Kevin W. Kirsch

Partner

Columbus
T +1.614.462.2673
F +1.614.462.2616

"Kevin Kirsch is highlighted for his extensive trial practice, which includes particular experience in cross-border disputes. He regularly acts for clients such as healthcare entities in large-scale patent litigation."

— Chambers USA 2021

Overview

Kevin Kirsch is the co-leader of BakerHostetler's Patent Litigation team and is the Columbus Intellectual Property Leader. Registered to practice before the U.S. Patent and Trademark Office (USPTO) and having represented companies in more than 150 patent litigation matters venued in more than a dozen states, Kevin is deeply familiar with the environment in which his clients operate, making him a strong advocate for their patent litigation needs. Kevin also has extensive experience representing companies in high stakes trade secret cases and other intellectual property matters.

Kevin has testified before and advised members of the U.S. House of Representatives on proposed patent reform legislative initiatives. Kevin is honored to have been selected a BTI Client Service All-Star in 2015 and 2020, including being one of only 25 intellectual property attorneys in the United States to achieve that ranking in 2015. He is ranked in Chambers USA: America's Leading Lawyers for Business in the area of Intellectual Property, where he is described as "sensitive to business issues (with) a real ability to see the important issues in any matter" (Chambers USA 2021), "(having) invaluable expertise in IP law and an ability to understand and appreciate cutting-edge technology" (Chambers USA 2021), and "a very good litigator who listens well to the company's position and objectives and gets what we want" (Chambers USA 2014). He is also the primary author of the Patent Local Rules for the Southern District of Ohio, implemented in June 2010.

Select Experience

  • In 2021, won final judgment (via motions for summary judgment) in a Southern District of Texas case on behalf of Weatherford Technologies, Marathon Oil Company and In-Depth Systems. The case involved trade secret, licensing and ownership of dozens of patents and know-how in RFID drilling technologies.
  • In 2021, prevailed on behalf of Henny Penny in a Southern District of Ohio patent infringement case involving deep fryer technology. Successfully stayed the action while petitioning to cancel all of the asserted claims in the PTAB via an IPR petition. The PTAB, after extensive efforts by the patentee to amend the claims, canceled all of the original claims and denied the motion to amend, resulting in the elimination of the asserted patent.
  • Won arbitration trial in 2019 on behalf of Weatherford entity, In-Depth Systems, in Houston, Texas. The case involved substantial contract and intellectual property ownership claims related to RFID drilling technologies.
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Experience

  • In 2021, won final judgment (via motions for summary judgment) in a Southern District of Texas case on behalf of Weatherford Technologies, Marathon Oil Company and In-Depth Systems. The case involved trade secret, licensing and ownership of dozens of patents and know-how in RFID drilling technologies.
  • In 2021, prevailed on behalf of Henny Penny in a Southern District of Ohio patent infringement case involving deep fryer technology. Successfully stayed the action while petitioning to cancel all of the asserted claims in the PTAB via an IPR petition. The PTAB, after extensive efforts by the patentee to amend the claims, canceled all of the original claims and denied the motion to amend, resulting in the elimination of the asserted patent.
  • Won arbitration trial in 2019 on behalf of Weatherford entity, In-Depth Systems, in Houston, Texas. The case involved substantial contract and intellectual property ownership claims related to RFID drilling technologies.
  • Successfully defended accused infringer Guidance Software against patent claims related to computer forensics technologies, resulting in a finding of no violation after trial (In re Certain Computer Forensic Devices & Products Containing the Same, International Trade Commission, Case No. 337-TA-799).
  • Successfully defended accused infringer against patent claims related to DVD scene selection menus. Case was settled on confidential terms after jury trial in December 2012 (Patent Harbor, LLC v. Audiovox Corp., E.D. Texas, Case No. 6:10-cv-00361).
  • Represented patent owner against alleged infringer related to food packaging technology in declaratory judgment action. Jury trial occurred in January 2013, and case was successfully settled after jury impaneled on confidential terms (Huhtamaki, Inc. v. PWP Industries, Inc., S.D. Ohio, Case No. 1:09-cv-795).
  • In patent infringement case, obtained judgment on the pleadings of invalidity based on 35 U.S.C. § 101 for accused infringer Hugo Boss (Clear with Computer LLC v. Hugo Boss Fashions, Inc., E.D. Texas, Case No. 6:12-cv-00867).
  • Obtained dismissal of claim based on early stage 101 motion for judgment on the pleadings. Represented accused infringer Codemasters Inc. in patent infringement action involving facial morphing technologies for computer games (McRo Inc. v. Codemasters Inc., C.D. California, Case No. 2:14-cv-00439-GW-FFM).
  • Obtained summary judgment of invalidity of patent claims based on obviousness for accused infringer IPS Corp. (Oatey v. IPS Corp., N.D. Ohio, Case No. 1:03-cv-01231).
  • Obtained summary judgment of invalidity of patent claims for accused infringer Tamarack Scientific (Ultratech, Inc. v. Tamarack Scientific Co., N.D. California, Case No. 3:03-cv-03235).
  • Won court ruling eliminating plaintiff’s $20M claim. Represented Bally Technologies and Scientific Games related to contractual dispute over TITO Agreements. (Case settled on confidential terms after court ruled in client’s favor on primary liability issues.) (Bally Technologies, Inc. and Scientific Games Corporation v. International Game Technology, Inc., District Court Clark County, Nevada, Case No. A-14-711384).
  • Represented Frontgate Marketing, Inc., Cinmar LLC and Grandin Road, et al. against Balsam Brands, Inc., et al. with respect to allegations of patent infringement, inter alia, relating to invertible Christmas trees. Case settled after defeated plaintiff’s TRO motion and won claim construction. (Balsam Brands, Inc., et al. v. Frontgate Marketing, Inc., Cinmar LLC and Grandin Road, et al., N.D. California, Case No. 3:15-cv-04829).
  • Represented Funai Electric Co., Ltd., et al. against LSI Corporation, Agere Systems LLC and Avago Technologies General IP with respect to allegations of antitrust, RAND violations and patent infringement, inter alia, relating to WIFI and MPEG technologies (multiple cases settled together on confidential terms). (Funai Electric Co., Ltd., et al v. LSI Corporation, et al., N.D. California, Case No. 5:16-cv-01210).
  • Represented dunnhumby Ltd. against emnos (an American Express subsidiary) in patent infringement action. Case settled after prevailed against a motion to dismiss, prevailed against multiple CBM petitions and after prevailed on claim construction. (dunnhumby Ltd. v. emnos USA Corp., N.D. Illinois, Case No. 1:13-cv-00399).
  • CBM Petition: Represented respondent in CBM proceedings with the USPTO. (emnos USA Corp., Petitioner v. dunnhumby Limited, patent owner. CBM 2015-00116). Petition denied.
  • CBM Petition: Represented respondent in CBM proceedings with the USPTO. (emnos USA Corp., Petitioner v. dunnhumby LTD., patent owner. CBM 2015-00162). Petition denied.
  • In patent infringement case, successfully asserted Newport’s patents against alleged infringer related to diode-pumped, intracavity doubled lasers (Newport Corp. v. Lighthouse Photonics Inc., C.D. California, Case No. SACV12-719).

Representative Speaking Engagements and Presentations

  • “The Importance of Patent Reform to Small Business,” testimony before the U.S. House of Representatives, Committee on Small Business (March 29, 2007)
  • “Evolution and Strategies for Litigating Patent Disputes,” (2021)
  • “Patent Law: 2020 Review,” presented for Fronteo in Japan (2020)
  • “Standard-Essential Patents – Licensing and Litigating Rand-Encumbered Patents,” presented for Fronteo in Japan (2016 and 2018).
  • “TC Heartland Aftermath” – presented in Japan (2017)
  • “Going to Trial: Preparation, Management, and Strategy,” presented at The IP Strategy Summit in Palo Alto, California (June 19, 2014)
  • “Indirect Infringement Post-Suprema, Inc. v. ITC,” presented to American Intellectual Property Law Association, webinar (March 20, 2014)
  • “Current U.S. Legislative, Administrative and Judicial Proposals: Dealing with Trolls and Other Issues,” presented at Cincinnati IP Meeting (February 2014)
  • “IPRs After One Year: The Good, The Bad, and The Ugly – and Preparing for the Impending Wave of PGRs,” presented at the Cincinnati Bar Association (January 28, 2014)
  • “Avoiding Court Litigation: IPR After One Year: The Good and the Bad,” “Current Developments in U.S. Patent Damages Since Uniloc,” and “Forum Selection,” presented to AIPPI, Toyko, Japan (November 2013)
  • “Avoiding Court Litigation: IPR After One Year: The Good and the Bad,” “Current Developments in U.S. Patent Damages Since Uniloc,” and “Forum Selection,” presented to JPAA Kinki Branch Offices, Osaka, Japan (November 2013)
  • “Strategies for Effectively Responding to Threats of Patent Infringement,” presented to Dayton Intellectual Property Law Association CLE (June 2013)
  • “CLS Bank v. Alice: Troll Hunt or Witch Hunt?” University of Dayton School of Law 23rd Annual Intellectual Property Seminar (June 2013)

Recognitions and Memberships

Recognitions

  • Chambers USA: Intellectual Property in Ohio (2010 to 2021)
    • Band 4 (2018 to 2020), Band 3 (2012 to 2017, 2021), Up & Coming (2010 to 2011)
  • The Legal 500 United States (2015 to 2018, 2020 to 2021)
    • Recommended in Intellectual Property - Patent Litigation: full coverage (2020 to 2021)
    • Recommended in Patent Litigation: full coverage (2015 to 2018)
  • BTI Client Service All-Star (2015, 2020)
  • The Best Lawyers in America® (2013 to Present)
    • Ohio: Litigation, Intellectual Property - 2022 Lawyer of the Year in Cincinnati
    • Ohio: Litigation – Intellectual Property
    • Ohio: Litigation – Patent
  • Managing Intellectual Property
    • IP Stars, Ohio (2014 to 2015)
    • IP Stars, United States (2014 to 2015)
  • Martindale-Hubbell: AV Preeminent
  • Ohio "Super Lawyer" (2012 to 2022)
  • World Intellectual Property Review: Leader (2018)

Emerging Issues

Prior Positions

  • Taft Stettinius & Hollister LLP: Partner and Head of Patent Litigation Practice
  • Luxottica Retail (LensCrafters, Sunglass Hut, Pearl Vision, among others): Head of Legal Services Department
  • Oppenheimer Wolff & Donnelley: Partner in Patent and Litigation Groups

Admissions

  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, Fifth Circuit
  • U.S. Court of Appeals, Ninth Circuit
  • U.S. Patent and Trademark Office, Registration No. 53,136
  • U.S. District Court, Northern District of California
  • U.S. District Court, Central District of California
  • U.S. District Court, Southern District of California
  • U.S. District Court, Northern District of Ohio
  • U.S. District Court, Southern District of Ohio
  • U.S. District Court, Southern District of Indiana
  • U.S. District Court, Eastern District of Michigan
  • U.S. District Court, Eastern District of Texas
  • California
  • Ohio

Education

  • J.D., Loyola Law School, 1993
  • B.A., University of California, Berkeley, 1989
  • University of California, Irvine, Enrolled in School of Biological Sciences (2000 to 2002)