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 Washington, D.C.
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:
Represented 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 both patents.
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.
Served 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 proceedings.
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.
Obtained 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))
Obtained 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).
Represented plaintiff in a patent infringement action in Maryland District Court, culminating in a withdrawal of the accused infringing product from the market.
Represented defendant in patent infringement action in Eastern District of Texas relating to telecommunications equipment and involving multiple defendants. Case resulted in pre-trial settlement.
Represented defendant in patent infringement action in Eastern District of Texas relating to wireless location technology. Case resulted in pre-trial settlement.
Represented defendant in patent infringement action in Northern District of California relating to harvesting technology. Case resulted in pre-trial settlement.
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).