Kenneth Weatherwax is a founding and co-Managing Partner of Lowenstein & Weatherwax LLP. A Princeton-trained engineer and Irell & Manella-trained attorney, Mr. Weatherwax is a nationally recognized patent litigator in proceedings before the patent office and the courts, including active matters ranging from the United States Patent Trial and Appeal Board (“PTAB”) to the United States Supreme Court.
Mr. Weatherwax’s practice focuses on sophisticated patent litigations in all phases from pre-filing through appeal. His successful post-grant practice before the USPTO’s PTAB, in inter partes review (“IPR”), covered business method patent ("CBM”) review, and reexamination proceedings, has achieved excellent results for his clients in these exceptionally difficult forums, and he has been recognized by Docket Navigator as one of the “top attorneys in the PTAB.” He also practices regularly before the United States Supreme Court, including the recent patent licensing matter Kimble v. Marvel Entertainment, in which he helped lead the legal team that secured a grant of certiorari over the government’s opposition that case. His patent practice extends to pre-litigation intellectual property counseling, licensing, and patent interferences.
Mr. Weatherwax has represented clients before virtually all types of patent tribunals, including the district courts, the court of appeals, the Supreme Court, the Patent and Trademark Office, the International Trade Commission, and international arbitral tribunals, in trials and appeals of highly complex matters involving a full spectrum of patent and license enforcement, defense, acquisition, and valuation. His patent litigation and counseling has encompassed an exceptionally wide range of technologies including semiconductor packaging and microelectronics, electronics power and battery management, implantable heart repair and monitoring, subcutaneous drug delivery, polymerase nucleic acid quantitation, recombinant DNA preparation, smart phone and gesture user interfaces, LAN protocols and filters, video game controllers and distribution channels, audio reproduction and amplifiers, telephone multiplexing, user customization software, automated retail processing, point-of-sale and enterprise management software, and metal coating and finishing.
In addition to his client practice, Mr. Weatherwax regularly writes on intellectual property topics. His articles have appeared in publications such as the Journal of the Patent & Trademark Office Society, the Intellectual Property & Technology Law Journal, the Los Angeles Daily Journal, and IPEG. He also co-wrote Chapter 3 of Patent Litigation (Laurence Pretty, ed.), the leading treatise on patent litigation and trial strategy.
Mr. Weatherwax practiced for many years at the famed patent and general litigation firm of Irell & Manella LLP in Los Angeles. He earlier served as law clerk to the Honorable Judge Robert Beezer of the United States Court of Appeals for the Ninth Circuit. Mr. Weatherwax received his juris doctor degree from the University of California-Davis Martin Luther King, Jr. School of Law, where he received the honor of the Order of the Coif.
Before beginning his legal career, Mr. Weatherwax received a bachelor's degree in mechanical engineering from Princeton University, and practiced for six years as an engineer performing work for public utilities, private energy sellers, and state and local regulatory commissions, including price and load forecasting, need and risk assessment of energy generation and transmission, and impact evaluations of green energy technology such as leading-edge reduced-emission vehicle initiatives.
Personal Experience In Representative Matters
PTAB Post-Grant Matters – Represented numerous prominent clients in over 50 IPR and CBM post-grant matters before PTAB, achieving particularly successful results for patent owners, such as dismissal of numerous petitions on novel legal theories and denial of proposed grounds for review. Examples include:
- Maxim Integrated Products, Inc. adv. BB&T/PNC/JPMC/AmEx/Compass (Patent Trial & Appeal Board) – Represented patent owner Maxim Integrated Products, Inc. in 15 Covered Business Method Patent Review and Inter Partes Review cases. The PTAB decided not to institute four CBMs, a decision that led to the PTAB’s first “precedential” decision involving America Invents Act cases.
- Solocron Media, LLC adv. AT&T Mobility/Verizon (Patent Trial & Appeal Board) – Lead counsel for patent owner in 13 Inter Partes Reviews. The matters settled after the patent owner response was filed.
- IpLearn Focus, LLC adv. Microsoft (Patent Trial & Appeal Board) – Lead counsel for patent owner IpLearn-Focus in two pending Inter Partes Reviews. A third IPR was not instituted.
Pre-Litigation Counseling – For many years, Mr. Weatherwax has counseled numerous confidential clients in anticipation of business-critical potential intellectual property liability claims, including sophisticated validity and infringement analyses of both United States and international patents in view of actual and expected future changes in applicable laws.
Achates Ref. Publ., Inc. v. Apple Inc. – Represented Petitioner in petition for certiorari in U.S. Supreme Court concerning availability of judicial review of decisions of the USPTO Patent Trial & Appeal Board.
Kimble v. Marvel Enterprises, Inc. (U.S. Supreme Court) – Represented Petitioners in case argued before United States Supreme Court revisiting patent license limitation rule of Brulotte v. Thys Co., 379 U.S. 29 (1964).
Tessera, Inc. v. Micron Technology, Inc., et al. – Represented Tessera in Eastern District of Texas suit involving patent infringement claims on semiconductor packaging technology. The suit was resolved by a settlement entitling Tessera to $80 million and significant future royalties.
Tessera, Inc. v. Amkor Technology, Inc. – Represented Tessera in international arbitration, resulting in $64 million award for Tessera based on violation of a patent license agreement.
Tessera, Inc. v. United Test and Assembly Center Ltd. – Represented Tessera in breach of contract action, resulting in a settlement entitling Tessera to $15 million and future royalties.
In the Matter of Certain Semiconductor Chips with Minimized Chip Package Size and Products Containing Same – Represented Tessera, Inc. as complainant in patent enforcement action before U.S. International Trade Commission, resulting in findings of infringement and validity and exclusion and cease-and-desist orders barring infringing products from importation or sale. On appeal, the United States Court of Appeals for the Federal Circuit affirmed the judgment in all respects and denied a stay, and the United States Supreme Court denied certiorari.
Netcraft Corp. v. eBay Inc. and PayPal Inc. – Represented eBay Inc. and PayPal Inc. in patent infringement case resulting in summary judgment of non-infringement, affirmed on appeal.
Unova, Inc. v. Hewlett-Packard Co. – Represented Hewlett-Packard in patent infringement case involving smart battery technology resulting in summary judgment before trial declaring one asserted patent invalid, followed by confidential settlement and dismissal of all claims.