Kenneth M. Fagin is experienced in both procuring patents and litigating patent matters. Additionally, he advises clients on strengthening their companies’ competitive positions and enhancing their value through the acquisition and use of intellectual property rights. He also guides clients in connection with their competitors’ and potential competitors’ intellectual property rights.
With respect to patent procurement, Mr. Fagin strives to secure for clients the broadest, highest-value patent coverage and protection obtainable, consistent with the clients’ business needs and objectives. Mr. Fagin has a well established record of success before the U.S. Patent and Trademark Office, historically securing allowance of clients’ patent applications at the Examiner level without resort to the application appeals process.
With respect to patent enforcement proceedings, Mr. Fagin has experience in all phases of pre-trial patent litigation activities, including in-court preliminary injunction and summary judgment proceedings; motion practice; expert witness practice; taking and defending depositions; and other discovery practices. In general, Mr. Fagin always brings to bear his litigation experience and sensitivity to litigation concerns to his patent prosecution and counseling practice; conversely, his patent prosecution experience enables him to understand and properly focus the hearing tribunal’s attention on the most relevant and/or the more subtle, yet still important, issues in a matter.
In the course of his career, on the prosecution and/or litigation sides of his practice, Mr. Fagin has worked with a vast array of mechanical, electro-mechanical, and electrical engineering technologies, including automotive components, aircraft engine components, gas turbine generators, wind power generators, large-scale desalination and other water purification processes, assorted quick-release fasteners, medical devices, food manufacturing and processing lines, and high-intensity surgical lighting systems. Additionally, Mr. Fagin has some experience with pharmaceutical manufacturing processes and product attributes, as well as ANDA regulatory issues.
Highlights
Representative litigation matters include the following:
Fosber America, Inc. V. Mitsubishi Heavy Industries, Ltd. (W.D. Wis.) Represented patentee in case concerning machinery for producing corrugated board. Secured admission from accused infringer’s expert witness in deposition that allegedly invalidating prior art did not meet appropriate clear and convincing standard. Case settled favorably shortly thereafter.
Dentsply International v. Great White, Inc. (M.D. Pa.) Represented patentee in patent and trademark matter concerning dental instruments. Preliminary injunction enjoining patent-infringing and trademark-infringing activities granted based on four-day hearing; default judgment and permanent injunction enjoining same and awarding damages granted.
Pfizer, inc. V. Shalala, et al (D.C.) Represented generic pharmaceutical manufacturer as third-party intervener in suit brought by pharmaceutical originator to enjoin FDA from considering third-party intervener’s ANDA on basis that third-party intervener’s drug product did not exhibit same dosage form as originator’s drug product. Motions by originator for preliminary injunction and summary junction denied as moot prior to FDA taking ANDA up for consideration. Case re-filed after ANDA granted but settled prior to judicial resolution.
Glaxo Wellcome, et al v. Mylan Pharmaceuticals (E.D.N.C.) Represented defendant in connection with patent pertaining to crystalline structure of ranitidine hydrochloride.
Representative patents include the following:
U.S. 7,485,222 (Apparatus for Hydrate-Based Desalination Using Compound Permeable Restraint Panels and Vaporization-Based Cooling) and U.S. 7,485,234 (Hydrate-Based Desalination Using Compound Permeable Restraint Panels and Vaporization-Based Cooling) (include some client-prepared description content)
U.S. 6,533,623 and U.S. 6,592,413 (Thrust-Reversing Nozzle Assembly for Watercraft)
U.S. 6,409,461 (Method and Apparatus for Stacking Tortilla Chips)
U.S. 6,304,766 (Optical-Based Sensing Devices, Especially for In-Situ Sensing in Humans)
U.S. 6,129,939 (Method for Making Bowl-Shaped Snack Food Products) and U.S. 6,291,001 (Method for Cooking Bowl-Shaped Snack Food Products)
U.S. 5,527,152 (Advanced Wind Turbine with Lift-Cancelling Aileron for Shutdown) and U.S. 5,527,151 (Advanced Wind Turbine with Lift-Destroying Aileron for Shutdown)
D591,678 (Cable Holder)
U.S. 2009/0260385 A1 (serial number 12/418,077, pending) (Atmospheric Water Harvesters with Variable Pre-Cooling) (includes client-prepared description content)
U.S. 2007/0141967 A1 (serial number 11/622,380, pending) (Die Grinder with Rotatable Head)
Practice Areas
Admissions
- U.S. Patent and Trademark Office
- District of Columbia
- Virginia
- Massachusetts
- U.S. Supreme Court
- U.S. Court of Appeals for the Federal Circuit
- U.S. District of Massachusetts
Education
- Washington University, J.D.
- Massachusetts Institute of Technology, B.S. Aeronautics and Astronautics