Kevin X. McGann is an acclaimed patent litigation lawyer, having been named one of the world’s leading patent practitioners each year from 2012 to 2020 by IAM Patent 1000, and by The Legal 500 from 2019 to 2020. His practice focuses on patent litigation and counseling across a variety of fields, including both high tech and life sciences. Kevin has been involved in litigating cases throughout the United States.
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.
Clients also benefit from his experience and insight on matters relating to intellectual property in transactions.
Prior to joining Fenwick & West, Kevin worked at a leading international law firm where he was a partner in the competition / litigation group.
Prior to embarking on his legal career, Kevin worked for IBM’s Research Division.
- Patent litigation, 2019 – 2020. Represented Google in defense of a patent infringement claim against its live streaming services, such as YouTube Live. We obtained a dismissal of the entire case with prejudice at the pleading stage for failure to state a claim for direct infringement because the allegations in the complaint showed that multiple actors were required and plaintiff failed to plead facts to support that any single actor directed or controlled the actions of others such that a single actor could be held liable for direct infringement.
- Patent litigation, 2019 – ongoing. Representing Tile in defense of a patent infringement claim related to its products and services for locating personal items.
- Patent litigation, 2019 – ongoing. Representing Almirall in patent litigation to enforce its patents related to acne treatment.
- Patent litigation, 2018 – ongoing. Representing Quest Diagnostics in the enforcement of its patents related to measuring certain metabolites in human blood samples.
- Patent litigation, 2017 – ongoing. Successful litigation on behalf of two pharmaceutical companies in connection with generic drug manufacturers attempts to gain approval to market generic versions of a Parkinson’s Disease transdermal therapeutic system.
- Patent litigation, 2017 – ongoing. Representing a pharmaceutical conglomerate in connection with its efforts to offer biosimilars.
- Patent litigation, 2010 – ongoing. Acted for Google in a patent infringement matter filed by Interval Licensing 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 v. AOL, Apple, eBay, Facebook, Google, Netflix, Office Depot, OfficeMax, Staples, Yahoo!, and YouTube (W.D. Wash. 2010). Kevin 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 led 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. This win was recently affirmed on appeal.
Prior Firm Experience
- Patent litigation, 2015 – 2017. Represented Google and YouTube in a patent infringement case brought by VideoShare in the District of Delaware. 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. This decision was upheld on appeal.
- Data breach arbitration, 2017. Represented a major financial services firm in connection with claims arising from data breach arising from cyber-attack.
- Patent litigation, 2013 – 2015. Represented Google subsidiary Nest Labs in a patent infringement case brought by BRK Brands in the Northern District of Illinois. Following a claim construction hearing (before Circuit Court Judge Richard Posner sitting by designation) 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. Represented Google subsidiary Nest Labs in a patent infringement case brought by Allure Energy 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 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 and the parties resolved the remaining issues.
- 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 by Wireless Ink Corporation (Wireless Ink v. Facebook ). Kevin obtained a summary judgment of non-infringement of all asserted claims, which was affirmed on appeal. 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. Represented a computer manufacturing company in a patent infringement case brought by a multinational telecommunications and technology company in the District of Delaware. The matter was resolved.
- Patent litigation, 2009 – 2010. Represented Google in a patent infringement matter filed in the District of Delaware, Xpoint Technologies v. Microsoft et al. Kevin and his team obtained a voluntary dismissal of the case for Google.
- Computer peripherals representation, 2009 – 2011. Represented a manufacturer of access control solutions in a patent infringement case relating to computer peripherals. In June 2010, Kevin argued for and obtained a favorable claim construction ruling. The case was resolved shortly thereafter. Kevin and his team had also previously obtained a dismissal of the action brought by the plaintiff’s child company, and an award of fees
- Patent infringement, 2007 – 2010. Represented a telecommunications company in a patent infringement action brought by an internet security company in the District of Delaware. Kevin 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. Represented a producer of storage, communications and consumer semiconductor products in various patent litigations and strategic patent counseling matters. Kevin was part of a team that represented the company in a patent litigation involving wireless local area network technology. 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 the client.
Education & Admissions
J.D., Fordham University School of Law
Order of the Coif
B.S.E.E., Manhattan College
Member of the State Bar of New York
Admitted to practice before the U.S. Supreme Court, the U.S. Patent and Trademark Office, the U.S. Court of Appeals for the Federal Circuit and the U.S. District Courts for the Southern and Eastern Districts of New York