughes, Jung, Rice, Wood, Daniels, Abraham, Crumbley, Tornquist, Weatherly, Hoskins, Lee, Homere, Bisk, Snedden, Yang, Pollock
Cambria Company LLC v. Cosentino SA
6:20-cv-00894, -00895, -00896, -00897, W.D. Tex., Judge Albright
6:20-cv-01080, W.D. Tex., Judge Albright
IPR2021-00214, -00215, -00216; PGR2021-00010, -00090, PTAB, Judges Kalan, Ross, Kaiser
Akin Gump Strauss Hauer & Feld, LLP v. Xcential Corp. et al.
As lead counsel in derivation proceeding, analyzed inventorship dispute, and prepared derivation petition regarding unauthorized filing of patent application by potential vendor. Counseled client on derivation petitions and procedures, as well as interplay with contract and trade secret claims.
DER2022-00004, PTAB, Judges Arbes, Lee, Kennedy
Rackspace Hosting, Inc. v. Clouding Corp.
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.
IPR2013-00519, PTAB, Judges Chang, Lee, McKone
Nippon Steel & Sumitomo Metal Corp. v. POSCO
2:12-cv-02429, D.N.J., Judges Cavanaugh, Chesler, Falk, Waldor
15-0112, Fed. Cir., Judges Dyk, Hughes, Newman
Event
Relying on the POSITA in Patent Prosecution: Impact of General Knowledge on Patentability/Validity Relying on the POSITA in Patent Prosecution: Impact of General Knowledge on Patentability/Validity
May 23, 2023
Webinar
Podcasts
Director Review of Code200 v. Bright Data Director Review of Code200 v. Bright Data
November 17, 2022
Podcasts
Update on Apple Inc. v. Fintiv Inc. Update on Apple Inc. v. Fintiv Inc.
August 24, 2022
Commentary
USPTO Director Reviews: Did OpenSky Prompt a Rethink? USPTO Director Reviews: Did OpenSky Prompt a Rethink?
November 23, 2022
World IP ReviewCommentary
Vidal's Director Reviews Show Hands-On Approach with PTAB Vidal's Director Reviews Show Hands-On Approach with PTAB
September 28, 2022
Law360Commentary
Two Director Review Rulings Give PTAB Petitioners a New Edge Two Director Review Rulings Give PTAB Petitioners a New Edge
September 2, 2022
Managing Intellectual PropertyCommentary
Patent-Intensive Industries Drive Higher-Skilled, Better-Paying Jobs, USPTO Report Finds Patent-Intensive Industries Drive Higher-Skilled, Better-Paying Jobs, USPTO Report Finds
March 25, 2022
Intellectual Asset ManagementMedia Mention
Fed. Circ. Won’t Rethink GE’s Standing to Appeal PTAB Loss Fed. Circ. Won’t Rethink GE’s Standing to Appeal PTAB Loss
October 15, 2019
Law360Media Mention
Fed. Circ. Rules GE Can't Appeal PTAB Loss Fed. Circ. Rules GE Can't Appeal PTAB Loss
July 10, 2019
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