John F. Kacvinsky

As a co-founder of the firm, John Kacvinsky brings over 30 years of intellectual property law practice to the table. He has litigated all phases of patents before federal courts and has prosecuted patents before the USPTO. His blend of private practice and Fortune 100 experience translates to trusted advice for clients seeking to develop a strategic portfolio or identify and protect technologies that provide a competitive advantage in the marketplace.

 

John’s legal career, academic background and range of technical degrees have contributed to his deep knowledge of IP and its impact across industries. John is currently completing his dissertation for his PhD in Electrical & Computer Engineering.

Role/Title

  • Senior Principal

Education

  • University of Delaware, PhD, Electrical and Computer Engineering Candidate (G2 Status – Dissertation Research), Expected 2024
  • University of Delaware, MS, Electrical and Computer Engineering, 2018
  • Catholic University of America, Columbus School of Law, JD, Law Review, 1994
  • University of Pittsburgh, School of Computing and Information, MS, Telecommunications, 1991
  • Duquesne University, BS, Computer Science, BA, Psychology, 1987
  • United States Army Schools & Centers, Fort Gordon, GA, Honors Diploma, Signal Corps Officer Course, 1987

Admissions

  • Bar: Pennsylvania; District of Columbia; North Carolina
  • Other: Registered to practice before the U.S. Patent and Trademark Office

Practice Areas

  • Patents
  • Data Privacy
  • Copyrights

Industries

  • Consumer Products
  • Heavy Industry and Robotics
  • Medical Devices
  • Technology
  • Hardware
  • Software and Electronics

Notable Legal Expertise

  • Patent prosecution
  • Patent portfolio development, licensing, and due diligence studies
  • Freedom to operate
  • Patent analysis and opinions

Representative Technological Experience

  • Artificial intelligence and machine learning
  • Wireless communication technologies
  • Cybersecurity and cryptography
  • Artificial reality and virtual reality hardware, software, and haptics
  • 3D gaming systems, robotics, and computer architecture
  • Semiconductor packaging and processing
  • Mobile devices
  • Natural language processing systems
Prior to founding the firm in 2003, John spent several years as senior in-house counsel at a large, Fortune 100 semiconductor company, where he helped create and defend patents for semiconductor, computing, and communications technologies. He also draws from early-career experience at large DC law firms where he focused on patent portfolio development, patent licensing, patent counseling, and patent litigation.

Experience

  • Intel Corporation, Senior Patent Attorney, 2000–2003
  • Kenyon & Kenyon, Patent Attorney, 1996–1999
  • Dickstein Shapiro, Patent Attorney, 1994–1996
  • MCI Communications, Technical Specialist, 1992–1994

Honors

  • Chambers and Partners 2016 Recognized Practitioner
  • CUA Law Review

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