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Finnegan, Henderson, Farabow, Garrett & Dunner LLP

901 NEW YORK AVENUE, NW, WASHINGTON, DC 20001-4413, USA
Tel:
Work +1 202 408 4000
Web:
www.finnegan.com

D Brian Kacedon

Tel:
Work 202-408-4000
Email:
Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Work Department

Intellectual Property

Career

Brian Kacedon is a recognized authority in IP transactions having drafted and negotiated hundreds of agreements across all technologies. He is designated as a Certified Licensing Professional (CLP). He has also successfully litigated multiple lawsuits and arbitrations based on his extensive transactional experience. Brian’s practice focuses on patent and technology licensing and litigation. In his transactional practice, Brian assists clients in conducting market assessments for their patents, conducts licensing negotiations, drafts licensing agreements, and participates in related litigations. His experience includes setting up and directing international patent licensing and enforcement programs, including one that resulted in more than 500 license agreements.

Member

  • Licensing Executives Society, U.S.A. and Canada
    (chair, High Technology Sector, 2009)
  • American Intellectual Property Law Association
  • Maryland Bar Association

Education

New York University School of Law
J.D., 2000
Duke University
B.S., Mechanical Engineering, with distinction, cum laude, 1997


United States: Intellectual property

Patent: prosecution (including reexamination and post-grant proceedings)

Within: Patent: prosecution (including reexamination and post-grant proceedings)

Finnegan, Henderson, Farabow, Garrett & Dunner LLP‘s ‘very knowledgeable’ team fields a very active PTAB practice - the main focus of Reston’s Erika Harmon Arner and Atlanta’s Jason Stach - with a strong track record in covered business method reviews, post-grant reviews and inter partes reviews (IPR); the group is also exceedingly well versed in patent applications and portfolio strategy development, with experience including utility, plant and design patents and its large sectorial breadth renders possible a varied caseload that recently included strategic patent counselling for Vertex Pharmaceuticals regarding cystic fibrosis products. Washington DC-based managing partner Mark Sweet led advice for NanoFlex Power on its worldwide patent portfolio in relation to application drafting work and due diligence work regarding competitors, while Elizabeth Ferrill and Gregory Gramenopoulos, both also in Washington DC, assisted Google with design patent application preparation and counselling matters regarding graphical user interfaces and icons. Arkema engaged the team, here led by Sweet, Mark Feldstein and Brian Kacedon, for a representation in a post-grant review before the PTAB, challenging a Honeywell patent regarding automobile air conditioning chemicals. Other clients include AstraZeneca, Caterpillar and Toyota. Elliot Cook in Reston, Li Feng, Joshua Goldberg and Erin Sommers in Washington DC made partner and former Lead Administrative Patent Judge at the United States Patent and Trademark Office (USPTO) Trenton Ward joined the Atlanta office.

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Patents: licensing

Within: Leading lawyers

Brian Kacedon - Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Within: Patents: licensing

IP giant Finnegan, Henderson, Farabow, Garrett & Dunner LLP excels in patent portfolio analysis and monetization and acts for a diverse client base that includes major multinationals such as Abbott Vascular, Otsuka Pharmaceuticals and LG Electronics alongside start-ups. The group is adept at negotiating and drafting agreements for business and technical collaborations, and has strong experience in handling corporate transactional work, including due diligence. Litigation settlement agreements are another key strength. Reston’s Anthony Gutowski and Washington DC’s William Pratt advised Toyota on multiple patent and technology licence agreements, including contracts with universities, research agreements with government laboratories, and commercial transactions, and non-profit institute Cognitive Research Enterprises engaged the team to assist with the licensing aspects of the acquisition of most of its IP assets. In a recent example of pharmaceutical work, the group negotiated an exclusive licence agreement for Dermavant Sciences with Portola Pharmaceuticals for the development and commercialisation of a hematologic cancer treatment. Other mandates stemmed from the chemical, robotics and electronics sectors. The firm’s deep bench also includes practice head John Paul, managing partner Mark Sweet, Doris Johnson Hines, Michele Bosch, Adriana Burgy, and Brian Kacedon, all from the Washington DC office.

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