Stephen E. Kabakoff

Atlanta

Office: 404.962.6494 | Fax: 404.962.6359

stephen.kabakoff@millermartin.com

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  • Overview
  • Experience
  • Education
  • Involvement
  • In-Depth
  • Overview

    Stephen helps clients with complex issues relating to intellectual property, including strategic portfolio development, preparation and prosecution, licensing, and litigation. His practice primarily focuses on electrical, computer, mechanical, and materials science technologies. He started his career as a U.S. patent examiner in the areas of information security and e-commerce at the height of the dot-com boom. He spent several years as a registered patent agent, where he prepared and prosecuted patents for both large Fortune 100 companies and smaller start-ups/entrepreneurs. He was a partner at a large international IP law firm where he practiced patent litigation, licensing, and prosecution for more than a decade. Stephen leverages his extensive experience from these diverse perspectives to maximize the strength of his clients’ intellectual property and identify legal and business solutions relative to third-party intellectual property.

    In addition to his practice before the U.S. Patent and Trademark Office (USPTO), Stephen has litigated in federal district courts and before the International Trade Commission (ITC) and the Patent Trial and Appeal Board (PTAB) of the USPTO. He has also been recognized by The Legal 500 U.S. as one of the leading lawyers in patent licensing and transactional work.

  • Experience

    • Drafted, prosecuted, and supervised the preparation and prosecution of hundreds of patent applications in the U.S. and abroad, including international applications under the Patent Cooperation Treaty
    • Interfaced with in-house counsel, business managers, and inventors to strategically identify subject matter to claim in new and continuation patent applications and developed procedures for selecting which technologies to seek patent protection
    • Prepared, prosecuted, and argued inter partes review (IPR) and covered-business method (CBM) petitions before the USPTO
    • Drafted and revised complex agreements including patent licenses and term sheets, option agreements, joint developments, sponsored research collaborations, and confidential disclosure agreements
    • Provided legal counsel, teaching, and publications on IP licensing topics, including open source licensing
    • Represented clients in complex multinational negotiations involving patent license agreements
    • Conducted and supervised large IP due diligence projects for corporate acquisitions valued greater than $100 million
    • Performed several pre-filing due diligence studies of patents prior to their assertion in multimillion dollar litigations
    • Over a decade of experience enforcing and defending patent rights in federal district courts and the International Trade Commission, including examining trial witnesses, arguing motions, and taking and defending corporate, expert, and fact depositions
    • Prepared Federal Circuit briefs and assisted in preparation of a conditional cross-petition for certiorari to the Supreme Court

    Selected Publications

    • Why Open Source Licenses with a Commons Clause May Become Less Common (ABA Landslide Magazine) (Vol. 12, No. 2, Nov./Dec. 2019)
    • What You Should Know About Contributor License Agreements in Open Source Projects (IAM Chinese) (April 2019)
    • Hague Convention May Help Foreign Defendants in IPR (Law360) (Oct. 2017)
    • Design Patent Damages May Be Limited to the Profits Attributable to the Infringing Component of a Product, Rather than the Whole Product (LES Insights) (Dec. 2016)
    • License Defense Fails Due to Interpretation of License Agreement’s Provisions on Commercialization and Importation (LES Insights) (Nov. 2016)
    • Assignor May Challenge Validity of a Patent It Assigned by Using Patent Office IPR Proceedings Despite Being Precluded from Challenging Validity in Court (LES Insights) (Oct. 2016)
    • Leveraging Standing and Domestic Industry Activities of Third Parties in Patent-Based ITC Investigations (Intellectual Property & Technology Law Journal) (June 2014)
    • Exploring the Timeframe for Activities Establishing a Domestic Industry in ITC Investigations (The Young Lawyer) (Aug. 2014)
    • Reconciling Joinder and Consolidation Under the Federal Rules of Civil Procedure and Under the America Invents Act (BNA’s Patent, Trademark & Copyright Journal) (Vol. 85, No. 2092, Dec. 2012)
    • Reading Dynamics in Magnetic Super Resolution Media (Journal of the PAPERS Magnetics Society of Japan) (1998)
    • Blue Light Magnetic Super Resolution (Proceedings of the International Society for Optical Engineering) (1997)
    • Exchange and Magnetostatic Coupling in Multilayer Rare Earth Transition Metal Thin Films (IEEE Transactions on Magnetics) (1996)
    • Persistent Photoconductivity and DX centers in Cd0.8Zn0.2Te:CI (Journal of Applied Physics) (1995)
  • Education

    • J.D., cum laude, Suffolk University Law School, 2005
    • M.S., Electrical and Computer Engineering, Carnegie Mellon University, 1997
    • B.S., Materials Science and Engineering, with honors, Cornell University, 1995
  • Involvement

    Bar Admissions
    • Georgia
    • Massachusetts
    Court Admissions
    • U.S. Patent and Trademark Office
    • U.S. District Court, N.D. Georgia
    • U.S. Court of Appeals, Federal Circuit
    • U.S. Court of Appeals, Veterans Claims
    Accolades
    • The Legal 500 U.S.
    Memberships
    • IP Law Section of the State Bar of Georgia
    • Atlanta Bar Association, Intellectual Property Section
    • American Bar Association, IP Law Section
    • Licensing Executives Society - Present Chair of LES Atlanta Chapter
    • Institute of Electrical and Electronics Engineers (IEEE)

Did You Know

Stephen played on Cornell’s lightweight football team as an offensive lineman.

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