D. Brian Kacedon

Partner

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D. Brian Kacedon

Partner

+1 202 408 4301 +1 202 408 4301
brian.kacedon@finnegan.com brian.kacedon@finnegan.com

901 New York Avenue, NW
Washington, DC 20001-4413

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Brian Kacedon is a recognized authority in IP transactions. He has drafted and negotiated hundreds of agreements across all technologies and is designated as a Certified Licensing Professional (CLP). Brian has also successfully litigated multiple lawsuits and arbitrations based on his extensive transactional experience.

Brian focuses on patent and technology licensing and litigation. In his transactional practice and as leader of the firm’s Tech Transactions section, Brian assists clients in conducting market assessments for their patents, conducts licensing negotiations, drafts licensing agreements, and participates in related litigations. He routinely negotiates and drafts complex license and collaboration agreements for both small and large pharmaceutical companies, many with total payments of hundreds of millions of dollars. Brian’s experience includes setting up and directing international patent licensing and enforcement programs, including one that resulted in more than 500 license agreements. One client praised Brian’s ability to see both the legal and business side of transactions, saying he “has an understanding of those laws in concert with what [our] business needs are” in Acritas Stars.

Over the course of his career, Brian has drafted hundreds of patent, know-how, and software license agreements as well as joint development, collaboration, and settlement agreements for many industries, including pharmaceutical, medical device, software, and consumer electronics. He has assisted several leading technology companies in negotiating and drafting licenses for wireless technologies, as well as navigated related standards-setting issues.

Brian has extensive experience litigating agreement disputes. He has appeared as counsel in multiple litigations and arbitrations for clients in industries ranging from pharmaceuticals to semiconductors. Brian has also been retained as an expert witness relating to the interpretation of license agreements.

A frequent presenter at legal and industry workshops and conferences, Brian has lectured on drafting patent and know-how licenses for the Licensing Executives Society (LES) and the Practicing Law Institute, as well as other organizations. He served as an adjunct professor teaching licensing at the George Washington University Law School. Brian is also the author of a leading treatise on patent licensing: “Drafting Patent License Agreements,” published by Bloomberg Law.

The Legal 500 U.S. has recognized Brian as one of the leading lawyers in patent licensing and transactional work and as a Next Generation Lawyer for patent licensing. He is listed in Intellectual Asset Management (IAM) magazine as one of 250 of the world’s leading patent and technology licensing practitioners. IAM also named him as a leading patent litigator and for patent transactions.

Experience

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, 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

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.

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.

Representing defendant Corteva in a Delaware state court action for breach of contract arising out of a patent cross-license agreement relating to Agrobacterium-mediated plant transformation and transgenic seeds.

N22C-07-168, Delaware Superior Court, Complex Commercial Litigation Division

Insights

Lecture

Munich Licensing Summer Course 2026 Munich Licensing Summer Course 2026

June 18-19, 2026

Munich

Webinar

Top Ten Mistakes to Avoid in Negotiating and Drafting License and Collaboration Agreements Top Ten Mistakes to Avoid in Negotiating and Drafting License and Collaboration Agreements

May 6, 2026

Webinar

Articles

Assignment of “Continuations” Found Not to Include “Continuations-In-Part” Assignment of “Continuations” Found Not to Include “Continuations-In-Part”

March 5, 2026

LES Insights

Articles

SEP Licensing In Europe: Recent Developments SEP Licensing In Europe: Recent Developments

March 5, 2026

LES Insights

Seminar

Pauline Newman American Inn of Court Meeting Pauline Newman American Inn of Court Meeting

February 26, 2026

Alexandria

Conference

LES 2025 Annual Meeting LES 2025 Annual Meeting

October 19-22, 2025

Boston

Upcoming Events

Lecture

Munich Licensing Summer Course 2026 Munich Licensing Summer Course 2026

June 18-19, 2026

Munich

Professional Recognition

"Kacedon has been busy executing licensing agreements for biopharmaceutical companies and food and beverage patrons."

"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."

"Brian Kacedon is reliable, practical and smart."

"David Mroz and Brian Kacedon are both very engaged, friendly, business-oriented and focused on enabling opportunity for clients."

“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.”

"Also recommended [is] Brian Kacedon…contentious savvy gives Kacedon an edge in negotiations.”

“Frontline dealmakers include…Brian Kacedon, a licensing maven with hardened negotiation skills born of litigation experience.”

“Tipped for both litigation and transactions, Brian Kacedon is deemed ‘outstanding’ by economic expert witnesses.”

“‘Smart and personable’ up-and-comer Brian Kacedon is an all-rounder who is ‘great at laying the groundwork for fruitful alliances’”.

“Brian Kacedon is singled out by peers as a smart choice for conflict of interest referrals on licensing and related litigation.”

“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.”

“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.”

“‘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.’”

“Brian Kacedon leans into the contentious practice but is best known as one of Finnegan’s top licensing professionals.”

“He [Brian Kacedon], John Paul and William Pratt form a strong backbone to the transactional practice.”

“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.”