Brendan E. Clark

Experience

Procurement

• Counsels clients to identify valuable intellectual property, and then develop and implement strategies to protect and exploit that IP for tangible benefits.
• Led patent harvest sessions with a financial services industry leader to identify over a dozen inventions being developed or implemented and secure protection to increase the client’s ability to protect its innovation.
• Managed and prosecuted a patent portfolio for a diversified software company, including handling enforcement and defense 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.
• Helped software clients develop patent portfolios by carefully tracking and advising on Patent Office guidance relating to subject matter eligibility.
• 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.
• Provide clients with strategic counsel regarding defense and outdoor products, drawing on military experience and knowledge of chasing game and fish.

Litigation

• Represented Hyland Software in six related patent infringement actions involving enterprise content management software (Open Text Corporation v. Hyland Software, Inc. (C.D. Cal.)).
• Develop strategies to assert client patents and trademarks when faced with infringement and defend against accusations of patent and trademark infringement.
• Obtained a restraining order and favorable settlement for a media client in a lawsuit involving trademark infringement, cybersquatting and unfair competition claims.
• Defended against assertions of patent and trademark claims directed to electronic cigarettes.
• Defended against assertion of software patents involving client in a group of serial lawsuits filed in two different districts by the same plaintiff.
• Asserted client trademarks and copyrights against infringing competitor in porous paving and stormwater management industry.
• Opined on clients’ freedom to operate and risks concerning possible infringement or invalidity of patents in a variety of industries including nicotine vaporizers, industrial antistatic containers, financial services software, and additive manufacturing.
• 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).
• Handled critical discovery issues, claim construction briefing, and motion practice during client’s assertion of electronic trading patents.
• 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

• Advise on intellectual property considerations in mergers and acquisitions with values between $2M and $700M.
• Organized and led teams to develop strong consulting agreements for clients developing software with a multinational team of employees and vendors.
• 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 in industries such as nutritional supplements, industrial cutting tools, and software.

Memberships

• Cleveland Metropolitan Bar Association
• Cleveland IP Law Association
  • Trademark and Unfair Competition Committee Chair (2019)
  • Patent Committee Co-Chair (2020 to present)
• Kathleen M. O'Malley American Inn of Court
• PTAB Bar Association

Community

• Marine Corps Scholarship Foundation, Cleveland Committee: Co-Chair (2015 to 2019)
• Autism Society of Greater Cleveland: Board Member (2015 to 2019)
• National Marine Corps Business Network, Cleveland Chapter
  • Officer (2017 to present)
  • President (2015 to 2017)