Patrick D. McPherson

Partner

  • Patrick D. McPherson
  • Phone: +1 202 776 5214

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  • Duane Morris LLP
    901 New York Avenue N.W., Suite 700 East
    Washington, DC 20001-4795
    USA

Patrick D. McPherson is the managing partner of the firm's Washington, D.C. office. As a member of the firm’s Intellectual Property Practice Group, Mr. McPherson represents clients in the acquisition, enforcement and protection of all aspects of their intellectual property rights. He also heads the firm’s Patent and Trademark Appeal Board (PTAB) and Inter Partes Review practice groups.

Mr. McPherson represents U.S. and foreign clients in the acquisition of patent rights in diverse technologies such as telecommunications, semiconductors, wireless communications, computer software, data processing and analytics, financial services, mobile geolocation, pharmaceuticals, and medical devices and electronics and assists clients in establishing competitive patent review programs.

Mr. McPherson has served as trial counsel both in the enforcement of, and defense against patent infringement lawsuits in federal courts throughout the United States.  He has assisted litigation clients in developing appropriate strategies to challenge asserted patents before the PTAB and has prepared and filed over seventy petitions seeking Inter Partes Review (IPR) or review of covered business methods (CBM).  Mr. McPherson has successfully represented clients in patent litigation appeals before the Court of Appeals for the Federal Circuit.

Mr. McPherson counsels clients in the development, maintenance and protection of brand identifiers, including conducting registrability investigations, prosecuting trademark applications, initiating and defending inter partes proceedings before the United States Patent and Trademark Office, reviewing marketing materials and coordinating international protection programs.  Mr. McPherson has represented clients at both the trial and appellate level regarding trademark infringement and unfair competition.

He assists clients in identifying, registering and protecting their copyrighted works in diverse areas such as computer software, written and other artistic works and Web site design and has extensive experience in the transfer and licensing of copyrighted works.

Registered to practice before the United States Patent and Trademark Office and admitted to practice in Maryland, he is a member of the Maryland State Bar and the American Intellectual Property Law Association. Mr. McPherson is a 1995 graduate of the Columbus School of Law of The Catholic University of America and a graduate of the United States Naval Academy.

Representative Matters

  • Represented petitioner Unified Patents in IPR challenging the validity of a patent directed to remote storage systems for mobile devices. The Patent Trial and Appeal Board agreed with the challenge and held all claims unpatentable as obvious. Unified Patents v. SynKloud Technologies, Inter Partes Review No. 2019-01655.

  • Represented defendant in patent infringement action in Eastern District of New York regarding semiconductor process patents. After 6 day jury trial, successfully obtained verdict of no inducement on plaintiff’s $300 million claim.

  • Represented defendant in patent infringement action in District of Delaware regarding semiconductor process patents. Achieved Summary Judgment ruling of non-infringement on eve of trial.

  • Represented major VOIP provider as defense litigation coordination counsel for 6 patent infringement suits over 3 year period in US District Courts in Delaware, Southern District of New York, Kansas, Eastern District of Texas and Eastern District of New York. All litigations resulted in settlements of claims favorable to client.

  • Represented numerous patent litigation defense in preparing and filing over seventy petitions seeking Inter Partes Review (IPR) challenging the validity of asserted patents. Almost every Petition resulted in cancellation of challenged claims or settlements favorable to client.

  • Represented plaintiff in patent infringement action in Eastern District of Texas regarding secure financial transactions. Successfully obtained verdict for plaintiff after 5 day jury trial.

  • Represented patent infringement defendant as appellee in appeal of a Summary Judgment ruling of non-infringement from Northern District Court of Georgia, resulting in affirmance by Court of Appeals for the Federal Circuit.

  • Represented defense contractor as opposer in a trademark opposition proceeding before Trademark Trial and Appeal Board. Successfully proved competitor’s mark was generic in spite of forty years of prior exclusive use.

  • Represented defendant during two five-day jury trials and appeal before the Fourth Circuit regarding trademark infringement in the fire vehicle industry. Ultimately successful in achieving a jury verdict of no liability for our client and successful on counterclaims of trademark infringement by plaintiff based on plaintiff’s prior abandonment of the trademark. The appellate case resulted in precedent setting law on the issue of trademark abandonment in the Fourth Circuit.

  • Represented defense contractor regarding export of telecommunications technology ensuring compliance with Export Administration Regulations (EAR), International Trafficking in Arms Regulations (ITAR) and the US Munitions List.

  • Represented telecommunications equipment manufacturer during Federal Trade Commission (FTC) investigation of competitor’s non-compliance with Standard Settings Organization’s Intellectual Property Rights (IPR) policy regarding Standard-Essential Patents (SEPs).

  • Routinely conducts IP portfolio reviews relating to mergers and acquisitions of companies, sale or acquisition of IP assets, and funding agreements.

Areas of Practice

  • Patent Litigation
  • PTAB Proceedings
  • Patent Prosecution
  • TTAB Proceedings
  • Trademark Prosecution
  • Copyrights
  • Trademark Litigation
  • Trade Secrets
  • Unfair Competition, including Lanham Act claims and FTC investigations
  • Government Contracts, including Intellectual Property rights under the Bayh-Dole Act, FAR and DFAR
  • Intellectual Property Due Diligence related to mergers and acquisition and funding agreements

Admissions

  • U.S. Patent and Trademark Office (USPTO)
  • Maryland
  • Maryland Court of Appeals
  • U.S. Court of Appeals for the Federal Circuit

Not admitted in D.C. Practice in D.C. limited to matters and proceedings before federal courts and agencies.

Education

  • The Catholic University of America, Columbus School of Law, J.D., 1995
  • United States Naval Academy, B.S., Naval Architecture, 1985

Experience

  • Duane Morris LLP
    - Partner, 2002-present
  • Carter, Ledyard & Milburn, Washington, D.C.
    - Counsel, 2000-2001
  • Rogers & Killeen, Alexandria, Virginia
    - Partner, 1998-2000
    - Associate, 1997-1998
  • National Association of Securities Dealers, Rockville, Maryland
    - Attorney, 1995-1997
  • United States Navy
    -Nuclear Submarine Officer, 1985-1992

Professional Activities

  • American Intellectual Property Law Association

Selected Speaking Engagements

  • Panelist, "IPR: A Real Threat or Just Fake News," Eastern District of Texas 2017 Bench Bar Conference, Plano, TX, October 5, 2017