Brendan E. Clark

Partner

Cleveland
T +1.216.861.6488
F +1.216.696.0740

Overview

Brendan Clark’s practice focuses on intellectual property (IP) and technology law. He works primarily in patent matters, but also has experience working cases involving trademarks and copyrights, and has been involved in a variety of matters involving technology issues. Drawing on his knowledge of today's information economy, Brendan counsels clients to identify and implement effective solutions to increase return on investment in their intellectual property and technology assets.

Select Experience

Procurement
  • 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.
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.
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Experience

Procurement
  • 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 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
  • 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 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
  • 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.

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)

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
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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