Kevin X. McGann | White & Case LLP International Law Firm, Global Law Practice
Kevin McGann
Kevin McGann

Kevin X. McGann

Partner, New York

Kevin McGann is a patent lawyer in White & Case’s Competition group, and was named one of the world’s leading patent practitioners in 2012, 2013 and 2014 by IAM Patent 1000.

Overview

Kevin has a growing reputation as a leading patent litigation lawyer, with a practice focusing on the 'electrical arts,' such as microprocessor designs, mobile communications, e-commerce and software-related inventions. His clients include Google, Verizon Wireless, Panasonic, Marvell Semiconductor and KeyScan.

Companies in the pharmaceuticals and biotechnology industries, as well as issuers and underwriters involved in public and private offerings, also benefit from his experience and insight on matters relating to intellectual property in transactions.

Kevin counsels clients on issues ranging from patent procurement and enforcement, to evaluation of third-party intellectual property for product clearance and potential business mergers. He also shares his significant knowledge of licensing intellectual property, and obtaining licenses from third parties.

Drawing on his thorough grasp of complex technologies and their legal interpretation, Kevin provides robust and insightful representation on patent infringement and unfair competition cases across diverse areas of technology, both in district courts and before the Court of Appeals for the Federal Circuit.

Bars and Courts

  • New York State Bar
  • US District Courts for the Southern and Eastern Districts of New York
  • US Court of Appeals for the Federal Circuit
  • US Patent and Trademark Office

Education

  • JD, Fordham University School of Law
  • BSEE, Manhattan College

Languages

  • English

Experience

Patent Litigation, 2015 - ongoing

Kevin represented Google Inc. and YouTube, LLC in a patent infringement case brought by VideoShare LLC in the District of Delaware.  After taking the case over from another firm, we obtained a judgment on the pleadings that all asserted claims of both patents-in-suit were directed to patent ineligible subject matter and dismissing the case.

Patent litigation, 2013 – 2015

Kevin represented Google subsidiary Nest Labs, Inc. in a patent infringement case brought by BRK Brands in the Northern District of Illinois. Following a claim construction hearing in which the court ruled in Nest’s favor on nearly all disputed terms, the plaintiff stipulated to invalidity and non-infringement. The parties resolved the matter while an appeal was pending.

Patent litigation, 2013 – 2015

Kevin represented Google subsidiary Nest Labs, Inc. in a patent infringement case brought by Allure Energy Inc. in the Eastern District of Texas. Kevin and his team successfully defeated Allure’s request for a preliminary injunction, and one of the three patents-in-suit was held invalid at the claim construction stage.  The parties resolved the matter shortly before trial.

Patent litigation, 2011 – 2014

Kevin represented Google Inc. in a patent infringement case brought by British Telecommunications in the District of Delaware. Shortly before trial, the Court granted one of Google's motions for summary judgment of non-infringement.

Patent litigation, 2011–2014

Kevin represented Google Inc. in a patent infringement case brought by British Telecommunications in the District of Delaware. Shortly before trial, the Court granted one of Google's motions for summary judgment of non-infringement.

Google and YouTube in summary judgment win, 2010 – 2016

Kevin represented Google in two patent infringement matters filed in the Southern District of New York (Manhattan) by Wireless Ink Corporation ('Wireless Ink Corp. v. Facebook Inc.'). The Federal Circuit recently affirmed a summary judgment of non-infringement of all asserted claims.  A third matter was stayed pending reexamination of the patent-in-suit, the claims of which were rejected by the patent office and the pending case was dismissed in 2016.

Patent litigation, 2012 – 2014

Kevin represented HTC in a patent infringement case brought by Nokia in the District of Delaware. The matter was resolved.

Patent litigation, 2010 – ongoing

Kevin acted for Google in a patent infringement matter filed by Interval Licensing LLC, in the Western District of Washington. The claim, filed against major internet search and e-commerce companies, alleged infringement of four patents held by Interval. (Interval Licensing LLC v. AOL, Apple, eBay, Facebook, Google, Netflix, Office Depot, OfficeMax, Staples, Yahoo!, and YouTube' (W.D. Wash. 2010). He obtained a stay of several patents during re-examination, the claims of which stand rejected; the rejection of claims was affirmed on appeal. He also obtained a ruling of invalidity and/or non-infringement on the remaining claims of the two other patents on summary judgment. This ruling on invalidity was affirmed by the Federal Circuit.  In 2016, Kevin lead a team that obtained a judgment on the pleadings that the remaining asserted claims were directed to non-patentable subject matter and dismissing the case with respect to the remaining claims.  An appeal is pending.

Patent litigation, 2009 – 2010

Kevin represented Google in a patent infringement matter filed in the District of Delaware, Xpoint Technologies Inc. v. Microsoft et al. He and his team obtained a voluntary dismissal of the case for Google.

Computer peripherals representation, 2009 –2011

Kevin represented KeyScan, Inc. in a patent infringement case relating to computer peripherals, Soque Holdings (Bermuda) Ltd., v. KeyScan, Inc. In June 2010, he argued for and obtained a favorable claim construction ruling. We had also previously obtained a dismissal of the action brought by Soque's child company Visioneer, and an award of fees - which was an unusual result.

Patent infringement, 2007 – 2010

Kevin represented Cellco Partnership d/b/a Verizon Wireless in a patent infringement action brought by Netcraft Corporation (Netcraft Corporation v. AT&T Mobility et al.), in the District of Delaware. He took the lead in arguing all of the claim construction issues on behalf of all of the wireless carriers. The matter was resolved.

Patent litigations and counselling, 2009 – 2010

Kevin represented Marvell Technology Group in various patent litigations and strategic patent counseling matters. He was part of a team that represented Marvell in a patent litigation involving wireless local area network technology, Marvell Semiconductor, Inc. et. al. v. Commonwealth Scientific and Industrial Research Organisation. At the pre-trial conference, claim construction was addressed and argued. The parties subsequently entered into settlement discussions and reached a settlement that was very favorable for our client.

Publications

  • Business Method Patents: Supreme Court's Decision in Bilski Effectively Returns to the Status Quo Ante the Federal Circuit's Decision, White & Case Client Alert, July 2010, (co-author with Warren Heit, David Tennant and Amy Bagdasarian)
  • False Marking Statute Applies to Articles Marked with Expired Patents, White & Case Client Alert, June 2010, (co-author with Dimitrios Drivas, Christopher Glancy and Bijal Vakil)
  • Forest Group Spawns a Flurry of False Marking Litigation, White & Case Client Alert, March 2010, (co-author with Dimitrios Drivas)
  • Federal Circuit Vacates Lucent Damages Award and Provides Guidance for Reasonable Royalty Analysis, IT, Internet and Outsourcing Bulletin, December 2009, (co-author with Daren M. Orzechowski and Aaron Chase)

Awards & Recognition

The World's Leading Patent Practitioners, IAM Patent 1000, 2012, 2013 and 2014