Kevin Moran Photo

Kevin P. Moran

Partner

Overview

Clients look to Kevin for strategic counsel on the protection of their intellectual property, including acquisition of, enforcement of, and defense against United States and international patents.

His strong track record in these areas, paired with a technical background as a product engineer, give Kevin a unique perspective on the challenges facing developers of mechanical, electro-mechanical, and biomedical technologies.

Kevin has significant experience in the areas of fitness equipment, motorcycles, vehicle braking systems, bicycles, theatrical lifts and lighting, window coverings, and digital cameras.

His focus includes:

  • Counseling clients in challenging the validity and enforceability of competitors’ patents through ex parte and inter partes reexamination proceedings, and Post-Grant Proceedings, such as inter partes reviews (IPR)
  • Acquiring, enforcing, and counseling on United States and foreign patents, trademarks, copyrights, and trade secrets
  • Negotiating and providing counsel on worldwide intellectual property licenses and technology transfers
  • Product development counseling
  • Preparing validity and infringement opinions
 

Kevin’s work is regularly honored by regional and national ranking organizations. Since 2013, he has been named a “Leader in The Field” by Chambers USA and an “IP Star” by Managing Intellectual Property magazine. Within the firm, Kevin has held various leadership roles, including as a member of the Management Committee, Chair of the Intellectual Property Group, and leader of the Advanced Manufacturing Team.

Prior to joining Michael Best, Kevin worked at a Colorado-based boutique IP law firm and as a product engineer for Trek Bicycle Corporation. 

Experience

Bringing IP strategy up to speed

A world-leading motorcycle manufacturer called on Kevin and his team to develop an overall strategy for intellectual property management. Together with in-house counsel, processes were put in place for deciding what to patent; for identifying competitive patent risks; and for pursuing potential infringement issues. Kevin helped the company form an internal Patent Review Committee, comprised of senior executives, that effectively protects their assets while pursuing strategic goals. Kevin has also successfully defended against multiple charges of patent infringement over the past 15 years.

Taking preemptive action to protect patents

Kevin's client, an international manufacturer of fitness devices, had a competitor known for its highly aggressive patent litigation tactics. To guard against potential infringement suits, Kevin and his team preemptively prepared and filed three petitions for inter partes review. This move resulted in significant savings over the cost of litigation and enabling the client to continue doing business as usual. To date, two petitions have resulted in the invalidation of all original claims, while the third is on appeal to the Court of Appeals for the Federal Circuit.

Derailing competitor claims in bet-the-company matters

One of the world’s most renowned manufacturers of bicycles for competitive racing – including for the Tour de France and the Giro d’Italia – faced a challenge relating to its wheel rims, which generate millions of dollars in sales each year. Kevin filed a request for reexamination resulting in a highly favorable settlement, and pursued the case to the Court of Appeals for the Federal Circuit to permanently derail the competitor.

Avoiding unnecessary lawsuits

Since 2012, Kevin has filed dozens of requests for reexamination and petitions for inter partes review through the U.S. Patent and Trademark Office. This economical, time-saving alternative to the federal court system results in a review by a panel of three patent law judges who are well-versed in the field at issue. The process generally takes less than 18 months. In the interim, clients are able to continue with business as usual. 

Honors & Recognitions

  • Lexology Client Choice Award, Intellectual Property - Patents, 2017
  • Leading Intellectual Property Lawyer, Chambers USA, 2013-present
  • AV Preeminent® rated, Martindale-Hubbell, 2005-present
  • IP Stars, Managing Intellectual Property magazine, 2015-present
  • The Best Lawyers in America®, Intellectual Property & Patent Law, 2010-present

Professional Activities

  • Member, American Bar Association
  • Member, Wisconsin Bar Association
  • Member, American Intellectual Property Law Association
  • Member, PTAB Bar Association

Education

Admissions

Community Involvement

  • Steering Committee, Past Chair, Black-N-Blue Ball for Muscular Dystrophy Association
  • Board of Directors, Past President, Milwaukee Curling ClubFundraising
  • Razor Sharp Minds Foundation

Additional Interests

  • Cycling
  • Vintage Motorcycle Restoration
  • Snowboarding
  • Fishing
  • Travel
  • Motorcycles
  • XC Skiing
  • Kayaking and Canoeing
  • Curling (the sport)
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