Fred Grasso, Esq.
Mr. Grasso is a registered patent attorney who focuses his practice on intellectual property procurement, counseling, and litigation. Formerly Counsel at Kenyon & Kenyon, Mr. Grasso has over a decade of experience drafting and prosecuting patents, analyzing and rendering opinions regarding the scope of intellectual property, and litigating intellectual property matters.
Mr. Grasso has litigated intellectual property matters across the United States. This experience provides him with first-hand perspectives regarding the practical scope of patents, trademarks, copyrights, and trade secrets. When securing patent rights Mr. Grasso’s litigation experience provides him with a unique perspective on the effective scope of the patent claims being prosecuted and how patent drafting and actions during prosecution can influence the scope of enforceable rights of a granted patent. When negotiating, licensing or analyzing the intellectual property of others, Mr. Grasso’s litigation experience also provides practical insight into the applicable strength and value of the intellectual property being considered and analyzed.
Mr. Grasso has prosecuted scores of patent applications within and outside of the United States in cutting edge and ubiquitous technologies. These technologies have included: respiratory monitoring systems, hydrophilic and hydrophobic therapeutic delivery systems, remote catheter control devices, vascular stent design, percutaneous myocardial revascularization procedures and devices, spinal column stabilization, cranial fiducial markers, optical lens systems, software, Internet commerce, Internet communications, digital security certificates, telecommunication systems and devices, VoIP, wireless telephony, and aircraft control systems.
Prior to practicing law, Mr. Grasso served as an engineer for a large multi-national corporation. As part of his engineering studies, Mr. Grasso completed course work in circuit design, computer programming, mathematics, strength of materials, chemistry, fluid mechanics, and engineering statistics.
Education
J.D., American University, Washington College of Law, 1997
Member, Law Review
B.S.C.E., University of Virginia, 1988
Admissions
Commonwealth of Virginia
Registered to practice before The United States Patent and Trademark Office
Affiliations
Intellectual Property Owners Association - Licensing Subcommittee Member
The Virginia Joint Commission on Technology and Science-Nanotechnology Research and Development Advisory Committee, Member, 2006-2007
Selected Representations
Settled International Trade Commission Investigation directed to semi-conductor doping on terms favorable to foreign respondent. Settlement was secured ahead of ahead of the expenditure of resources needed to brief claim construction issues and prepare for hearing.
Drafted, prosecuted, and negotiated sale of patent portfolio from client to large multi-national company purchaser. Client received multi-million dollar payment for primary technology while also retaining rights in “carve-out” technology that was not conveyed to purchaser.
Successfully represented client in negotiations with SPAWAR to develop and exploit client’s patented technology. Through careful and specific drafting of the agreement, client retained rights in its invention as well as in improvements.
Briefed, argued, and won specific constructions of key claim limitations favorable to the client. The B.P.A.I. acknowledged, in a subsequent reexamination, that the secured key claim construction was indefinite.
Selected Speaking Engagements
Licensing and Litigation in the Wake of MedImmune and Quanta Computer, Panelist, Intellectual Property Owner’s Annual Meeting, San Diego, CA, September 2008.
The VoIP Patent Wars, Panelist, VON.x Pre-Conference Workshop, San Jose, Ca., 17-Mar-2008.
Beyond Patent Exhaustion: The Supreme Court's Ongoing Review of Quanta Computer, Inc. v. LG Electronics, Inc., Presenter, Northern Virginia Patent Lawyers Club, March 2008.
Essentials of Patent Law for General Litigators - Markman Hearings, Presenter, Lecture hosted by Pillsbury University; New York, NY, 05-Nov-2007.
Beyond SBIR and STRR: State Initiatives to Promote Nanotechnology, Presenter, Licensing In the Era of Intellectual Property Revolution Workshop, LES 2007 Spring Meeting; Atlanta, GA, 18-May-2007.
Donald K. Duvall Memorial Lecture: Section 337 Year in Review, Presenter, International Trade Commission Trial Lawyers Association Annual Meeting, November 2006.
Notable Quotes
Daily Journal - "Supreme Court Limits Patent Holders' Reach on Royalty Payments," 10-Jun-2008
IP Law360 - "No Downstream Royalty Fees For LG: High Court," 09-Jun-2008
FIERCE VoIP.com - "Verizon sues Charter over VoIP patents," 11-Feb-2008
IP Law360 - "Pillsbury Snags IP Attorney From Kenyon," 27-Mar-2007
Exemplary Publications
Patent Licensing After the Quanta Decision, Washington Technology, October 3, 2008.
The Supreme Court's Ongoing Review of Quanta Computer, Inc. v. LG Electronics, Inc. Serves as a Reminder of the Significance of Implied Patent Licensing, Intellectual Property Today, June 2008
Unfair Competition and the ITC: Actions Before the International Trade Commission Under Section 337 of the Tariff Act of 1930, Senior Co-Editor, 2003-2007
Prosecuting Patents Under The Scrutiny Of Festo's Rebuttable Presumption, Intellectual Property Today, September 2002
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