Kenneth J. Sheehan

Partner

Washington, D.C.
T +1.202.861.1682
F +1.202.861.1783

Overview

Kenneth Sheehan is a registered patent lawyer who concentrates his practice on intellectual property acquisition and protection. He is involved in all aspects of the patent process, including prosecution, licensing, litigation and transactions. He is experienced in acquiring and evaluating patent rights for complex electrical technologies, and has significant experience in the reexamination and post-grant process. Ken internalizes his clients' goals and business objectives, and crafts the appropriate legal strategies to achieve those goals, whether they be acquiring patent rights in an area or prosecuting already held patents.

Select Experience

  • Manages patent work for a Fortune 500 manufacturing firm. Ensures the appropriate patent needs are met for the client through the development of an intellectual property team and the creation of procedures and practices. Assists client in litigation when necessary to avoid future issues or lawsuits, including significant dispute wins that retain client corporate success.
  • Manages patent prosecution work for the firm's relationship with a Fortune 500 construction, mining equipment and engine manufacturing company.
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Experience

  • Manages patent work for a Fortune 500 manufacturing firm. Ensures the appropriate patent needs are met for the client through the development of an intellectual property team and the creation of procedures and practices. Assists client in litigation when necessary to avoid future issues or lawsuits, including significant dispute wins that retain client corporate success.
  • Manages patent prosecution work for the firm's relationship with a Fortune 500 construction, mining equipment and engine manufacturing company. 
  • Assisted a client in identifying and acquiring a patent identified as beneficial to the client’s portfolio, leading to litigation against a large software corporation. Verdict was obtained in favor of client.
  • Served as lead counsel in more than 40 reexamination and post-grant proceedings, including the representation of a client in a fully contested inter partes reexamination relating to litigation against a large SaaS company. Obtained confirmation of all claims by the examiner and at the Patent Trial and Appeal Board.
  • Regularly assists clients in acquisitions and sales of business units that include significant intellectual property assets.

Recognitions and Memberships

Recognitions

  • The Legal 500 United States 
    • Recommended in Intellectual Property: Patent - Prosecution (Including Reexamination and Post-Grant Proceedings) (2017 to 2019)
    • Recommended in Intellectual Property: Patent - Prosecution: Utility and Design Patents (2015)
  • IAM Patent 300 - The World's Leading IP Strategists (2019)
  • IAM Patent 1000: The World's Leading Patent Practitioners
    • DC Metro Area: Recommended for Patent Prosecution (2016 to 2019)
  • Guide to the World's Leading IP Strategists (2010)
  • Guide to the World's Leading Patent Law Practitioners (2007)
  • Guide to the World's Leading Patent Law Experts (2003)
  • Martindale-Hubbell: AV Preeminent
  • Washington, D.C. "Super Lawyer" (2014 to 2019)

Memberships

  • Licensing Executive Society
  • American Intellectual Property Lawyers Association
  • Institute for Electrical and Electronics Engineers

Prior Positions

  • George Mason University School of Management: Adjunct Professor
  • Canon USA: Engineer

Admissions

  • U.S. Supreme Court
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Federal Claims
  • U.S. District Court, Eastern District of New York
  • U.S. District Court, Southern District of New York
  • U.S. Patent and Trademark Office, Registration No. 36,270
  • District of Columbia, 1992
  • New York, 1992

Education

  • J.D., St. John’s University School of Law, 1991, cum laude
  • B.S.E.E., State University of New York at Stony Brook, 1987