Evan L. Kahn is a Partner in the Intellectual Property Practice, where he concentrates on high technology patent issues pertaining to a variety of fields, including video, audio, consumer electronics, wireless communications, networking, semiconductors, computer architecture, optics, encryption, and software.
Patent Evaluation and Review:
Mr. Kahn has assisted multiple patent licensing administrators, including MPEG LA, Sisvel, Philips Joint/3C DVD, 6C DVD, One Blue, and Premier, to form and run license programs for standard essential patents. In particular, he has evaluated patents to determine if they are necessarily infringed when practicing a standard. He has also advised his licensing administrator clients on infringement and licensing questions, and assisted them in drafting licensing agreements for standard essential patents.
Mr. Kahn has helped his clients assert their patents in the United States as well as other countries, including Germany, France, Denmark, and the United Kingdom. He has helped groups of the largest consumer electronics companies assert standard essential patents pertaining to MPEG-2 video compression, ATSC digital television broadcast and other technologies against computer, broadcast television equipment, DVD disc, and mobile phone manufacturers and distributors. Among other services, he helps his clients select the patents to assert, develop theories of infringement and defend their patents against validity and unfair competition challenges. For instance, he has assisted standard essential patent holders defend against allegations that the standard essential patent owners have not met their commitments to offer fair, reasonable and non-discriminatory (“FRAND”) licenses. Mr. Kahn also has defended his clients who have been sued for patent infringement. He also has extensive experience representing his clients in reexaminations and inter partes reviews of patents concurrently being asserted in litigation.
Mr. Kahn has appeared before the EC Directorate General for Competition and the U.S. Department of Justice Antitrust Division in connection with patent pools, assisting his clients in obtaining a favorable negative clearance letter/business review letter, as well as answering questions in connection with an investigation of a pool license by the respective regulatory authority.
Patent Licensing, Counseling, and Procurement:
Mr. Kahn’s work has included licensing, patent procurement, and counseling clients on issues of infringement and validity. He has provided noninfringement/invalidity opinions to clients in connection with specific patents and right-to-use/freedom to operate opinions in regard to specific products. Further, he has assisted clients in setting up their own patent management departments and counseled his clients regarding purchases of patent portfolios, including reviewing the patents and helping assess their value.
Assisted MPEG LA, Sisvel, Philips Joint/3C DVD, 6C, DVD, One Blue, and Premier, to form and run standard essential patent licenses for standards including: AVC, AV1, VP9, HEVC, Wi-Fi 6, VC-1, EVS, MPEG-2, ATSC, DVD, CD-R, and Blu-ray Disc
Co-counsel in patent and unfair competition litigations including:
- France Telecom, et al. v. Compaq Computer Corp., 1:00-cv-00967 (D. Del. 2000)
- France Telecom, et al. v. Dell Computer Corp., 1:01-cv-00814 (D. Del 2001)
- CIF Licensing, L.L.C. et al. v. Lenovo Group Limited et al., 7:09-cv-1849 (S.D.N.Y. 2009)
- British Telecommunications PLC et al. v. Haier America Trading, LLC et al., 7:09-cv-07114 (S.D.N.Y. 2009)
- Mitsubishi Electric Corporation et al., v. Craig Electronics Inc., 9:13-cv-80738 (S.D. Fla. 2013)
- Mitsubishi Electric Corporation et al. v. Curtis International, Ltd., 9:13-cv-80739 (S.D. Fla. 2013)
- Mitsubishi Electric Corporation et al. v. ViewSonic Corporation, 9:13-cv-80743 (S.D. Fla. 2013)
- Mitsubishi Electric Corporation et al. v. Motorola Mobility LLC, 9:13-cv-80745 (S.D. Fla. 2013)
- Mitsubishi Electric Corporation et al. v. Sceptre, Inc., 2:14-cv-04994 (C.D.Cal. 2014)
- Zenith Electronics, LLC et al. v. Sceptre, Inc., 2:14-cv-05150 (C.D. Cal. 2014)
- MobileMedia Ideas LLC v. Apple Inc., 1:10-cv-00258 (D. Del 2010)
- MobileMedia Ideas LLC v. Research In Motion Limited et al., 3:11-cv-02353 (N.D. TX 2011)
- MobileMedia Ideas LLC v. HTC Corporation, et. al., 2:10-cv-00112 (E.D. TX 2010)
- British Telecommunications PLC et al. v. Fortinet, Inc., 1:18-cv-01018 (D.Del. 2018)
Prosecuted high value patent families for licensing and litigation including U.S. Patent No. 9,521,269 asserted in (among other cases) Ironworks Patents, LLC v. Motorola Mobility LLC,1-20-cv-01357 (N.D.Ill. 2020)
Prosecuted reexaminations including:
- Reexamination No. 90/011,482 for U.S. Patent No. Re 39,231
- Reexamination No. 90/011,620 for U.S. Patent No. 5,915,239
- Reexamination Nos. 90/012,952, 90/012,637, 90/011,883 & 90/011,736 for U.S. Patent No. 6,427,078
Veteran’s Assistance Project through New York City Bar Justice Center, pro bono legal assistance
News, Events & Insights
University of Houston Law Center, J.D.
- Associate Editor, Houston Law Review
State University of New York at Buffalo, B.S. (Electrical Engineering)
Proskauer Rose LLP, Partner
- New York
- U.S. Patent and Trademark Office
- U.S. District Court for the Southern District of New York