合伙人
Brian Kacedon律师是飞翰机械业务组负责人, 是公认的知识产权交易领域权威。他起草和协商了涉及各个技术领域的成百上千份协议。他被任命为注册许可专家(CLP)。Kacedon律师还运用其丰富的交易经验,成功代理了多起诉讼及仲裁案件。
Brian Kacedon律师专注于专利和技术的许可和诉讼。在交易业务方面,Kacedon律师协助客户进行专利的市场评估、许可谈判、撰写许可协议,并参与相关诉讼。他的经验包括建立和领导国际专利许可和实施项目,其中包括一个产生了超过500个许可协议的项目。
在其职业生涯中,Kacedon律师起草了涉及多个行业领域、数以百计的专利、技术机密和软件许可协议,这些行业包括医药、医疗器械和消费电子。Kacedon律师还协助一些顶尖的技术公司在无线技术领域磋商及起草许可协议,并且指导相关的标准制定问题。
Kacedon律师在专利诉讼各个方面都有着丰富的经验,包括起草权利要求解释和简易判决动议、质询和交叉质询证人,以及管理诉讼的日常事务。他还在合同纠纷诉讼领域拥有广泛的经验,过去几年间为客户代理了多起仲裁案件,和一起侵害商业秘密案件,涉及从医药到半导体广泛的技术领域。Kacedon律师曾被聘请为许可合同解释方面的专家证人。
Kacedon律师经常应邀出席法律和行业论坛及会议,进行演讲。他曾为专利教育机构Patent Resources Group、国际许可贸易工作者协会Licensing Executive Society和其它组织就专利和技术机密许可的撰写进行演讲。Kacedon律师还在乔治华盛顿大学法学院担任许可课程的兼职教授。
Brian Kacedon律师被《美国法律500强》(The Legal 500 U.S.)评为杰出专利许可与交易业务律师;专利许可领域下一代律师(Next Generation Lawyer)。他还被《Intellectual Asset Management》(IAM)杂志列为全球顶尖的250位专利和技术许可从业者之一;IAM同时将他列为顶尖的专利诉讼和专利交易律师。
Drafted and negotiated a complex license agreement for Fochon Pharmaceuticals, Ltd. relating to BCL-2 inhibitors with up to $400 million in potential development and commercial milestones.
Represented Genevant Sciences in negotiating and drafting several license and collaboration agreements for Genevant’s lipid nanoparticle technology, including agreements with Gritstone Oncology relating to COVID-19 and BioNTech relating to development of mRNA therapeutics for rare diseases.
Drafted and negotiated a complex strategic development agreement for Roivant Sciences relating to a small molecule product with potential payments of up to $600 million.
Represented a major U.S. pharmaceutical company in two arbitrations concerning a leading biologic. Finnegan’s client won both arbitrations and, in the second, was awarded its attorney fees.
Represented a U.S. pharmaceutical company in an arbitration with a former consultant and inventor. The dispute involved issues relating to inventorship and ownership, as well as the determination of royalties due under various agreements. The matter settled shortly before the hearing on favorable terms.
Represented CSRC in two arbitrations and one litigation relating to exclusive licenses and patent assignments for patents directed to treating Pompe Disease, a rare genetic disorder that is often fatal if untreated. Secured a $180 million settlement from Genzyme.
01-19-0001-6937; 01-20-0000-5081, American Arbitration Association (AAA)
Drafted and negotiated a global cross-license on behalf of a leading specialty chemicals company.
Assisted AbbVie, Inc. with multiple settlement and license agreements relating to a leading biopharmaceutical product.
Represented Dorco in patent infringement case involving cartridge shaver technology; reached a favorable settlement.
1:18-cv-01306, D. Del., Judge Stark
Represented LG Electronics in a district court litigation between the parties concerning certain standard essential patents and wireless technologies in smartphones.
2:17-cv-00458, E.D. Tex., Judge Gilstrap
Retained as expert witness on licensing matters by UTAC (Taiwan) Corp.
5:10-cv-04435, N.D. Cal., Judge Davila
Represented AbbVie in a validity and infringement dispute involving Humira® (human therapeutic antibodies), one of the best selling drugs in the world. The case settled favorably.
4:09-cv-40089, D. Mass., Judge Saylor
Represented Guidant in a patent infringement case involving coronary stents, which ended with a favorable settlement for defendant on the fourth day of jury deliberations.
1:03-cv-02604, S.D.N.Y., Judges Scheindlin, Francis
BCL-2 inhibitors licensing agreement for Fochon Pharmaceuticals, Ltd.
Lipid nanoparticle licensing and collaboration agreements for Genevant Sciences
Small molecule product development agreement for Roivant Sciences
Arbitration victory for major U.S. pharmaceutical company
Finnegan successfully represents U.S. pharmaceutical company in an arbitration
01-19-0001-6937; 01-20-0000-5081, American Arbitration Association (AAA)
Event
IP Agreements: Structuring Indemnification and Limitation of Liability Provisions to Allocate Infringement Risk IP Agreements: Structuring Indemnification and Limitation of Liability Provisions to Allocate Infringement Risk
January 11, 2024
Webinar
Event
Drafting International Intellectual Property Agreements Training Course Drafting International Intellectual Property Agreements Training Course
November 16, 2023
London
Event
Patent Law Institute 2023: Critical Issues & Best Practices Patent Law Institute 2023: Critical Issues & Best Practices
October 5-6, 2023
New York
Articles
Confidentiality Agreements May Be Enforced Against Employees Based on Continued Employment Even if There Is No New Additional Consideration Confidentiality Agreements May Be Enforced Against Employees Based on Continued Employment Even if There Is No New Additional Consideration
July 27, 2023
LES InsightsArticles
An Implied Copyright License Requires a “Meeting of the Minds” on how the Copyright is to be Used – Permission to a Television Host to Wear a Clothing Design Did Not Imply a License to a Toy Company to use the Design on Toy Figurines An Implied Copyright License Requires a “Meeting of the Minds” on how the Copyright is to be Used – Permission to a Television Host to Wear a Clothing Design Did Not Imply a License to a Toy Company to use the Design on Toy Figurines
July 20, 2023
LES Insights"Kacedon has been busy executing licensing agreements for biopharmaceutical companies and food and beverage patrons."
Intellectual Asset Management Patent 1000
"Brian Kacedon is the most experienced IP transaction attorney I have worked with over my career of over 14 years in IP licensing and portfolio growth."
The Legal 500 U.S.
"Brian Kacedon is reliable, practical and smart."
The Legal 500 U.S.
"David Mroz and Brian Kacedon are both very engaged, friendly, business-oriented and focused on enabling opportunity for clients."
The Legal 500 U.S.
“Qingyu and Brian are good listeners with an exact understanding of their clients’ needs. They resolve problems in a timely fashion and are experienced lawyers who you always learn something from.”
Intellectual Asset Management Patent 1000
"Also recommended [is] Brian Kacedon…contentious savvy gives Kacedon an edge in negotiations.”
Intellectual Asset Management Patent 1000
“Frontline dealmakers include…Brian Kacedon, a licensing maven with hardened negotiation skills born of litigation experience.”
Intellectual Asset Management Patent 1000
“Tipped for both litigation and transactions, Brian Kacedon is deemed ‘outstanding’ by economic expert witnesses.”
Intellectual Asset Management Patent 1000
“‘Smart and personable’ up-and-comer Brian Kacedon is an all-rounder who is ‘great at laying the groundwork for fruitful alliances’”.
Intellectual Asset Management Patent 1000
“Brian Kacedon is singled out by peers as a smart choice for conflict of interest referrals on licensing and related litigation.”
Intellectual Asset Management Patent 1000
“Kacedon has been cutting many deals in the biopharmaceutical sector and always has the right answer for clients who may know what they want in an agreement, but do not necessarily know what the state of the market is with respect to key deal terms.”
Intellectual Asset Management Patent 1000
“Kacedon is more than comfortable with the finer technology points in his transactions but does not hesitate to utilize the firm’s stacked roster of PhDs where it is advantageous to do so.”
Intellectual Asset Management Patent 1000
“‘An outstanding writer and tactician with excellent instincts, Brian is one of the leading experts on patent licensing in the entire life sciences industry, as well as a skilled and experienced patent litigator. He knows how his clients like to operate and tailors his work product accordingly; on a personal level, he is an incredibly friendly and reasonable individual who is a pleasure to work with.’”
Intellectual Asset Management Patent 1000
“Brian Kacedon leans into the contentious practice but is best known as one of Finnegan’s top licensing professionals.”
Intellectual Asset Management Patent 1000
“He [Brian Kacedon], John Paul and William Pratt form a strong backbone to the transactional practice.”
Intellectual Asset Management Patent 1000
“Brian Kacedon…has a wealth of expertise handling the licensing aspects of transactions, in drafting and negotiating license and collaboration agreements in addition to having litigated multiple lawsuits and arbitrations based on his extensive transactional experience.”
The Legal 500 U.S.
"Kacedon has been busy executing licensing agreements for biopharmaceutical companies and food and beverage patrons."
Intellectual Asset Management Patent 1000
"Brian Kacedon is the most experienced IP transaction attorney I have worked with over my career of over 14 years in IP licensing and portfolio growth."
The Legal 500 U.S.
"Brian Kacedon is reliable, practical and smart."
The Legal 500 U.S.
"David Mroz and Brian Kacedon are both very engaged, friendly, business-oriented and focused on enabling opportunity for clients."
The Legal 500 U.S.
“Qingyu and Brian are good listeners with an exact understanding of their clients’ needs. They resolve problems in a timely fashion and are experienced lawyers who you always learn something from.”
Intellectual Asset Management Patent 1000
"Also recommended [is] Brian Kacedon…contentious savvy gives Kacedon an edge in negotiations.”
Intellectual Asset Management Patent 1000
“Frontline dealmakers include…Brian Kacedon, a licensing maven with hardened negotiation skills born of litigation experience.”
Intellectual Asset Management Patent 1000
“Tipped for both litigation and transactions, Brian Kacedon is deemed ‘outstanding’ by economic expert witnesses.”
Intellectual Asset Management Patent 1000
“‘Smart and personable’ up-and-comer Brian Kacedon is an all-rounder who is ‘great at laying the groundwork for fruitful alliances’”.
Intellectual Asset Management Patent 1000
“Brian Kacedon is singled out by peers as a smart choice for conflict of interest referrals on licensing and related litigation.”
Intellectual Asset Management Patent 1000
“Kacedon has been cutting many deals in the biopharmaceutical sector and always has the right answer for clients who may know what they want in an agreement, but do not necessarily know what the state of the market is with respect to key deal terms.”
Intellectual Asset Management Patent 1000
“Kacedon is more than comfortable with the finer technology points in his transactions but does not hesitate to utilize the firm’s stacked roster of PhDs where it is advantageous to do so.”
Intellectual Asset Management Patent 1000
“‘An outstanding writer and tactician with excellent instincts, Brian is one of the leading experts on patent licensing in the entire life sciences industry, as well as a skilled and experienced patent litigator. He knows how his clients like to operate and tailors his work product accordingly; on a personal level, he is an incredibly friendly and reasonable individual who is a pleasure to work with.’”
Intellectual Asset Management Patent 1000
“Brian Kacedon leans into the contentious practice but is best known as one of Finnegan’s top licensing professionals.”
Intellectual Asset Management Patent 1000
“He [Brian Kacedon], John Paul and William Pratt form a strong backbone to the transactional practice.”
Intellectual Asset Management Patent 1000
“Brian Kacedon…has a wealth of expertise handling the licensing aspects of transactions, in drafting and negotiating license and collaboration agreements in addition to having litigated multiple lawsuits and arbitrations based on his extensive transactional experience.”
The Legal 500 U.S.
Press Release
Former Finnegan Attorneys Return to Expand IP Transactions Practice with In-House Experience Former Finnegan Attorneys Return to Expand IP Transactions Practice with In-House Experience
October 2, 2023
Press Release
Finnegan Receives Top Rankings from Intellectual Asset Management; 46 Attorneys Ranked Finnegan Receives Top Rankings from Intellectual Asset Management; 46 Attorneys Ranked
June 30, 2023
Intellectual Asset ManagementPress Release
The Legal 500 Ranks Finnegan a Top Tier Firm for 2023 The Legal 500 Ranks Finnegan a Top Tier Firm for 2023
June 12, 2023
The Legal 500Press Release
45 Finnegan Attorneys Recommended by Intellectual Asset Management; Firm Continues to Be Top Ranked 45 Finnegan Attorneys Recommended by Intellectual Asset Management; Firm Continues to Be Top Ranked
July 8, 2022
Intellectual Asset ManagementPress Release
Finnegan Continues to Be Ranked a Top Tier Law Firm in The Legal 500 United States 2022 Edition Finnegan Continues to Be Ranked a Top Tier Law Firm in The Legal 500 United States 2022 Edition
June 8, 2022
The Legal 500Press Release
The Legal 500 Ranks 10 Finnegan Attorneys The Legal 500 Ranks 10 Finnegan Attorneys
July 23, 2021
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