Jeff Weiss, a U.S. Registered Patent Attorney based in the firm's
Washington, D.C. office and a partner in the firm, has been practicing
law since 1987. Mr. Weiss has primary responsibility for the firm's
patent and intellectual property litigation. Prior to joining the firm,
he practiced commercial litigation with Irell & Manella in Los
Angeles and Ross, Dixon and Masback (now Ross, Dixon and Bell) in
In addition to appearances in
District Courts throughout the country (including Arizona, California,
Maryland, Massachusetts, Minnesota, Nevada, New York, Texas and
Washington), Mr. Weiss's substantial litigation experience includes
five infringement appeals before the United States Court of Appeals for
the Federal Circuit, one of which remains pending.
Mr. Weiss's recent IP litigation accomplishments include:
the defendant in a patent infringement case in Nevada District Court
involving two patents relating to gaming technology. Obtained favorable
Markman ruling and summary judgment of non-infringement with respect to
Represented the plaintiff in a
lawsuit in Nevada district court against a former employee alleging
copyright infringement and breach of employment agreements relating to
product designs and confidential manufacturing information. Obtained
preliminary injunction, leading to settlement of all pending claims.
as co-counsel in highly complex trademark ownership and infringement
dispute, involving litigation in state, federal and bankruptcy courts
in Arizona and California. Case culminated in full vindication of
clients' positions with respect to ownership and infringement issues,
following lengthy trial and post-trial and plan confirmation
Represented the defendant in a
trademark infringement action in Arizona District Court involving
claims relating to the name of an NBA arena. Confidential settlement
achieved following representation at evidentiary hearing in connection
with plaintiff's request for a preliminary injunction.
reversal of summary judgment in favor of an infringement defendant,
with the Federal Circuit holding that there was a material factual
issue with respect to infringement under the doctrine of equivalents
(1998 U.S. App. Lexis 10416 (Fed. Cir. 1998))
reversal of summary judgment of patent invalidity, based on the alleged
failure to name an inventor (216 F.3d 1372 (Fed. Cir. 2000)). The
Federal Circuit's decision in this appeal interpreted the second
paragraph of Section 112 of the Patent Act, one of the basic laws
governing the validity of issued patents. Irah Donner, the author of
Patent Prosecution: Practice and Procedure Before the U.S. Patent
Office, has called it a "key" Federal Circuit decision. It has also
been the subject of at least one law review note. See Janet S.
Hendrickson, Solomon v. Kimberly-Clark Corp.: The Federal Circuit
Throws Out the § 112 2 "Regards" Clause with Inventor Litigation
Testimony, 32 Univ. Tol. L. Rev. 407 (2001).
plaintiff in a patent infringement action in Maryland District Court,
culminating in a withdrawal of the accused infringing product from the
Represented defendant in patent infringement
action in Eastern District of Texas relating to telecommunications
equipment and involving multiple defendants. Case resulted in pre-trial
Represented defendant in patent
infringement action in Eastern District of Texas relating to wireless
location technology. Case resulted in pre-trial settlement.
defendant in patent infringement action in Northern District of
California relating to harvesting technology. Case resulted in
In addition to his litigation
practice, Mr. Weiss prosecutes patent applications for a wide variety
of products, components and technologies, and has particular expertise
in the medical device, mechanical, and business method areas. In 1992,
he appeared before the United States Court of Appeals for the Federal
Circuit, and persuaded the Court to reverse a unanimous decision of the
Board of Patent Appeals and Interferences, denying patent protection to
a football shoe having break-away cleats. (26 U.S.P.Q. 2d 1885 (Fed.
Cir. 1993)). The New York Times profiled that patent, U.S. 5,255,453, as one of its patents of the week. He has also argued before the Board of Patent Appeals and Interferences.
Mr. Weiss also conducts infringement studies, issues patentability opinions, and negotiates licensing agreements.
Mr. Weiss is also the co-inventor of a utility patent directed to a bench press shoulder protection method (U.S. Patent 6,224,518).
Languages Spoken: Hebrew
Licensed since 1987
Fixed (Sometimes), Retainer (Sometimes)
Cash, Check, Credit Card
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