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, gives 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, hydraulic suspensions, 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. He has maintained an “AV Preeminent” rating from Martindale-Hubbell and has been listed in Best Lawyers in America in the area of Intellectual Property and Patent Law for 15 years and 10 years, respectively. 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, member of the Compensation 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.
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 for this client over the past 20 years.
Taking Preemptive Action to Protect Patents
Kevin's client, an international manufacturer of fitness devices, had a competitor known for its highly aggressive litigation tactics. To guard against potential infringement suits, Kevin and his team preemptively prepared and filed multiple petitions for inter partes review (IPR) and ex parte reexaminations. This move resulted in significant savings over the cost of litigation and enabled the client to continue doing business as usual. To date, the IPRs and reexaminations resulted in the invalidation of all original claims.
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, pursued the case to the Court of Appeals for the Federal Circuit, and eventually achieved a highly favorable settlement for his client.
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.
Exercising Multiple Approaches
Kevin led the defense of a patent infringement case, involving the communication of treadmills over Wi-Fi to provide owners a more in-depth exercise experience, brought by one of our client’s primary competitors. Kevin successfully invalidated three of the asserted patents.The fourth patent survived with amended claims, effectively reducing the strength and scope of the competitor’s patent. Confident that the client was not impeding on the competitor’s patent; Kevin filed a counterclaim set to invalidate the fourth and final patent. At this point the adverse party wished to settle the case, and Kevin agreed to a very favorable settlement for the client.
Honors & Recognitions
- Lexology Client Choice Award, Intellectual Property - Patents, 2017
- IP Stars, Managing Intellectual Property magazine, 2015-present
- Leading Intellectual Property Lawyer, Chambers USA, 2013-present
- The Best Lawyers in America©, Litigation – Patent, Patent Law, 2011-present
- The Midwest’s Best Lawyers©, Litigation – Patent, Patent Law, 2021
- AV Preeminent® rated, Martindale-Hubbell, 2005-present
- Member, American Bar Association
- Member, Wisconsin Bar Association
- Member, American Intellectual Property Law Association
- Member, PTAB Bar Association