JOHN T. KENNEDY, ESQ.
PATENT ATTORNEY AND OWNER
A long-time resident of Denver’s Washington Park (“Wash Park”) neighborhood, for 20+ years Colorado patent attorney John Kennedy has helped his clients Build and Defend their portfolios of patents, trademarks and other intellectual property (“I.P.”) rights and Navigate patent assertions by non-practicing entities (NPEs, a.k.a., “patent trolls”) and others’ IP assertions.
Overview
John’s highly regarded ability to Build, Defend and Navigate IP rights on behalf of his clients arises from his real-world experience as both a Partner at one of America’s leading, international law firms, and as the Vice President of IP and Chief IP Counsel for two Fortune 500 companies. Today, clients seek John’s assistance not only because of his knowledge and experience but most notably due to his keen analytical mind, out-of-the-box thinking, creativity, and innovative problem solving abilities. As an inventor on 20+ patents, when the job needs to be done right and efficiently, John is your go-to choice for practically all facets of I.P. law, including preparing, prosecuting, licensing and litigating patents, trademarks, copyright, open source, trade secrets, other intellectual property rights. In particular, clients seek John’s expertise in the telecommunications, software, computer, semiconductors, electrical circuits, medical devices, electronic devices, and other high-technology fields.
Prior to his legal career, John made vital contributions to the military space program by launching, testing, commanding and controlling military communications and early warning satellites. John also gained real-world engineering experience and knowledge as a Boeing engineer.
As a founding steering committee member of the Colorado (and now regional) ProBoPat program (which provides Pro Bono patent services), John is passionate about finding ways for I.P. attorneys to “give back” to their community and provide patent expertise to those otherwise unable to financially pursue their innovations.
Order of St. Ives, Top 10% (Graduated 5th in class)
Scholastic Achievement Awards in Constitutional Law and Computer Law
Masters of Business Administration: 1992, The University of Colorado (finance emphasis)
Bachelor of Science, Electrical Engineering: 1988, Kansas State University
Admissions
U.S. District and State Courts, Arizona and Colorado
U.S. Patent and Trademark Office
Patent: Portfolio Development, Management, Preparation and Prosecution
- Led development of combined DISH and EchoStar patent portfolios (including all subsidiaries)
- Grew patent portfolio from less than 50 active matters in 2006 to over 1,000 active matters worldwide
- Portfolio recognized by IEEE as #10 in Comm./IE category for 2012
- Managed team of in-house attorneys and outside counsel on all world-wide IP issues
- Responsible for multi-million dollar IP group budget
- Trained inventors and implemented worldwide IP harvesting program
- Grew patent portfolio from less than 50 active matters in 2006 to over 1,000 active matters worldwide
- Developed patent taxonomy program and awards programs at DISH and EchoStar
- Led and conducted numerous freedom to operate, clearance and other projects
- Prepared and prosecuted (and supervised outside counsel regarding) U.S. and international patent applications in technologies including telecommunications, networking, computer hardware & software, video processing and others, representative clients have included DISH Network, Deluxe Entertainment, Caption Colorado, ACTV, Hunter Douglas, Xetawave, Los Alamos Technical Advisors, Hewlett Packard, EdiSync Systems, Registrar Systems, Fieldbus Foundation, and others
- Developed new approach for patent acquisition review and valuation
- Responsible for all of DISH’s and EchoStar’s IP legal matters (excluding U.S. litigations)
Prepared non-infringement and (in)validity opinions
Patent: Litigation, Reexaminations and Inter-Partes Reviews
- EdiSync Systems Centra Software et al., EdiSync v. Citrix, and EdiSync v. Adobe (all D. Colo.):
- Developed infringement and validity cases for plaintiff’s web conferencing patent
- Defended validity of plaintiff’s U.S. Patent No. 5,799,320 in three reexaminations
- 2nd Chair for Markman Hearing in Centra matter (including presenting oral arguments)
- Case managing attorney for EdiSync in EdiSync v. Adobe matter
- Attended to all aspects of discovery, including taking and defending depositions, expert and motion practice, damages issues, document production disputes, and e-discovery
- Reviewed and advised on settlement agreements by EdiSync with other non-conflicted entities
- All matters, besides Adobe, have been favorably settled
- Sisvel v. EchoStar, Court of the Hague, Netherlands: Led team of European and U.S. lawyers in patent dispute regarding audio signal processing technologies
- Katz v. EchoStar: Responsible for obtaining opinion of counsel letters
- Multimedia Patent Trust v. EchoStar, USDC San Diego: Represented EchoStar in settlement negotiations regarding video processing technologies
- Nissim Corp. v. Clearplay (S.D. Florida): For defendant, led team of attorneys in developing non-infringement, invalidity and Markman positions, attended to discovery, experts, etc. regarding audio-video parental control technology resulting in favorable settlement
- Sievers v. Ionics (D. Colo.): Developed combined Markman and summary judgment positions for plaintiff’s water testing patent resulting in favorable settlement
- ACTV v. ABC: Represented ACTV in developing infringement case and patent portfolio directed at interactive television services
- Reexaminations (Ex Partes and Inter Partes)
- TiVo v. EchoStar:
- Led reexamination efforts of TiVo’s asserted patent (resulting in adverse prosecution disclaimers)
- Defended EchoStar’s counter-suit patents in Ex Partes and Inter Partes Reexams
- Led EchoStar’s Appeal efforts to Patent Office’s BPAI
- Personalized Media Communications v. EchoStar: Led development of Reexam positions
- Global Communications Inc. EchoStar: Led development of Reexam positions
- TiVo v. EchoStar:
- Inter-Partes Reviews:
- Extensive training at Dorsey on IPR practice
- Advised client on invalidation positions for IPRs against certain asserted patents
- Original Co-editor of Dorsey’s IP Blog, “Decisions in IPR” (www.patentdevelopments.com)
- Lead negotiator and evaluator for DISH and EchoStar regarding patent assertions and in-licensing matters
Commercial Transactions
- Non-disclosure agreements (NDA):
- Developed new NDA provisions to mitigate indirect patent infringement concerns arising from later assertions of patents reviewed when originally offered for sale
- IP Licenses and Settlement Agreements:
- Negotiated and/or advised on patent licenses and/or settlement agreements with licensing pools, non-practicing entities (NPEs), Fortune 100 entities and others valued well in excess of $100M
- Clients and/or counter-parties include: ACTV, ABC, AT&T, Dolby, EdiSync Systems, I.B.M., Multimedia Patent Trust MPEG-LA, Nissim, Sisvel, Via Licensing and numerous NPEs
- Other Agreements
- Advised legal and business leaders on agreements regarding R&D collaboration, technology joint development, retailer, trademarks and otherwise
- While at DISH, reviewed and advised on IP aspects of most commercial agreements
- Advised on IP indemnity clauses of commercial agreements
- Open Source and Trade Secrets
- Developed, with engineering team leads, EchoStar Open Source policies
- Advised clients on trade secret protection programs
- Copyright
- Advised clients on issues regarding the digital millennium copyright act (DMCA), fair use, privacy, rights of publicity and others IP topics
- Negotiated and/or advised on patent licenses and/or settlement agreements with licensing pools, non-practicing entities (NPEs), Fortune 100 entities and others valued well in excess of $100M
Mergers & Acquisitions (“M&A”) & Spin-offs
- Led IP team’s pre-diligence and due diligence efforts for EchoStar’s and/or DISH’s acquisitions of Blockbuster, DBSD, Dwight Cavendish Systems, Hughes Communications, Sling Media, Terrestar and other companies and of numerous patent portfolios
- Co-team recipient of DISH’s Chairman’s Award (DISH’s highest honor) in 2007 for leading IP team’s contributions during spin-off of EchoStar from DISH (spin-off effective January 1, 2008)
Trademarks & Domain Names
- Managed trademark demand letter practice, oppositions and assertions worldwide
- Managed trademark search, clearance and monitoring efforts
- Managed and advised clients on gTLD acquisition, monitoring, registration and related efforts
- Managed and advised clients on domain name and similar disputes including UDRPs
- Advised clients on right of publicity and other issues
Owner: August 2016 – Present
| Dorsey & Whitney LLP, Denver, Colorado | ||
| Of Counsel: | April 2011 – 2016 | |
| Partner: | 2005 – 2006 | |
| Associate: | 1998 – 2004 | |
DISH Network and EchoStar Corporations, Englewood, Colorado
Acting Chief IP Counsel, DISH: March 2012 – June 2014 (Secondment)
V.P. of Intellectual Property, DISH: September 2006 – March 2011
V.P. of Intellectual Property, EchoStar: September 2006 – March 2011 (pre & post spin-off)
Snell & Wilmer, Phoenix, Arizona
Associate: September 1997 – September 1998
Prepared and prosecuted patent applications in computer hardware and software, semiconductors and solar cell technologies, representative clients included Rockwell Semiconductor, First Solar and others
Pittenger & Smith, Denver, Colorado
Intern: February 1997 – May 1997
Attorney: May – June 1997
Post law school, on part-time basis and while awaiting separation from Active Duty, prepared and prosecuted patent applications in various technologies
Captain (final rank) February 1989 – June 1997
Controlled, launched and tested military communications satellites
Managed 20+ member team responsible for space based missile launch early warning system
Boeing Company, Wichita, Kansas
Electrical Engineer: June 1988 – January 1989
Authored maintenance and repair manuals for Air Force One, B-52s and F-16s
Prior to his legal career John was a Captain in the US Air Force where he supervised teams of twenty+ people involved in a satellite based missile early-warning system, and launched, tested and controlled military communications satellites. John also worked as an Electrical Engineer at Boeing Company where he developed technical repair and maintenance manuals for Air Force systems including Air Force One, B-52s and F-16s.
I have retained John Kennedy for over 15 years on a wide variety of patent and IP matters. He’s unconventional, has amazing energy, is creative and fun. He gets results at the US Patent Office and in contract negotiations that few others can conceive of and does it in a fraction of the time.
Past results are not indicative of future results.