Kevin X. McGann
212-430-2745
kmcgann@fenwick.com
Partner
Litigation
Kevin X.
McGann
Kevin X.
McGann
Kevin X.
McGann
Partner
Litigation

Kevin is an acclaimed patent litigation lawyer, having been named one of the nation's leading patent practitioners by IAM Patent 1000, Chambers USA and The Legal 500. 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.

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 IP in transactions.

Kevin also 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 IP and obtaining licenses from third parties.

Prior to joining Fenwick, 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.

Kevin is a “strong trial lawyer” who is “fast on his feet and always prepared for everything at argument.”

Legal 500, Client Quote

2022 Edition

  • Patent litigation, 2020 – current. Represented Google in defense of patent infringement claims against Google Maps. Plaintiff was asserting four patents against Google Maps. In January 2021, we succeeded in getting the first amended complaint dismissed for all four patents by demonstrating that (a) the claims were directed to ineligible abstract ideas under the Supreme Court’s Alice decision and (b) Plaintiff had failed to make sufficient factual assertions to support a plausible claim for infringement Supreme Court’s Twombly and Iqbal decisions. With leave of the Court, Plaintiff filed a second amended complaint to attempt to overcome the basis for the dismissal. In July 2021, we succeeded in having the second amended complaint dismissed for all four patents, on the basis that the patents’ claims were directed to ineligible abstract ideas. This time, the complaint was dismissed with prejudice. Patent owner appealed and that appeal was heard on June 7, 2022; a decision in pending.
  • Patent litigation, 2022 – current. Representing Doubleday Acquisitions LLC d/b/a CSafe Global in enforcing its patent rights directed to actively cooled cargo containers against its competitor Envirotainer. The matter is pending in the Northern District of Georgia. We are also representing CSafe defending its patents in inter partes review challenges.
  • PTAB challenges, 2020 – 2021. Represented Supercell in inter partes review challenges to patents owned by GREE Inc.
  • Patent, contract litigation, 2020-2021. Represented Nextdoor in enforcing its rights under a settlement agreement with an individual who attempted to claim responsibility for developing Nextdoor concepts and intellectual property. We obtained an injunction enforcing Nextdoor’s rights and an award of Nextdoor’s attorneys’ fees. The matter involved litigation in the Northern District of California and Ninth Circuit.
  • Patent litigation, 2020 – current. Representing two pharmaceutical companies in connection with asserting its patents related to treatments for Parkinson’s Disease against two generic manufacturers in the District of Delaware and District of Vermont. An appeal is pending before the Federal Circuit.
  • Patent Litigation, 2021. Represented Tencent America in a patent litigation in the District of Delaware on patents related to a routing system in a peer-to-peer network and restricting access to network resources. After we filed a motion to dismiss, Plaintiff voluntarily dismissed its claims.
  • Trademark Litigation, 2020 – 2021. Represented Snowflake in trademark infringement litigation. The matter was resolved.
  • 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 – 2021. Represented Tile in defense of a patent infringement claim related to its products and services for locating personal items. We filed an IPR petition challenging the validity of the asserted patent in December 2019, the PTAB instituted review in 2020 (IPR 2020-00317). In May 2021, the PTAB issued a final written decision invalidating most f the claims in the asserted patent, including all independent claims.
  • Patent litigation, 2019. Representing Almirall in patent litigation to enforce its patents related to acne treatment. On the eve of trial, the parties reach a resolution favorable to our client.
  • Patent litigation, 2018 – 2021. Representing Quest Diagnostics in the enforcement of its patents related to measuring certain metabolites in human blood samples. The matter was resolved favorably for our client.
  • 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 – 2018. Representing a pharmaceutical conglomerate in connection with its efforts to offer biosimilars.
  • Patent litigation, 2010 – 2018. Acted for Google in a patent infringement matter filed by Interval Licensing in the Western District of Washington. The complaint, 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 the patent office found unpatentable and rejected; the Federal Circuit affirmed the rejection of claims 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 final remaining asserted claims were directed to non-patentable subject matter and dismissing the case with respect to the remaining claims. This win was affirmed on appeal.
  • Patent litigation, 2017 – 2019. 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. We obtained a judgment of infringement under the doctrine of equivalents, which was 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.
  • Patent Litigation 2011 – 2014. Represented Google in patent infringement case brought by Walker Digital in the District of Delaware. After all other defendants settled with Walker Digital, we succeeded in invalidating the asserted patents at summary judgment for being directed to patent ineligible subject matter, namely the controlled exchange of information anonymously between people as headhunters and matchmakers had long done. Walker Digital did not appeal the ruling. This case was one of the early district court decisions following the Supreme Court’s Alice decision.
  • 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.

  • Patent litigation, 2020 – current. Represented Google in defense of patent infringement claims against Google Maps. Plaintiff was asserting four patents against Google Maps. In January 2021, we succeeded in getting the first amended complaint dismissed for all four patents by demonstrating that (a) the claims were directed to ineligible abstract ideas under the Supreme Court’s Alice decision and (b) Plaintiff had failed to make sufficient factual assertions to support a plausible claim for infringement Supreme Court’s Twombly and Iqbal decisions. With leave of the Court, Plaintiff filed a second amended complaint to attempt to overcome the basis for the dismissal. In July 2021, we succeeded in having the second amended complaint dismissed for all four patents, on the basis that the patents’ claims were directed to ineligible abstract ideas. This time, the complaint was dismissed with prejudice. Patent owner appealed and that appeal was heard on June 7, 2022; a decision in pending.
  • Patent litigation, 2022 – current. Representing Doubleday Acquisitions LLC d/b/a CSafe Global in enforcing its patent rights directed to actively cooled cargo containers against its competitor Envirotainer. The matter is pending in the Northern District of Georgia. We are also representing CSafe defending its patents in inter partes review challenges.
  • PTAB challenges, 2020 – 2021. Represented Supercell in inter partes review challenges to patents owned by GREE Inc.
  • Patent, contract litigation, 2020-2021. Represented Nextdoor in enforcing its rights under a settlement agreement with an individual who attempted to claim responsibility for developing Nextdoor concepts and intellectual property. We obtained an injunction enforcing Nextdoor’s rights and an award of Nextdoor’s attorneys’ fees. The matter involved litigation in the Northern District of California and Ninth Circuit.
  • Patent litigation, 2020 – current. Representing two pharmaceutical companies in connection with asserting its patents related to treatments for Parkinson’s Disease against two generic manufacturers in the District of Delaware and District of Vermont. An appeal is pending before the Federal Circuit.
  • Patent Litigation, 2021. Represented Tencent America in a patent litigation in the District of Delaware on patents related to a routing system in a peer-to-peer network and restricting access to network resources. After we filed a motion to dismiss, Plaintiff voluntarily dismissed its claims.
  • Trademark Litigation, 2020 – 2021. Represented Snowflake in trademark infringement litigation. The matter was resolved.
  • 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 – 2021. Represented Tile in defense of a patent infringement claim related to its products and services for locating personal items. We filed an IPR petition challenging the validity of the asserted patent in December 2019, the PTAB instituted review in 2020 (IPR 2020-00317). In May 2021, the PTAB issued a final written decision invalidating most f the claims in the asserted patent, including all independent claims.
  • Patent litigation, 2019. Representing Almirall in patent litigation to enforce its patents related to acne treatment. On the eve of trial, the parties reach a resolution favorable to our client.
  • Patent litigation, 2018 – 2021. Representing Quest Diagnostics in the enforcement of its patents related to measuring certain metabolites in human blood samples. The matter was resolved favorably for our client.
  • 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 – 2018. Representing a pharmaceutical conglomerate in connection with its efforts to offer biosimilars.
  • Patent litigation, 2010 – 2018. Acted for Google in a patent infringement matter filed by Interval Licensing in the Western District of Washington. The complaint, 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 the patent office found unpatentable and rejected; the Federal Circuit affirmed the rejection of claims 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 final remaining asserted claims were directed to non-patentable subject matter and dismissing the case with respect to the remaining claims. This win was affirmed on appeal.
  • Patent litigation, 2017 – 2019. 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. We obtained a judgment of infringement under the doctrine of equivalents, which was 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.
  • Patent Litigation 2011 – 2014. Represented Google in patent infringement case brought by Walker Digital in the District of Delaware. After all other defendants settled with Walker Digital, we succeeded in invalidating the asserted patents at summary judgment for being directed to patent ineligible subject matter, namely the controlled exchange of information anonymously between people as headhunters and matchmakers had long done. Walker Digital did not appeal the ruling. This case was one of the early district court decisions following the Supreme Court’s Alice decision.
  • 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.

Recognition Recognition Recognition

Recognition Recognition Recognition

Recognition
Chambers USA

2022

Recognized as a leading patent litigator in New York with one source noting "he juggles the interplay between the scientific and the legal better than any lawyer I've worked with."

IAM Patent 100

2012 - 2022

Consistently recognized for patent litigation in New York.

Legal 500

2019 - 2022

Regularly recognized for patent litigation with The Legal 500 highlighting his "proven expertise in technology and life sciences litigation."

Recognition
Chambers USA

2022

Recognized as a leading patent litigator in New York with one source noting "he juggles the interplay between the scientific and the legal better than any lawyer I've worked with."

IAM Patent 100

2012 - 2022

Consistently recognized for patent litigation in New York.

Legal 500

2019 - 2022

Regularly recognized for patent litigation with The Legal 500 highlighting his "proven expertise in technology and life sciences litigation."

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