Kevin J. O'Shea
Principal & Registered Patent Attorney
Kevin is an experienced intellectual property attorney who advises clients in the U.S. and abroad across a wide spectrum of intellectual property issues — developing and implementing patent, trademark, trade secret, and copyright portfolio strategies; educating stakeholders on IP issues; conducting freedom-to-operate analyses; assessing and avoiding third-party rights; and negotiating and drafting IP-related agreements.
He is particularly adept at strategies that produce optimum results in the most commercially intelligent manner — resolving disputes outside of litigation where possible and, when litigation is commenced, identifying the ideal strategy and timing for a resolution favorable to his client.
Experience
- Principal O'Shea Law LLC 2017 – Present
- Partner, Intellectual Property Ice Miller LLP 2014 – 2017
- Shareholder, Intellectual Property Greenberg Traurig, LLP 2007 – 2014
- Associate, Intellectual Property Winston & Strawn LLP 2003 – 2007
- Associate, Intellectual Property Kirkland & Ellis LLP 2000 – 2003
- Associate, Intellectual Property Jenner & Block LLP 1998 – 2000
- Specialist, Intelligence Analyst (CEWI) U.S. Army Reserve, 138th Military Intelligence Battalion 1984 – 1992
Representative Matters
A selection of representative engagements. Client identities are withheld to preserve confidentiality.
- Trial counsel for an international home goods company in a patent infringement matter involving cookware technology; defeated the opponent's motion for preliminary injunction, obtained summary judgment on all substantive issues, and successfully defended the judgment on appeal to the Federal Circuit.
- Lead counsel for an international home goods manufacturer enforcing patents on vacuum-sealing technology against a competitor founded by a former employee; defeated the opponent's summary-judgment motion and disqualified opposing counsel based on a prior representation.
- Lead counsel for more than 70 clients in multi-district litigation involving the 802.11 Wi-Fi standard; negotiated low settlements for all clients before significant expense was incurred.
- Represented a food ingredient distributor against a non-practicing entity in a patent infringement case involving a naturally occurring ingredient; settled for a zero-dollar payment.
- Lead counsel for a laser-scribing company enforcing patents and addressing trade-secret misappropriation and breach of contract by a former joint-venture partner; settled favorably after early substantive victories.
- Lead counsel for an international clothing retailer enforcing trademark and domain-name rights; prevented infringing and counterfeit use of a well-known outdoor products brand.
- Represented a generic pharmaceutical manufacturer in ANDA patent litigation involving seven patents and hundreds of claims; settled favorably after a preliminary-injunction hearing.
- Successfully defended a SaaS provider against trademark-infringement and Anticybersquatting Consumer Protection Act claims; won summary judgment of non-infringement across fourteen trademarks and of no ACPA violation across dozens of asserted domain names.
Admissions
- Illinois
- Missouri
- Registered Patent Attorney, U.S. Patent and Trademark Office
- U.S. Court of Appeals for the Federal Circuit
- U.S. Courts of Appeals for the Third, Seventh, and Ninth Circuits
- U.S. District Court for the District of Colorado
- U.S. District Courts for the Northern and Central Districts of Illinois
- U.S. District Court for the Eastern District of Missouri
- U.S. District Courts for the Eastern and Western Districts of Wisconsin
Education
- Loyola University Chicago School of Law — Juris Doctor, 1999
- University of Illinois — B.S., Chemical Engineering, 1996