Kevin W. Kirsch

Partner

Cincinnati
T +1.513.929.3499
F +1.513.929.0303
Columbus
T +1.614.462.2673
F +1.614.462.2616

"[Kevin] is 'a creative lawyer' who 'thinks out of the box,' impressed sources note."

— Chambers USA 2015

Overview

Kevin Kirsch is the co-leader of BakerHostetler's national Patent Litigation team. Registered to practice before the United States Patent and Trademark Office (USPTO), and having represented companies in more than 100 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. He also has extensive experience litigating trademark, copyright, trade dress and trade secret claims.

Kevin has testified before and advised members of the U.S. House of Representatives on proposed patent reform legislative initiatives. He is the primary author of the Patent Local Rules for the Southern District of Ohio, implemented in June 2010, and is a member of the Federal Rules Committee for the Southern District of Ohio. He is a frequent speaker and presenter on the subjects of patent litigation, reform and intellectual property. Kevin is one of only 25 intellectual property attorneys in the United States selected as a 2015 BTI Client Service All-Star. He is ranked in Chambers USA: America's Leading Lawyers for Business in the area of Intellectual Property, where he is described as "a very good litigator who listens well to the company's position and objectives and gets what we want" (Chambers USA 2014) and as "very bright, articulate and able to show his teeth when appropriate" (Chambers USA 2012). He is also listed in The Best Lawyers in America©, as an IP Star for Ohio and the United States by Managing Intellectual Property, and in the Legal 500 United States.

Select Experience

  • Tried three different patent cases concerning very different technologies within six months of each other in front of the International Trade Commission, the Eastern District of Texas and the Southern District of Ohio, with excellent results.

  • Defended accused infringer Guidance Software against patent claims related to computer forensics technologies, resulting in a finding of no violation after trial in August 2012 (In re Certain Computer Forensic Devices & Products Containing the Same, International Trade Commission, Case No. 337-TA-799).

  • 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 settled after jury impaneled on confidential terms (Huhtamaki, Inc. v. PWP Industries, Inc., S.D. Ohio, Case No. 1:09-cv-795).

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Experience

  • Tried three different patent cases concerning very different technologies within six months of each other in front of the International Trade Commission, the Eastern District of Texas and the Southern District of Ohio, with excellent results.

  • Defended accused infringer Guidance Software against patent claims related to computer forensics technologies, resulting in a finding of no violation after trial in August 2012 (In re Certain Computer Forensic Devices & Products Containing the Same, International Trade Commission, Case No. 337-TA-799).

  • 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 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).

  • Representing 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).

  • In patent infringement case, obtained summary judgment of invalidity based on obviousness for accused infringer IPS Corp. (Oatey v. IPS Corp., N.D. Ohio, Case No. 1:03-cv-01231).

  • In patent infringement case, obtained summary judgment of invalidity for accused infringer Tamarack Scientific (Ultratech, Inc. v. Tamarack Scientific Co., N.D. California, Case No. 3:03-cv-03235).

  • Representing Cardinal Health, Inc., et al. against Inmar relating to alleged trade secret misappropriation and breach of contract (Carolina Coupon Clearing, Inc. d/b/a Carolina Services Company, Inc. v. Cardinal Health Managed Care Services, LLC. et al., M.D. North Carolina, Case No. 1:16-cv-00412).

  • Represented accused infringer Cardinal Health, Inc., in patent infringement action against T-Rex Property relating to Digital Information Systems (case settled on confidential terms) (T-Rex Property AB v. Cardinal Health, Inc., E.D. Texas, Case No. 16-cv-05484).

  • Represented accused infringer Cardinal Health, Inc., against patent infringement claims related to monitoring and comparing user manipulations with feature templates (case settled on confidential terms) (Data Carriers, LLC v. Cardinal Health 108, LLC, Case No. 2:15-cv-1354).

  • Represented accused infringer Medicine Shoppe (a Cardinal Health subsidiary) against patent claims related to internet technologies (case settled on confidential terms) (GeoTag v. Medicine Shoppe, E.D. Texas, Case No. 2:11-cv-404).

  • Represented accused infringer Nationwide Insurance against patent claims related to a network having selectively accessible recipient prioritized communication channel profiles (case settled on confidential terms) (Loramax LLC v. Nationwide Mutual Insurance Company, E.D. Texas, Case No. 2:15-cv-00675.).

  • Represented Bally Technologies and Scientific Games against IGT 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).

  • Representing JLIP, LLC, et al. against Jetpack Enterprises, LLC, et al. with respect to allegations of patent infringement and breach of contract relating to hoverboard technologies (Jetpack Enterprises, LLC, et al. v. JLIP, LLC, et al., C.D. CA, Case No. 8:15-cv-02113).

  • Representing 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 (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).

  • Representing 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 (Funai Electric Co., Ltd., et al v. LSI Corporation, et al., N.D. California, Case No. 5:16-cv-01210).

  • Represented Funai Electric Co., Ltd., et al. against LSI Corporation, Agere Systems LLC and Avago Technologies General IP with respect to allegations of patent infringement relating to WIFI and MPEG technologies (case was dismissed) (LSI Corporation, et al., v. Funai Electric Co., Ltd., et al., N.D. CA, Case No. 15-cv-04037).

  • Representing accused infringer Cincinnati Bell v. ILEA on patent claims with respect to patent infringement claims relating to telecommunications technologies (case ongoing) (International License Exchange of America v. Cincinnati Bell, Inc., D. Delaware, Case No. 1:16-cv-00715).

  • Represented HSN against Guyzar LLC with respect to allegations of patent infringement relating to security systems for internet provider transactions. (Guyzar LLC v. HSN, Inc., E.D. Texas, Case No. 2:15-cv-2005).

  • Representing Colas Solutions Inc. against Blacklidge Emulsions, Inc., in declaratory judgment action of non-infringement (patent) relating to asphalt emulsion technologies (Colas Solutions Inc. against Blacklidge Emulsions, Inc., Case No. 1:16-cv-00548).

  • Represented dunnhumby Ltd. against emnos (an American Express subsidiary) in patent infringement declaratory judgment action of non-infringement (patent) relating to asphalt emulsion technologies (dunnhumby Ltd. v. emnos USA Corp., N.D. Illinois, Case No. 1:13-cv-00399).

  • Represented accused infringer against claims related to utility patent involving illuminated mirrors (‘836 patent) (case settled on confidential terms) (Conair Corporation v. Zadro Products, Inc., D. Connecticut, Case No. 3:15-cv-01424.).

  • Represented plaintiff related to infringement related to egg cartons using PET material (‘169, ‘364, ‘126, ‘872 patents) (case settled on confidential terms) (Pactiv LLC v. Highland Packaging Solutions, Inc., N.D. Georgia, Case Nos. 1:15-cv-00374 and 1:15-cv-01316).

  • Represented accused infringer against claims related to MotionPrint enabled products (‘342 and ‘987 patents) (case was dismissed) (Sockeye Licensing TX LLC v. OKI Data Americas Inc., E.D. Texas, Case No. 2:15-cv-01626).

  • Representing accused infringer Muzak Holdings LLC and Muzak LLC on patent claims related to a programmable messaging system for controlling playback of messages on remote music on-hold (case ongoing) (Info-Hold, Inc. v. Muzak Holdings LLC & Muzak LLC, S.D. Ohio, Case No. 1:11-cv-283).

  • 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).

  • Defended Newport Corporation against patent infringement claims by Unibeam Photonics related to laser technologies (case settled on confidential terms) (Unibeam Photonics, LLC v. Newport Corporation, E.D. Texas, Case No. 2:15-cv-1811).

  • In patent infringement and antitrust case, represented patent owner and accused infringer Independent Ink. All claims other than antitrust case settled on confidential terms. Antitrust case went to U.S. Supreme Court after the district court granted summary judgment to defendants and the case was appealed to the U.S. Court of Appeals for the Federal Circuit (CAFC). The CAFC reversed in favor of Independent Ink (Independent Ink v. Illinois Tool Works, CAFC, Case No. 2004-1196). The Supreme Court then reversed the doctrine of presumed market power in a patented product, in tying cases, but agreed that the presumption of market power over a tied product should remain intact in the tying product market if there is market power in the tying product (Independent Ink v. Illinois Tool Works, Inc., Supreme Court, Case No. 04-1329).

  • Represented Funai entities against patent claims related to DVD technology (case settled on confidential terms) (TV Interactive Data Corp. v. Sony Corp., N.D. California, Case No. 5:10-cv-00475).

  • Represented call recording company in four different district court actions against patent claims related to call recording technology in Delaware District Court, S.D. Ohio and N.D. Georgia (case settled on confidential terms) (Verint Systems, Inc. v. Call Copy, Inc., D. Delaware, Case No. 1:13-cv-00562; D. Delaware, Case No. 1:13-cv-01408; S.D. Ohio, Case No. 2:2013cv00942; and N.D. Georgia, Case No. 1:14-cv-00523-TWT).

  • Represented alleged infringer of patent related to asphalt emulsion technology (case settled on confidential terms) (Terry Asphalt Materials, Inc. v. Blacklidge Emulsions, Inc., S.D. Ohio, Case No. 1:2009-cv-00553).

  • Represented food chain in dispute over indemnity obligations arising from patent case (case settled on confidential terms) (Kroger Co. v. Ateb, S.D. Ohio, Case No. 1:2009-cv-00196).

  • Represented patent owner against alleged infringer related to USB devices (case settled on confidential terms) (Lantronix, Inc. v. Digi International, Inc., C.D. California, Case No. 8:2004-cv-00513).

  • Represented alleged infringer of patent related to USB devices (case settled on confidential terms) (Digi International, Inc. v. Lantronix, Inc., C.D. California, Case No. 0:2004-cv-01560).

  • In declaratory judgment action, represented patent owner against alleged infringer related to consumer LED goods (case settled on confidential terms) (Buztronics v. Lightcubes, S.D. Indiana, Case No. 1:2008-cv-01685).

  • Represented patent owner against alleged infringers related to automotive parts (case settled on confidential terms) (Intellectual Property Holdings, LLC v. Wescast (USA) Inc., N.D. Ohio, Case No. 1:2008-cv-00418).

  • Represented patent owner against alleged infringers related to medical practitioner verification technologies (case settled on confidential terms) (Medversant Technologies, LLC v. Morrisey Associates, Inc., C.D. California, Case No. 2:09-cv-05031).

  • Represented alleged infringer of patents related to technologies for monitoring traffic information (case settled on confidential terms) (Cincinnati Bell Inc. v. Traffic Information LLC, D.C. Oregon, Case No. 3:10-cv-01453).

  • Represented alleged infringer against patent claims related to interactive video networks (case settled on confidential terms) (EON Corp. IP Holdings, LLC v. T-Mobile USA, Inc., E.D. Texas, Case No. 6:10-cv-00379).

  • Represented alleged infringer against patent claims related to vehicle status reporting systems (case settled on confidential terms) (Arrivalstar S.A. v. Trailer Bridge, Inc., M.D. Florida, Case No. 8:09-cv-01307).

  • Represented alleged infringer against patent claims related to vehicle status reporting systems (case settled on confidential terms) (Arrivalstar S.A. v. Langham Logistics, Inc., S.D. Indiana, Case No. 1:08-cv-01689).

  • In a declaratory judgment action, represented alleged infringer against patent claims related to vehicle status reporting systems (case settled on confidential terms) (Cincinnati Bell, Inc. v. Arrivalstar S.A., S.D. Ohio, Case No. 1:11-cv-00274).

  • Represented Oki entities, alleged infringer, against patent claims related to semiconductor technologies (case settled on confidential terms) (OKI America, Inc. v. Advanced Micro Devices, Inc., N.D. California, Case No. 3:040-cv-003171).

  • In a declaratory judgment action, represented patent owner against alleged infringer related to high-speed variable printing technologies (case dismissed based on lack of jurisdiction) (Electronics for Imaging v. Tesseron, Ltd., N.D. California, Case No. 5:2007-cv-05534).

  • Represented patent owner against alleged infringer related to high-speed variable printing technologies (case settled on confidential terms) (Tesseron, Ltd. v. Konica Minolta Business Solutions U.S.A., Inc., N.D. Ohio, Case No. 1:2007-cv-02947).

  • Represented patent owner against alleged infringer related to high-speed variable printing technologies (case settled on confidential terms) (Tesseron, Ltd. v. R.R. Donnelley & Sons, N.D. Ohio, Case No. 1:2006-cv-2909).

  • Represented patent owner against alleged infringer related to high-speed variable printing technologies (case settled on confidential terms) (Tesseron, Ltd. v. Xerox Corp., N.D. Ohio, Case No. 1:2004-cv-02164).

  • Represented accused infringer against patent claims related to sunglass technologies (case settled on confidential terms) (Oakley, Inc. v. Nike, Inc., C.D. California, Case No. 2:01-cv-04102-R-AJW).

  • Represented accused infringer against patent claims related to sunglasses technologies (case settled on confidential terms) (Oakley, Inc. v. Kaenon LLC, C.D. California, Case No. 8:04-cv-00572-AHS-MLG).

  • Represented alleged infringer against patent claims related to vehicle status reporting systems (case settled on confidential terms) (Arrivalstar S.A. v. WTS Paradigm, M.D. Florida, Case No. 1:2012-cv-23845).

  • Representing alleged infringer of patents related to computer forensic hardware devices (case transferred to California) (MyKey Technology, Inc. v. Data Protection Solutions by Arco, D.C. Delaware, Case No. 1:11-cv-00444).

  • Represented accused infringer against patent claims related to telephone encryption technologies (case settled on confidential terms) (ISwitch, LLC v. Cincinnati Bell Inc., E.D. Texas, Case No. 6:12-cv-118).

  • Represented accused infringer against patent claims related to technologies that allow secure financial transactions (case settled on confidential terms) (Swipe Innovations, LLC v. Elavon, Inc., E.D. Texas, Case No. 9:12-cv-0040).

  • Representing corporation against alleged infringer related to variable data printing technology (Tesseron, Ltd. v. Punch International NV, M.D. Florida, Case No. 6:10-cv-00909).

  • Representing alleged infringer against patent claims related to die bonders (Graywire, LLC v. Ciena, N.D. Georgia, Case No. 1:08-cv-02993). Case stayed pending reexamination.

  • CBM Petition: Represents Respondent in CBM proceedings with the USPTO. (emnos USA Corp., Petitioner v. dunnhumby Limited, patent owner. CBM 2015-00116). Petition denied.

  • CBM Petition: Represents Respondent in CBM proceedings with the USPTO. (emnos USA Corp., Petitioner v. dunnhumby LTD., patent owner. CBM 2015-00162). Petition denied.

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)

  • "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)

  • "Non-Practicing Entity (NPE) Patent Owners and the Developing Law," Information Technology Law Institute 2012: Innovations in Apps, E-books, Cybersecurity, Mobile Technology, Privacy and Social Media (April 2012)

  • "A Funny Thing Happened on the Way to the Forum," speech on forum shopping in patent cases at the University of Dayton 21st Annual Intellectual Property Seminar (June 2011)

  • "New Standard for Computer-Implemented Means-Plus-Function Claims?" co-presented with Matthew P. Hayden to the Cincinnati Bar Association, Intellectual Property Litigation Committee (April 2011)

  • Southern District of Ohio Patent Local Rules, presented to Columbus Federal Bar Association CLE (January 2011)

  • Southern District of Ohio and Northern District of Ohio Patent Local Rules, presented to Cleveland Metropolitan Bar Association (December 2010)

  • Southern District of Ohio Patent Local Rules, presented to Dayton Federal Bar Association CLE (December 2010)

  • Southern District of Ohio Patent Local Rules, presented to the Third Annual Quad City Symposium for CincyIP, DIPLA, TIPLA, CIPLA and the University of Dayton School of Law (July 2010)

  • "Management of IP Cases" at Fifth Biennial Federal Bench Bar Conference for Ohio (October 2009)

Recognitions and Memberships

Recognitions

  • Chambers USA: Intellectual Property in Ohio (2010 to 2017)
  • The Legal 500 United States (2015 to 2017)
    • Recommended in Patent litigation: full coverage
  • BTI Client Service All Star (2015)
  • The Best Lawyers in America© (2013 to 2018)
    • Cincinnati: Litigation – Intellectual Property
    • Cincinnati: 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 2017)

Memberships

  • Federal Rules Committee for the Southern District of Ohio

Industries

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, 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)