Kevin O'Shea is a partner in the Intellectual Property Group. Kevin is a first-chair trial and litigation lawyer focused on intellectual property and patent litigation, in particular. Kevin manages complex patent, trade secret, trademark and other IP-related litigation matters, including bet-the-company litigation.
 
Kevin represents clients in virtually all aspects of litigation, both as plaintiff and defendant, from the inception of a case through trial, including in Markman, Daubert, summary judgment and trial-related hearings, as well as in mediations and arbitrations. He represents clients in courts throughout the country and in the International Trade Commission, as well as in reexaminations, Inter Partes Review and Covered Business Method Review proceedings in the U.S. Patent and Trademark Office. Kevin also represents clients in appeals from U.S. District Courts, the Trademark Trial and Appeal Board and the Board of Patent Appeals and Interferences.

Kevin’s ability to understand and present technology is reflected in his work on behalf of clients in diverse technical fields including mechanical actuator technology, diesel engine components, consumer electronics, cellular telephony, lithium ion batteries, smart phones, flash memory media, MP3 players, DRAM, SRAM, pharmaceuticals, biotechnology and organic chemistry. He has also experienced litigating matters involving Internet-related technology, electrical circuits, automobile systems, food products and optics.
Reported and Representative Cases
  • Represented multiple parties in Inter partes Review and Covered Business Method Review proceedings in the U.S. Patent and Trademark Office.
  • Represented a cutting-edge alternative fuel technology company in connection with patent prosecution, due diligence, financing and licensing matters.
  • Trial counsel for an international home goods company in a patent infringement matter involving cookware technology, filed by its second-largest industry competitor. Defeated opponent’s Motion for Preliminary Injunction and obtained summary judgment on all substantive issues. Defended judgment on appeal to the Federal Circuit.
  • Acted as lead counsel for an international snack foods company in a patent infringement case involving resealable food packaging technology filed by its largest competitor in the sector.
  • Acted as lead counsel for an international home goods manufacturer in a patent infringement matter to enforce client’s patents relating to vacuum sealing technology against a competitor founded by a former employee. Defeated infringer’s Motion for Summary Judgment of non-infringement and disqualified opponent’s counsel based on prior representation of a predecessor of the client.
  • Acted as lead counsel for one of the largest television manufacturers in a patent infringement matter involving motion-compensated video signals. Case settled favorably for client after Markman hearing.
  • Acted as lead counsel for multiple defendants in patent infringement cases filed in several districts, involving broad assertions of infringement by products using flash memory. Represented all Joint Defense Group members at Markman and collateral estoppel hearings. Settled for each client for amounts significantly below the original demands after repeated favorable rulings.
  • Acted as lead counsel for a well-known winter sports activities and clothing manufacturer in a patent infringement matter filed by its largest industry competitor.
  • Acted as lead counsel for multiple national restaurant chains in patent infringement lawsuits relating to menu functionality on the clients’ websites. Settled each case after early disclosures.
  • Acted as lead counsel for a baby care products manufacturer in multiple patent infringement and trademark infringement matters. All settled for very low sums.
  • Acted as lead counsel for a laser-scribing company in an action to enforce patents, and address misappropriation of trade secrets and breach of contract by former joint venture partner. Settled favorably for the client after early substantive victories on behalf of the client.
  • Acted as lead counsel for an artificial firelog company in a patent infringement matter filed by its largest industry competitor. Case stayed after Markman hearing, pending reexamination proceedings.
  • Acted as lead counsel for a construction safety equipment distributor and foreign manufacturer in a patent infringement case involving self-retracting cable systems used in large construction projects filed by largest competitor. After exchange of initial substantive contentions, negotiated a very low settlement that allowed clients to continue importing and selling the accused products.
  • Acted as lead counsel for a cellular carrier in a multi-defendant patent infringement case relating to CDMA2000 technology, filed by a non-practicing entity. Settled favorably for client after Markman ruling.
  • Acted as lead counsel for more than 70 clients in Multi-District Litigation involving 802.11 standard for Wi-Fi provisioning. Negotiated low settlements for all clients prior to any significant expenses being incurred.
  • Acted as trial counsel for a major toy manufacturer in patent infringement matter relating to a laser-based board game. As substitute lead counsel, prevailed on interlocutory appeal from injunction entered against the client prior to substitution.
  • Represented a major cellular phone manufacturer in ITC investigation involving imaging technology used in smart phones. Matter settled after post-trial briefing.
  • Acted as lead counsel for an international home products company in a patent infringement matter filed in the ITC and involving electronic hardware for training animals. Settled favorably for the client.
  • Acted as lead counsel for a telephone equipment manufacturer in a patent infringement case filed by a non-practicing entity in the Eastern District of Texas. Settled favorably for the client after Markman ruling.
  • Represented several parties in multiple patent infringement cases involving chemical fire retardant technology, which were filed by a significant competitor of the parties in the Middle District of Louisiana. Limited opponent’s primary technical expert’s testimony with Daubert challenge.
  • Acted as trial counsel for an engineering consulting company and its principals in a suit regarding inventorship of patents relating to fuel injector technology. Allegations included trade secret misappropriation, breach of contract, and conversion by both sides.°
  • Acted as lead counsel for a biotechnology company in a patent infringement case involving DNA hybridization microchip technology filed by a significantly larger competitor. Case settled favorably for the client.°
  • Acted as lead counsel for a major pharmaceutical manufacturer in a patent infringement case involving the first-ever fully recombinant human antibody. Case settled after a two-week arbitration.°
  • Represented a telephony equipment manufacturer in a multi-defendant patent infringement action involving telephone packet switching technology filed by a non-practicing entity.°
  • Represented a generic pharmaceutical manufacturer in a multi-defendant patent infringement ANDA case involving brand drug Provigil®, a drug used to treat narcolepsy and shift work disorder.°
  • Represented a generic pharmaceutical manufacturer in a patent infringement ANDA case involving brand drug Niaspan®, a drug used to treat hyperlipidemia. The case involved seven patents and hundreds of claims. The case settled favorably for the client after a preliminary injunction hearing.°
  • Represented an imaging company in a patent infringement matter involving optical imaging technology filed in the Eastern District of Virginia. The case was resolved after a multiple-day Markman hearing.°
  • Represented a high-volume consumer website in a patent infringement action involving navigational software technology filed by non-practicing entity.°
  • Represented four electrical product manufacturers in separate patent infringement lawsuits involving compact electric ballast technology and electronic circuitry.°
  • Acted as lead counsel for an international clothing retailer in litigation to enforce retailer’s trademark and domain names. Prevented infringing and counterfeit use of revered outdoor products brand.
  • Acted as lead counsel for a well-known winter activities and clothing manufacturer in a trademark infringement lawsuit. Defeated the opponent’s Motion for Temporary Restraining Order and Motion for Preliminary Injunction.
  • Represented an international clothing manufacturer and retailer in a copyright infringement, employee raiding and trade secret misappropriation case. Settled favorably for client, including cessation of employee raiding and use of client’s misappropriated trade secrets.
  • Defended SAAS provider in a lawsuit for trademark infringement and violation of the Anticybersquatting Consumer Protection Act (ACPA). Won summary judgment of non-infringement in case involving 14 trademarks, and summary judgment of no violation of ACPA where dozens of domain names were asserted against the client.
  • Represented a well-known sports equipment manufacturer in an appeal to the Northern District of New York from TTAB decision in Cancellation action.
°The above representations were handled by Mr. O’Shea prior to his joining Ice Miller LLP.
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