Adamo, Kenneth R.

Current Employment Position(s)

Partner

Lawyer Overview

Ken Adamo practices as a trial lawyer in all areas of intellectual property law, including patent, trademark, copyright, unfair competition, trade secrets, trade dress, and related antitrust matters. He is registered to practice before the U.S. Patent and Trademark Office, Reg. No. 27,299 (1974) and is admitted to the state bars of Illinois (1975), New York (1976), Ohio (1984), and Texas (1988).

Ken has extensive trial experience as lead counsel in jury and nonjury cases before the state and federal courts and before the United States International Trade Commission, as well as ex parte and inter partes experience in the U.S. Patent and Trademark Office. He also has had substantial experience as lead counsel in arbitrations (ICC, AAA, as well as nonadministered proceedings) and other alternative dispute resolution proceedings.

Although acting as lead trial counsel makes up the core of his practice, Ken has an active practice before the U.S. Court of Appeals for the Federal Circuit, where he has appeared to date in more than 35 appeals, most of which he has argued.

Ken has written and lectured on intellectual property law, for both U.S. and non-U.S. publications and organizations, on topics and issues including U.S. permanent injunction/eBay practice, U.S. motion practice, U.S. discovery practice (including e-discovery), International Trade Commission proceedings, reexamination, fraud/inequitable conduct in procuring patents, combined-reference obviousness, cyberart, the doctrine of equivalents/prosecution history estoppel, exhaustion, internet jurisdiction, patent marking, and effects of non-U.S. adjudications on U.S. litigation. He also has written and lectured on a wide variety of trial and litigation issues, skills, and training.

Areas of Practice

• Intellectual Property
• Trial Practice
• International Litigation & Arbitration
• Patent Litigation
• Patent Prosecution & IP Counseling
• Biotechnology
• Diagnostics
• Federal Circuit & IP Appeals
• International Trade Disputes & Proceedings
• ITC Section 337
• Life Sciences
• Medical Devices

Representative Cases

• Affymetrix wins dismissal of patent infringement claims , (2009)
• Alltel defends against patent infringement claims by EMSAT for E911 service
• American Honda files ITC complaint in patent infringement dispute over engines , (2009)
• AMSCO International brings successful patent infringement suit against Surgikos relating to hydrogen peroxide sterilization methods
• Apple successfully defends against modem technology patent infringement charges
• Apple successfully defends against patent infringement action involving internet music downloading
• Arrow International enforces and defends against dispute with Douglas Press over bingo game paper and methods of production
• Arrow International negotiates royalty-free license in patent infringement settlement with Stuart Entertainment over bingo paper
• CenterPoint Energy favorably settles infringement dispute brought by RAKTL
• Chevron Corporation favorably settles patent infringement claims brought by RAKTL
• Chi Mei defends against patent infringement allegations relating to LCD flat panel technology , (2009)
• Chi Mei defends against patent infringement suit involving its LCD manufacturing technology , (2009)
• Colt's Manufacturing settles trademark infringement action prior to appeal , (2009)
• Cricket Communications and Leap Wireless defend against patent infringement claims by EMSAT involving GPS-assisted services and emergency 911 technology for cell phones
• Dell defends against patent infringement action involving image enhancement technology
• Dell resolves three-patent infringement dispute relating to computer systems and cache memory coherency
• Dense-Pac Microsystems pursues patent infringement action relating to microchip stacking technology , (2009)
• DePuy Spine wins Federal Circuit affirmance of $149.1 million award, one of ten largest patent jury verdicts affirmed on appeal , (2009)
• Eastman Chemical prevails in patent infringement action brought by Wellman involving PET , (2009)
• Encyclopedia Britannica successful in Section 145 action relating to reexamination of Compton multimedia product and process
• Extreme Networks defends against patent infringement claims relating to power-over-ethernet technology , (2009)
• Fedders favorably resolves prior to trial patent infringement action over wall-mounted HVAC units
• Ficosa defends against patent infringement charges over three automatic cable components
• Freescale defends against claims of patent infringement brought by Tessera before the ITC , (2009)
• Furukawa successfully defends against patent infringement charges involving copper alloys
• GE lodges Federal Circuit cross appeal seeking attorneys' fees in patent dispute with Whirlpool , (2009)
• Georgia-Pacific faces Nat'l Gypsum parent in DJ action over wallboards , (2009)
• Gillette defends against patent infringement allegations by national retail store relating to RFID tag technology , (2009)
• Gillette defends against patent infringement charges over inventory control system
• Gillette pursues patent infringement charges against Ranir's toothbrush heads , (2009)
• GM et al. defeat patent infringement claim involving internet operations , (2009)
• Hand Held Products resolves patent infringement dispute over scanners and imaging , (2009)
• HannStar Display, Proview and HannSpree successfully defend against patent infringement charges over LCD technology , (2009)
• Herbalife successfully defends against patent infringement charge related to managing dynamic web pages , (2009)
• Hercon Labs appeals judgment in patent dispute against Key Pharmaceuticals , (2009)
• Honda brings ITC action against Wuxi Kipor Power involving portable power equipment engines , (2009)
• Honda enforces patents related to portable power equipment engines
• Honda resolves patent infringement dispute initiated by Orion over electronic parts catalogs
• IBM answers patent infringement claims brought by Auburn University involving semiconductors , (2010)
• IBM defends against infringement charges over computer mouse patent
• IBM defends against patent infringement charges relating to soliciting and receiving Internet donations
• IBM files U.S. Supreme Court amicus brief in case involving scope of patent-law doctrine of obviousness , (2009)
• J.M. Smucker and Folgers defend against claims of patent infringement by Balsam over coffee processing , (2009)
• Jack-Post wins defense verdict in patent and trade dress infringement trial
• Katz defense group defends against patent infringement claims , (2011)
• KFC prevails in trademark infringement action , (2009)
• KOA favorably settles prior to trial patent infringement case involving resistor technology
• Lamson & Sessions succeeds in appeal of electrical outlet cover patent infringement jury verdict , (2009)
• Lenovo defends infringement claims by CIF Licensing over patent for MPEG data compression technology , (2010)
• Lubrizol wins noninfringement verdict on appeal in suit brought by Exxon involving oil additives
• MathWorks defends against patent infringement case relating to software for modeling and simulating dynamic systems , (2009)
• MOSAID Technologies pursues claims against Samsung and Infineon for infringement of semiconductor chip patents , (2009)
• MOSAID Technologies settles favorably in patent infringement case involving computer memory , (2009)
• Motorola and Freescale resolve patent suit with STMicroelectronics over 12 semiconductor patents , (2009)
• Motorola/Freescale settle favorably patent infringement action involving semiconductor technology , (2009)
• Nestlé defends against antitrust counterclaims in Break-n-Bake cookie dough patent infringement case , (2009)
• Nestlé Purina resolves patent infringement dispute over cat litter, resulting in product withdrawal
• Nestlé settles favorably in patent infringement case relating to cat litter product , (2009)
• Nevamar settles long-running patent infringement dispute involving decorative laminates for countertops
• Nokia settles favorably patent infringement suit involving modulation technology
• Nokia successfully defends against claims of patent infringement relating to 3G wireless technology , (2009)
• Nokia wins favorable summary judgment in patent infringement case involving design of cell phone keyboards , (2009)
• ON Semiconductor files patent infringement suit following Samsung's declaratory judgment action , (2009)
• Pharmacia Biotech prevails on appeal, rendering plaintiff's patent unenforceable in inequitable conduct ruling , (2009)
• Picker Int'l settles favorably during trial in patent infringement suit involving software-based MRI imaging units , (2009)
• Premiere Global resolves patent infringement claims brought by patent-holding company RAKTL , (2009)
• Procter & Gamble maintains win in patent infringement suit regarding Always and Tampax feminine products , (2009)
• Procter & Gamble prevails in patent infringement case involving Crest Whitestrips , (2009)
• Procter & Gamble pursues trademark infringement charges related to personal care products , (2009)
• Procter & Gamble resolves patent dispute with Asher over toothbrush technology , (2009)
• Procter & Gamble resolves patent infringement dispute over fabric fresheners , (2009)
• Procter & Gamble settles favorably in patent infringement action involving diaper fastening system , (2009)
• Procter & Gamble settles favorably in series of patent infringement suits against Unilever involving detergent products , (2009)
• Procter & Gamble settles patent infringement dispute with SC Johnson over fabric refresher product , (2009)
• Procter & Gamble succeeds in patent dispute against Clorox involving multiodor spray treatment product , (2009)
• Procter & Gamble successfully appeals BPAI decision to Federal Circuit , (2009)
• Procter & Gamble wins on cutting edge discovery issues in the U.S. to suit up for foreign patent disputes over disposable training pants , (2009)
• Procter & Gamble battles Playtex over claims of patent infringement for feminine protection products , (2009)
• Regions Financial resolves patent infringement claims brought by patent-holding company RAKTL
• Saudi Basic Industries defends breach of contract and tort action governed by Saudi Arabian law in Delaware courts and Supreme Court , (2009)
• Saudi Basic Industries successfully appeals claim that nuclear reactor technology was misappropriated , (2009)
• Sharp successfully litigates against Samsung in patent infringement disputes before the ITC involving LCD technology , (2009)
• Soverain awarded ongoing royalties, past damages for infringement of two e-commerce patents, and new trial on damages for infringement of third e-commerce patent , (2010)
• Soverain resolves patent infringement actions against Amazon.com in $40 million settlement prior to trial , (2009)
• Soverain Software files patent infringement action against CDW
• Texas Industries favorably settles patent infringement action involving cement processing technology , (2009)
• Texas Instruments prevails in patent infringement dispute with Tessera relating to certain packages for semiconductor devices , (2009)
• Texas Instruments pursues patent infringement action against defendants over semiconductors , (2009)
• Texas Instruments resolves patent dispute with Samsung and settles for $1.1 billion in royalties , (2009)
• Texas Instruments resolves series of disputes with Hyundai Electronics over semiconductor patents , (2009)
• Texas Instruments takes on patent infringement challenge in ITC matter involving digital signal processing , (2009)
• Timken Company settles patent infringement suit involving alloy-plated bearings , (2009)
• Tokyo Electron defends against breach of contract and trade secret claims resulting in case dismissal , (2009)
• Total Petrochemicals defends against misappropriation of trade secrets and breach of licensing agreements action relating to polyethylene manufacturing technology
• Van Remortel settles prior to trial in misappropriation, wrongful procurement of patents suit
• Xilinx settles patent infringement dispute with Agere Systems and LSI over FPGAs , (2010)
• Yaskawa prevails in investigation alleging infringement of Fanuc patent relating to electric robots used in painting automobiles , (2009)
• Yaskawa prevails in patent infringement suit relating to motion control technology , (2009)

West Practice Categories

Bankruptcy Litigation, Class Actions, Complex Litigation, Copyrights, Federal Appellate Practice, Federal Claims Court, Federal Trial Practice, Intellectual Property Law, International Intellectual Property, International Trade Litigation, Litigation & Appeals, Military & Veterans Appeals, Multidistrict Litigation, Patent Litigation, Patents, State Appellate Practice, State Trial Practice, Tax Litigation, Technology Licensing, Trade Dress, Trade Secrets, Trademarks, US Court of Appeals for the Federal Circuit, US Supreme Court

Bar Admissions

• Illinois
• New York
• Ohio
• Texas

Education

• Albany Law School
• John Marshall Law Schl-Chicago
• Rensselaer Polytechnic Inst

Published Works

• Cut your risks in licensing, AIPPI Congress News, 2010
• Antitrust Alert: Federal Circuit Decision Limits Patent Misuse and Distinguishes It From Antitrust, 2010
• Stauffer v. Brooks Brothers, Inc.: Private Parties Have Standing To Sue Under The False Marking Statute, 2010
• In the Matter of Certain Coaxial Cable Connectors, IP Magazine, pp. 71-75, 2010
• Machine-or-transformation is "a useful and important clue," but not the sole test, Intellectual Property Magazine, Focus on Licensing, 2010
• In the Matter of Certain Coaxial Cable Connectors: the U.S. International Trade Commission clarifies the domestic industry requirement in patent infringement actions, International Association for the Protection of Intellectual Property e-News, No. 13, 2010
• Bilski: The Wait is Over, Intellectual Property magazine, 2010
• The Machine-or-Transformation Test Is "a Useful and Important Clue" for Determining Patent Eligibility Under Section 101, But Not the Sole Test, 2010
• Pequignot v. Solo Cup: The Federal Circuit Continues to Define and Clarify the Law of False Marking, 2010
• Forest Group, Inc. v. Bon Tool Co.: Opening The Floodgates For A New Wave Of Suits By "Marking Trolls," AIPPI e-News No. 12, 2010
• Opening the Floodgates, Intellectual Property magazine, 2010
• Testing the Boundaries, Patent World, Issue #215, 2009
• Patent Eligible Subject Matter Revisited: Tracking the Development of Business Method Patentability, coauthor, Patent World, Issue 208, p. 18., 2008
• Patent-Eligible Subject Matter Revisited: In re Bilski, 2008
• The Curse of "Copying," The Review of Intellectual Property Law, 2008
• Who Owns the Patents Covering a Company's Technology? Intellectual Property & Technology Law Journal, 2008
• The Changing Global Landscape Requires Flexibility and Creativity in United States Patent Enforcement, 2007
• Patent Reform Act of 2007: Bill Proposing Fundamental Changes to the Patent System (H.R. 1908) (S. 1145), 2007
• Reigning supreme, More uniformity to patent laws, Patent World Issue 190, 2007
• Reigning Supreme Over The U.S. Patent System, BNA Patent, Trademark & Copyright Journal, vol. 72, no. 1786 at 550, 2006
• Jones Day's Intellectual Property Practice, 2006
• U.S. House of Representatives Proposes Sweeping Changes in the Patent Reform Act (H.R. 2795), 2005
• Federal District Court in Pittsburgh Adopts Specialized Local Rules for Patent Cases, 2005
• Document Discovery in Patent Litigation, coauthor, 2004 Supplement to BNA/ABA Patent Litigation Strategies Handbook, Chapter 9, 2004
• Preserving Errors for Appeal in the U.S., 156 Patent World (U.K.) 22, 2003
• Survey of the Federal Circuit’s Patent Law Decisions in 2000: Y2K in Review, 50 American University Law Review 1435, 2001

Address

North Point
901 Lakeside Avenue
Cleveland, OH 44114-1190

Phones

1.216.586.7120 (Business Phone)
1.214.969.4856 (Other Phone)
1.216.632.9537 (Mobile Phone)

Faxes

1.216.579.0212 (Business Fax)
1.214.969.5100 (Other Fax)

Websites

http://www.jonesday.com