Brendan E. Clark

Associate

Cleveland
T +1.216.861.6488
F +1.216.696.0740

Overview

Brendan Clark practices intellectual property (IP) and technology law, primarily in patent matters. Additionally, he has experience working cases involving trademarks, copyrights, and technology issues. Brendan counsels clients to identify and implement effective solutions for their intellectual property needs.

Select Experience

Procurement
  • Assisted a global electrical client in filing a record number of patent applications before implementation of first-to-file provisions under the America Invents Act.
Litigation
  • Obtained a restraining order and favorable settlement for a media client in a lawsuit involving trademark infringement, cybersquatting and unfair competition claims.
Transactions
  • Prepared a licensing agreement to allow third parties affiliated to a waste management company to leverage the client's branding, trademark and service capabilities.
More »

Experience

Procurement
  • Assisted a global electrical client in filing a record number of patent applications before implementation of first-to-file provisions under the America Invents Act.
  • Led patent harvest sessions with a financial services industry leader to materialize over a dozen new inventions.
  • Managed and prosecuted a patent portfolio for a diversified software company, including handling enforcement considerations and a patent sale to a Fortune 50 business.
  • Conducted intellectual property audits with startups and expanding businesses to ensure comprehensive protection for their creative efforts.
Litigation
  • Obtained a restraining order and favorable settlement for a media client in a lawsuit involving trademark infringement, cybersquatting and unfair competition claims.
  • Argued and defended against assertions of patent claims directed to electronic cigarettes.
  • Opined on clients’ freedom to operate and risks concerning possible infringement or invalidity of patents.
  • Represented various clients in multiple industries, including motorsports, surgical component, e-payment system and corporate wellness, in opposition and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB).
  • Defended clients accused of infringing patents in technology spaces, including building materials, waste derived fuel, and e-commerce.
  • Negotiated settlements for clients involved in patent, trademark, and software licensing disputes.
  • Managed technical issues and expert reports for lawsuit involving software companies.
Transactions
  • Prepared a licensing agreement to allow third parties affiliated to a waste management company to leverage the client's branding, trademark and service capabilities.
  • Negotiated a licensing agreement with large non-practicing entity to avoid assertion of its patents.
  • Drafted agreements protecting clients’ intellectual property during joint development projects and engagements with contractors or consultants.
  • Conducted intellectual property diligence for numerous client acquisitions.

Recognitions and Memberships

Memberships

  • Cleveland Metropolitan Bar Association
  • Cleveland IP Law Association
  • PTAB Bar Association

Community

  • Marine Corps Scholarship Foundation, Cleveland Committee: Co-Chair (2015 to present)
  • National Marine Corps Business Network, Cleveland Chapter
    • Officer (2017 to present)
    • President (2015 to 2017)

Emerging Issues

Military Service

  • U.S. Marine Corps Reserve, Infantry Officer (2011 to present)
    • Navy and Marine Corps Achievement Medal

Admissions

  • U.S. Court of Appeals, Federal Circuit
  • U.S. District Court, Northern District of Ohio
  • U.S. District Court, Southern District of Ohio
  • U.S. Patent and Trademark Office, Registration No. 67,691
  • Ohio

Education

  • J.D., Case Western Reserve University School of Law, 2009
  • B.S., General Engineering, University of Illinois, 2006

Blog

In The Blogs

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IP Intelligence: Insight on Intellectual Property
Core Wireless: Moving Beyond Eligibility as the Exception to the Exception?
By Brendan E. Clark
February 8, 2018
January was an exciting month for patent professionals still attempting to make sense of the fallout from the Supreme Court’s 2014 Alice Corp. v. CLS Bank International decision. Hot on the heels of its Jan. 10 decision in Finjan, Inc. v...
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IP Intelligence: Insight on Intellectual Property
When Obvious Isn't Obvious: Personal Web Technologies
By Brendan E. Clark
February 15, 2017
On Valentine’s Day 2017, the Court of Appeals for the Federal Circuit vacated the Patent Trial and Appeal Board’s conclusions of obviousness in Personal Web Technologies, LLC due to insufficient analysis in the board’s decision. Judge...
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IP Intelligence: Insight on Intellectual Property
Important Federal Circuit Decision Provides More Clues on Software Eligibility
By Brendan E. Clark
September 15, 2016
On Sept. 13, 2016, the Court of Appeals for the Federal Circuit gave applicants and patentees another tool with which to argue for the patent eligibility of their software innovations, finding that McRO’s lip-synchronizing patents were...
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IP Intelligence: Insight on Intellectual Property
Upcoming Federal Circuit Decision Presents Opportunity for Clarification of Patentable Subject Matter
By Brendan E. Clark
February 25, 2016
Since Alice,[1] consistently defining the bounds of statutory subject matter in computer arts confounds even the most experienced attorneys. E-commerce software combining visual elements of multiple parties’ websites is patent eligible,[2]...
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