Education:
B.S., Physics, Calculus Minor, University of Michigan, 1966
J.D., Indiana University, 1969
Martindale Hubbell Rating:
AV
Bar Admissions:
California, Florida
U.S. Patent and Trademark Office
Summary:
The head of The Eclipse Group’s litigation department, Ed O’Connor tried his first jury trial as a Public Defender in Palm Beach County, Florida in 1971.
His varied career includes working for Air Force J.A.G. where he wrote patent applications in computer technology, space exploration, and advanced weapons systems. He also was employed by Intel as a senior intellectual property and litigation attorney.
He is a nationally renowned intellectual property litigator, listed in Martindale Hubbell’s Bar Register of Preeminent Lawyers. He has represented clients before the United States Supreme Court and the International Trade Commission. He has won patent infringement, antitrust, and other intellectual property cases, both jury and non jury throughout the United States. He has won cases before the United States Courts of Appeal for the Federal Circuit, the Second Circuit, the Fourth Circuit, the Fifth Circuit, the Seventh Circuit, the Ninth Circuit, and the Eleventh Circuit. He has also served as lead attorney in complex cases before the Panel on Multidistrict Litigation.
As a result of having obtained a multi-million dollar jury verdict, he was inducted into the Million Dollar Advocates Forum.
He is frequently used as a resource by the intellectual property bar, including serving as chairman of an American Bar Association Intellectual Property Committee, and has authored two books on intellectual property law and litigation published by the American Bar Association.
He was designated by the American Bar Association, Intellectual Property Law Section, Special Committee on Litigation Planning and Budgeting as an attorney “having significant patent litigation experience as identified by the managing partners of the approximately one hundred largest intellectual property law firms”.
He is a nationally and internationally recognized expert on intellectual property law, having lectured in New York; Los Angeles; Zurich; Dusseldorf; Prague; Shanghai; Zhuhai and Singapore. He is also fluent in Spanish, having lived in Mexico City, Mexico.
Selected Cases & Issues:
- Illinois Tool Works v. Independent Ink
, 126 S. Ct. 1281 (2006).O’Connor represented Independent Ink, before the United States Supreme Court, in its antitrust case against Trident & Illinois Tool Works. The District Court had previously granted summary judgment to defendants. The case was appealed to the United States Court of Appeals for the Federal Circuit (CAFC). The CAFC reversed in favor of Independent Ink. Independent Ink v. Illinois Tool Works, 396 F.3d 1342 (Fed. Cir. 2006). The Supreme Court then reversed the doctrine of presumed market power in a patented product, in tying cases, but agreed with O’Connor that the presumption of market power over a tied product should remain intact if there is market power in the tying product, in the tying product market.
- Systems Division, Inc. v. Teknek, 2003 U.S. App. Lexis 3288 (Fed. Cir. 2003). Obtained reversal of summary judgment against Plaintiffs. Obtained 3 million dollar jury verdict on trial after remand.
- Scholle Corp. v. Packaging Systems, 2001 U.S. App. Lexis 11772 (Fed. Cir. 2001). Obtained reversal of summary judgment against Plaintiff.
- Products v. Tilton Engineering, Inc., 55 F.Supp. 1101 (C.D. Cal. 1994). Lead counsel in a complex patent infringement, anti-trust case, which resulted in a $24,000,000.00 judgment for the client, including over $3,000,000.00 in attorneys fees. In its decision, the Court stated on page 1114:
(“. . . Patent and antitrust laws are not new or novel, but often involve factually difficult issues. Such was the case here. In the patent phase of the case, for example, Tilton [O’Connor] had to analyze the myriad of patent defenses raised by AP, including obviousness, best mode, indefiniteness, public use, inequitable conduct, and noninfringement.”)
“The trial judge should closely observe the attorney’s work product, his preparation, and general ability before the Court.” Tilton’s counsel, [O’Connor] demonstrated to this Court time and again that they had the requisite skill and ability to handle this complex lawsuit. Their written work product and performance before this Court have been uniformly good.”
- Hewlett-Packard Co. v. Repeat-O-Type Stencil Mfg. Corp, Inc., 123 F.3d 1445 (Fed. Cir. 1997). Obtained summary judgment against Hewlett-Packard of non-infringement based upon repair/reconstruction. Successfully defended on appeal. The case is one of the leading cases of the repair/reconstruction doctrine.
- Martin Gardner Reiffin v. Microsoft Corporation, 214 F.3d 1915 (Fed. Cir. 2000). Wrote the appeal brief resulting in reversal of summary judgment previously obtained by Microsoft against Reiffen. One of the leading cases of the Gentry Gallery v. Berkline Corp., 134 F.3d 1973 (Fed. Cir. 1998) progeny of cases.
- St. Charles Mfg. Co. v. Mercer, 719 F.2d 380 (11th Cir. 1983). Obtained summary judgment against St. Charles and successfully defended the summary judgment on appeal. One of the leading cases on trademark infringement damages.
- The Beachcombers International, Inc. and Patrick McCarthy v. WildeWood Creative Products, Inc., 31 F.3d 1154 (Fed. Cir. 1994). Obtained a jury verdict of invalidity on behalf of WildeWood. Successfully defended the decision on appeal. One of the leading cases on the doctrine of on sale bar, established that sales by a person other than the patentee and unknown to the patentee, nonetheless constitute a statutory bar if such sales occurred more than a year before the filing of the application.
- Abeshouse, dba Amity Products v. Ultragraphics, 754 F.2d 467 (2nd Cir. 1985). Obtained jury verdict in favor of plaintiff on a copyright infringement suit involving the Rubik’s Cube. Remanded on appeal for reduction of the jury verdict as the 2nd Circuit found that the verdict was excessive.
Offices Held:
Chairman Emeritus Intellectual Property Committee – Torts and Insurance Practice Section, American Bar Association
Published Works:
"A Primer on Intellectual Property Law and Litigation" (ABA)
"Intellectual Property Law and Litigation, 2nd Edition" (ABA)
Both published by the American Bar Association.
"The Interconnection and Interplay Between Patent Infringement Litigation and Antitrust Litigation", ALI-ABA publication.
"Analyzing and Trying Intellectual Property Cases", published in The Practical Litigator, ALI-ABA publication.
"Insurance Coverage and Duty to Defend in Antitrust, Trade Secret and Other Intellectual Property Litigation or Why My Insurance Agent is My Patent Lawyer’s Best Friend", The Practicing Law Institute publication.
"A Practical Guide to Equitable Defenses in Patent Litigation", The Practicing Law Institute publication.
"The Pitfalls of Intellectual Property Litigation for Foreign Companies in U.S. Courts", U.S. Japan Intellectual Property Issues publication.
"Intellectual Property and the Recycling Industry", published by Recycler Publishing & Events, and copyrighted in Great Britain.
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