Clifton McCann is an experienced patent attorney who focuses on the strategic development and defense of patent rights in the chemical, biological, mechanical, and software arts. As first- and second-chair trial and appellate counsel he has an undefeated record in patent infringement litigation, with awards and settlements ranging into eight figures.
Mr. McCann uses his 25-plus years of experience to help clients stay focused on the business and practical aspects of patenting, which in turn allows informed decisions on patent procurement, enforcement, and defense based on realistic estimates of cost and the likely impact of patent protection on market share, industry leverage, profits, and business value. Mr. McCann provides validity and infringement opinions, exploits patent rights, defends against patent infringement challenges, and, when necessary, litigates patent rights in the federal district courts and the U.S. Court of Appeals for the Federal Circuit.
Representative Matters
Mr. McCann has had responsibility for the following representative matters:
· Lead counsel for defendant, large national credit union, in patent infringement case involving method of encrypting data, brought by non-practicing entity.
· Lead counsel for defendants, major paper shredder manufacturer and customers of manufacturer (large office supply chain-stores), in patent infringement case involving lubricant products, brought by non-practicing entity.
· Lead trial counsel for patentee Ecolochem (now part of GE) in Ecolochem, Inc. v. Southern California Edison Co., a patent infringement case involving water purification. Four-week trial resulted in judgment of validity and willful infringement, with damages and attorney-fee award. Successfully argued related appeals to the U.S. Court of Appeals for the Federal Circuit. Client received 8-figure settlement after defendant's petition for certiorari was denied.
· Lead counsel for accused infringer Red Devil, Inc. in Sashco, Inc. v. Red Devil, resulting in summary judgment of non-infringement of patents for caulk products.
· Counsel for patentee medical device manufacturer in patent litigation regarding pipettes, resulting in successful defense against summary judgment motion and favorable settlement.
· Trial co-counsel for patentee in patent infringement case concerning coin-operated arcade games. One-week trial resulted in jury verdict of liability and a favorable settlement that included award for past damages.
· Counsel for large pharmaceutical company in patent validity challenge under Hatch-Waxman paragraph IV matter against generic drug manufacturer, resulting in settlement favorable to client.
· Patent damages counsel in litigation between two leaders in the semiconductor chip industry, which resulted in multi-year cross license allowing the parties to practice each other's technology.
· Trial counsel for owner of famous MENSA mark, resulting in defendant international drug development company's abandonment of federal trademark application and cessation of use of ADMENSA on drug discovery software and services.
· Lead counsel in successful defense of validity challenge of "Invisible Fence" dog retaining system in patent reexamination proceeding brought by national retailer.
· Lead counsel for Fortune 50 client in effort to obtain patent protection for immune disease therapy after successful appeal to U.S. PTO's Board of Patent Appeals and Interferences.
Representative Clients
Mr. McCann represents high-tech manufacturers, consumer product manufacturers, service providers in the engineering field, water purification companies, startup companies, and a wide variety of other owners of valuable patent and trademark rights.
Activities
Mr. McCann is active in intellectual property law organizations and has held the following leadership positions:
· Chairman of the Committee on Federal Intellectual Property Litigation of the American Bar Association
· Chairman of the Markman Patent Claim Interpretation Subcommittee of the American Bar Association
· Chairman of the Patent, Trademark and Copyright Law Section of the Bar Association of the District of Columbia
· Executive Board Member of the Patent, Trademark and Copyright Law Section of the Bar Association of the District of Columbia
· Member, Board of Trustees of the Foundation of the Bar Association of the District of Columbia
Mr. McCann writes and lectures on patent and intellectual property law, with focuses on patentability, patent damages, and patent law developments pertinent to the chemical and water purification fields. He is an editor of Venable's IP Buzz.
Before joining Venable, Mr. McCann was a managing partner of Lane, Aitken & McCann, a patent boutique listed in Martindale-Hubbell's Bar Register of Preeminent Law Firms. Mr. McCann studied chemistry and biology at Northern Illinois University, obtained J.D. from Catholic University of America while employed as business analyst, and received an LL.M. in patent law and trade regulation from George Washington University, a lead law school in the intellectual property field.
Industries
Consumer Products and Services
Life Sciences
Memberships
Patent, Trademark and Copyright Law Section of the Bar Association of the District of Columbia
Intellectual Property Law Section of the American Bar Association
American Intellectual Property Law Association
Federal Circuit Bar Association
Licensing Executives' Society
American Chemical Society
Patent Lawyers Club of Washington, DC
Intellectual Property Owners Association
News
May 3, 2012, Washington, DC edition of Super Lawyers 2012 honors 18 Venable attorneys
January 24, 2012, Clifton McCann quoted in National Law Journal on effects of America Invents Act
June 8, 2011, Clifton McCann named Top Patent Prosecutors by Patent Buddy
July 12, 2010, Clif McCann receives American Mensa's 2010 Chairman's Award
July 14, 2004, American Mensa Regains Control Over Use of Mensa Trademark: Venable Represents High IQ Society in Settlement with Carlton
January 29, 2003, Venable Successfully Asserts Valuable Patent for Ecolochem, Inc.
May 12, 2000, Venable Welcomes Lane, Aitken & McCann
Honors
Selected for inclusion in District of Columbia Super Lawyers 2012
AV® Peer-Review Rated by Martindale-Hubbell since 1986.
Publications
Mr. McCann has recently published the following:
April 2012, IP Buzz - April 2012
Meaghan Hemmings Kent, Clifton E. McCann, Elissa Brockbank Reese, Jacqueline Levasseur Patt, Peter Curtin, Brett A. Garner, Melissa C. McLaughlin, Deborah A. Feinblum, Justin E. Pierce, Marcella Ballard
IP Buzz
March 2012, IP Buzz - March 2012
Meaghan Hemmings Kent, Clifton E. McCann, Elissa Brockbank Reese, Jeffrey D. Knowles, Christopher S. Crook, Meaghan Hemmings Kent, Lars H. Genieser, Ph.D., Michael A. Gollin, Fabian M. Koenigbauer, Meaghan Hemmings Kent
IP Buzz
March 12, 2012, ClearValue v. Pearl River: Ranges within ranges - when are they patentably distinct?
Clifton E. McCann
IP Buzz
January 19, 2012, America Invents Act - Already Making its Mark
Clifton E. McCann
October 13, 2011, America Invents Act of 2011: Major Changes in the Law that Will Affect Patent Litigation Strategies
Clifton E. McCann
IP Frontline
October 13, 2011, Why do I Need to Know about the America Invents Act?
Clifton E. McCann, Lars H. Genieser, Ph.D.
September 2011, Historic Patent Reform Bill to Become Law
Clifton E. McCann, Thomas F. Barry
July 2011, Patent Reform Bill Nearing Passage; Financial Services Sector to Be Impacted
Clifton E. McCann, Nathaniel S. Berry, The Honorable Bart Stupak, Robert L. Smith, II, William J. Donovan
June 10, 2011, Supreme Court Upholds Clear and Convincing Evidence Standard in
Microsoft v. i4i
Clifton E. McCann, Meaghan Hemmings Kent
January 5, 2011, Supreme Court Patent Cases: Past And Pending
Clifton E. McCann
Law360
Events/Speaking Engagements
Mr. McCann has recently appeared as a panel member and lecturer as follows:
Upcoming Events
May 18, 2012, "Smart Water Systems" at the 2012 Water Infrastructure Summit
Clifton E. McCann
Past Events
December 6, 2011, "Why Do I Need to Know About the New Patent Law?" Venable Webinar
Clifton E. McCann, Lars H. Genieser, Ph.D.
November 16, 2011, "America Invents Act of 2011: How You Can Use It to Your Company's Advantage," International Water Conference
Clifton E. McCann
September 28, 2011, "Effective Use of Patents to Raise Capital and Protect R&D" at the Annual Water Innovations Alliance Conference
Clifton E. McCann, Charles J. Morton, Jr., Lars H. Genieser, Ph.D.
June 20, 2011, "Patent Damages Update: Recent Changes and Related Strategies" for District of Columbia Bar
Peter Curtin, Clifton E. McCann
May 16, 2011, "Effective Use of Patents to Raise Capital and Protect R&D" at the Dayton Water Conference
Clifton E. McCann, Charles J. Morton, Jr., Lars H. Genieser, Ph.D.