Kevin M. Kocun, a partner in the firm, is involved in all aspects of the IP practice. With extensive background in the procurement and enforcement of patents and trademarks throughout the world, Mr. Kocun focuses on developing sound IP strategies for his clients. Mr. Kocun has counseled clients in a variety of fields including the general mechanical arts with an emphasis on medical devices. Mr. Kocun is often involved in various stages of product development and release, including minimizing the risk of third party litigation, procurement of patent rights covering the product and providing guidance in connection with naming and branding.
Mr. Kocun also specializes in handling large due diligence projects for clients in connection with the license or purchase of IP assets. The goals of these projects are to aid in establishing value for the target IP, while minimizing risks associated with the acquisition. Mr. Kocun's involvement often extends through the preparation and execution of license or purchase agreements for the given assets and into the effective integration of the acquired assets into the clients' existing business.
Mr. Kocun has also been involved in several large scale patent infringement matters, in addition to handling both reexamination and interference proceedings before the United States Patent and Trademark Office.
Mr. Kocun is admitted to practice before the United States Patent and Trademark Office, and in both New Jersey and New York.
Due Diligence, Mergers and Acquisitions
Licensing, Consulting and Other Agreements
IP Asset Management
2007, New York
2005, New Jersey
2003, United States Patent & Trademark Office
J.D., Seton Hall University Law School, 2003
B.S., Mechanical Engineering, Villanova University, 1999; Pi Tau Sigma
SYNTHES (U.S.A.) v. STRYKER CORP., Civil Action No. 06-5681-AB (E.D. Pa. Mar. 19, 2009). In this two-year-old patent infringement suit brought by Synthes (U.S.A.) against our client Stryker Corp. and its subsidiary, Howmedica Osteonics Corp., the district court granted our motion to stay further proceedings pending reexamination of Synthes' patent-in-suit, directed to a threaded insert for a bone plate screw hole. Reexamination of Synthes' patent by the United States Patent and Trademark Office was commenced in response to a request for reexamination filed on behalf of Howmedica Osteonics by our firm. In March 2008, the district court had issued a claim construction order broadly construing the patent's claims, which resulted in the request for reexamination. The stay was granted by the district court in the face of arguments by Synthes that the stay motion was a "transparent" attempt to unnecessarily delay the case.
In a trial in late 2006, we successfully tried the issues of validity and infringement before a jury in Newark, New Jersey in Stryker v. Synthes. The Stryker patent found infringed by the jury relates to the setting fractures with an external fixation system somewhat reminiscent of an erector set. After fighting off Synthes' post trial motions before the judge on, among other things, the validity of the asserted patent, we were faced with yet another validity challenge, this time the result of Synthes' petition for reexamination before the U.S. Patent and Trademark Office. With the depth of our litigation and prosecution experience, we presented evidence supporting our longstanding and judge and jury-tested position that the asserted patent was valid. In June 2008, the U.S. Patent and Trademark Office rendered a decision that Synthes' attack was not persuasive and that the patent claims held infringed would stand as previously issued and litigated.
Supreme Court Upholds Award of Lost Foreign Profits For Patent Infringement
Supreme Court Rules Inter Partes Decisions Are Here To Stay, With Modifications
Fourth Circuit Provides Important Guidance Regarding DMCA Safe Harbor
Federal Circuit Makes It Easier For Patent Owners To Amend Claims in IPR
Supreme Court Expands Doctrine Of Patent Exhaustion
Supreme Court Limits Patent Venue
Supreme Court Eliminates Laches Defense To Patent Damages
Supreme Court Reins In Infringement Liability For Exporting "Components"
Design Patents Continue To Offer Powerful Protection Even After Supreme Court Decision Reining In Damages
Federal Circuit Further Clarifies Scope Of Abstract Idea Exception
Federal Circuit Clarifies Patent Eligibility For Life Sciences Inventions
Supreme Court Rejects Test For Enhanced Damages in Favor of Less Burdensome Test
Defend Trade Secrets Act Is Passed
Petitions For Inter Partes Review Face Increased Scrutiny
Laches Defense Still Applicable To Patent Cases
Federal Circuit Applies Extraterritoriality Principle To Trim Damages Award
Federal Circuit Expands Scope Of Divided Infringement Liability
Good-Faith Belief In Invalidity No Longer A Defense To Inducement Of Infringement
Supreme Court Upholds Preclusive Effect Of TTAB Decisions
Design Patents To Get Boost From New Treaty
Willful Infringement: Still Viable
Supreme Court Shifts Claim Construction Review
District Court Endorses "Patent Exhaustion" Defense
Federal Circuit Panel Reaffirms Viability Of Laches Defense In Patent Cases
Supreme Court Continues To Issue Significant Patent Rulings
Supreme Court Weighs In Regarding Patentability Of Financial Products
Supreme Court Sharply Limits Laches Defense
Supreme Court Weighs In On Fee Awards In Patent Cases
Federal Circuit Expands Reach of Doctrine of Equivalents
PTAB Ruling Demonstrates Value of Patent Owner Preliminary Responses in Inter Partes Review
Patent Office Invalidity Challenges Gather Momentum
Belief in Invalidity an Important Factor in Finding No Inducement
Supreme Court Decision Renders Patent Ineligible Isolated DNA
Sony Wins Knock-out Jury Verdict
Global Changes To Facilitate Brand and Design Protection Continue
Consider Filing Patent Applications As One Of Your New Year's Resolutions
New Virtual Patent Marking Rules Offer Convenience And Flexibility
Recent Federal Circuit Decision Changes Law On Divided Infringement
America Invents Act Changes Go Into Effect September 16, 2012
USPTO Reacts To Prometheus Decision
Kevin Kocun Speaks on Due Diligence at NJLJ Seminar
Supreme Court Authorizes Federal Court Challenges To Pharmaceutical "Use Codes"
Recent Supreme Court Case Impacts Patentability Of Diagnostic Testing Claims
The America Invents Act Is Coming