Clifton E. McCann
Clif is a registered patent attorney and litigator with over 30 years of experience. He helps clients obtain, enforce, license, and leverage patent and trademark rights, and defend against infringement challenges. He litigates patent infringement disputes in the federal courts and he litigates post-grant validity disputes before the USPTO’s Patent Trial and Appeal Board. He handles trademark disputes in the courts and before the Trademark Trial and Appeal Board. He co-chairs the firm’s Water Technology Group.
Clif’s representative accomplishments and qualifications include:
- Lead trial and appellate counsel in series of patent infringement cases for Ecolochem, Inc., resulting in precedent-setting Federal Circuit decisions.
- Represented Fortune 500 life sciences company in one of the first post-grant review (PGR) proceedings before the Patent Trial and Appeal Board.
- Managed the National Institutes of Health’s patent prosecution portfolio of over 500 chemistry and biotech applications, counseled NIH on tech transfer.
- Prepared and prosecuted water treatment patents that withstood challenges in U.S. district courts and appeals up to the U.S. Supreme Court.
- Protects, enforces, and licenses the famous MENSA trademark worldwide.
- Chaired the ABA's Intellectual Property Litigation Committee and the Intellectual Property Section of the Bar Association of Washington, DC.
- Patent matters have included prosecution, licensing, evaluation, and litigation in technologies that have included alloys, arcade games, autoimmune disease treatment, banking and business methods, catalysis, caulks and sealants, chemicals, coatings, consumer products, data extraction, e-cigarettes, encryption, enterprise software, filters, green technology, hand and power tools, hardware, laboratory equipment, LEDs, lubricants, measurement and detection instruments, medical devices, metrology, microorganism recovery, oil and gas, packaging, paint mixers, paper shredders, personal care, pharmaceuticals, plastics, semiconductors, sepsis diagnosis, sprinklers, stents, storm water treatment, TENS devices, turbine cooling, video streaming software, and water and wastewater treatment.
- Prosecuted hundreds of trademark applications, licensed, evaluated and litigated trademark rights, managed trademark portfolios, and provided opinions on trademark availability, validity and infringement.
- Registered hundreds of copyrights in various industries, managed copyright portfolios, provided opinions and litigated on copyright validity and infringement;
- Litigated patent infringement cases throughout U.S., including D. Delaware, E.D. Texas, N.D. Illinois, S.D. New York, E.D. Virginia, C.D. California, S.D. Florida, N.D. Georgia, D. Utah, E.D. North Carolina, D. Colorado, D. Maryland, E.D. Arkansas, and D. Connecticut.
- Co-author, "The U.S. Supreme Court’s Helsinn Decision Makes Six Years of U.S. Patents Vulnerable to “On Sale” Prior Art," In House Defense Quarterly, Summer 2019
- “Inventors Beware: Even Secret Activity Can Sink Your Patent,” Thompson Hine Intellectual Property Update, January 2019
- “Preparing for the Next Generation of Actively Managed ETFs,” Thompson Hine ETF Reg Insights, January 2019
- "Medical Device Marketing Under Substantial Equivalence – FDA Clearance and USPTO Patent Consideration,” Regulatory Focus, Regulatory Affairs Professional Society, September 2018
- “Supreme Court Decisions Bring Needed Certainty to PTAB Challenge Process,” Thompson Hine Intellectual Property Update, April 2018
- “Trump Administration Moves Against Chinese IP Violations,” Thompson Hine International Trade & Intellectual Property Update, August 2017
- “PTAB Challenges Can Reduce Royalty Obligations, Open New Markets,” Thompson Hine Intellectual Property Update, March 2016
- “Patent Owner’s Considerations For Review Proceedings at the Patent Trial and Appeal Board (PTAB) Concurrent with Litigation,” IPO White Paper, IPO Law Journal, July 15, 2015 (co-author)
- "Hague Agreement Enhances Benefits Of US Design Patents," Law360, May 15, 2015
- "Dollars and Sense: A Water Technology Owner's Guide to Transferring Intellectual Property," Ultrapure Water Journal, August 26, 2014
- "IP Audits: What are they? Why are they important? What do they cost?", Corporate Compliance Insights, July 15, 2013
- "Obtaining, Challenging and Enforcing Pharmaceutical Patents Under the America Invents Act," Pharmaceutical Patent Analyst, September 2012
- "America Invents Act of 2011: Major Changes in the Law that Will Affect Patent Litigation Strategies," IP Frontline, October 2011
- "Protection of Proprietary Technology throughout the Supply Chain: Patents and Trade Secrets,” GlobalChem 2015, Baltimore, MD, March 2015
- “Water Projects: Hot Topics in Finance & Innovation," 2014 Sustainable Manufacturer & Water 2.0 Conference, Northern Illinois University, Chicago, IL, May 2014
- "Intellectual Property Audits: The Purpose, Importance, and Cost," National Meeting of the American Chemical Society, March 2014
- "Dispute Avoidance and Resolution After the America Invents Act," National Meeting of the American Chemical Society, August 2012
- "America Invents Act of 2011: How You Can Use It to Your Company's Advantage," International Water Conference, November 2011
- "Effective Use of Patents to Raise Capital and Protect R&D," Annual Water Innovations Alliance Conference, September 2011
- Listed as IP Star for Washington, D.C., based on Managing Intellectual Property survey, 2012-2018
- Selected for inclusion in Washington, D.C. Super Lawyers, 2012-2019
- Recipient of American Mensa, Ltd. 2010 Chairman's Award for outstanding service for protecting the MENSA trademark
- AV® Preeminent Rated by Martindale-Hubbell since 1986
- Named one of Washington, D.C. and Baltimore's Top Rated Lawyers for Intellectual Property Law by LexisNexis® Martindale-Hubbell®
- Bar Association of the District of Columbia (past chair, IP Law Section)
- Bar Association of D.C. Foundation (member, board of trustees);
- American Bar Association (past chair of Committee 601, Federal IP Litigation, and Patent Claim Interpretation Subcommittee)
- American Intellectual Property Law Association
- Federal Circuit Bar Association
- Licensing Executives' Society
- American Chemical Society
- Patent Lawyers Club of Washington
- Intellectual Property Owners Association (member, PTAB Practice Committee)
Eight Thompson Hine Lawyers Recognized by Washington, D.C. Super Lawyers Thompson Hine LLP
May 13, 2019
September 01, 2018
Thompson Hine’s IP Practice Recognized by WTR 1000 and IP Stars Thompson Hine LLP
May 21, 2018