Lawrence Kass

Trade Secret

• Defending a global electronics manufacturer in a high-stakes trade secret matter in the Northern District of California involving thermal, optical, and other sensor technologies. Leading the technical analysis of the asserted formulas, prior art, and independent-development record, including identifying and developing the principal technical defense distinguishing the client's empirically derived approach from the plaintiff's claimed methodology.
• Defending a global telecom equipment manufacturer in multi-year, cross-border trade secret litigation involving source code and digital system architectures in the Northern District of Illinois. Drafted technical expert reports, defended the lead technical expert at deposition, and prepared the company's senior engineers as fact witnesses for an evidentiary hearing.
• Represented US chemical corporation SI Group, Inc., as lead counsel in a successful and highly publicized case at the International Trade Commission against its former Chinese distributor for misappropriation of trade secrets. The victory yielded a 10-year order excluding the competing products from the United States. Successfully defended the case on appeal to the US Court of Appeals for the Federal Circuit and against certiorari at the Supreme Court.*

Defense, Dual Use, and Drone Tech

• Advising US-based defense and dual-use technology companies, including unmanned aerial systems developers, on intellectual property strategy, trade secret compliance and protection, freedom-to-operate analyses, patent and technology acquisition & licensing, and related contract and export control issues.

Patent - Hi-Tech

• Defended Dai Nippon Printing Co., Ltd. (DNP) in a patent infringement suit involving an inkjet method for manufacturing color filters used in liquid crystal display televisions. Obtained an advantageous claim construction order and won an important motion for summary judgment holding the broadest asserted patent claim invalid based on improper new matter. In 2011, on the eve of trial, the parties settled the lawsuit on terms favorable to DNP.*
• Defended Station Casinos, Inc. in patent infringement litigation filed by Harrah's Entertainment in US District Court in Las Vegas involving a software-based casino patron reward program. Won summary judgment of invalidity based on indefiniteness and defended judgment on appeal to the Court of Appeals for the Federal Circuit.*
• Defended Fujitsu Network Communications (FNC) against multiple patent infringement actions filed in the Eastern District of Texas by various non-practicing entities. The technology was directed to FNC's Reconfigurable Optical Add Drop Multiplexer (ROADM) devices and wavelength selective switches used in FNC's ROADMS for optical telecom systems.*
• Represented Fujitsu Limited in defense of patent infringement allegations and in prosecution of cross-claims against Nanya Technologies in the field of semiconductors, including processing technologies, DRAMs, and other semiconductor devices. Won a venue transfer motion and settled favorably shortly thereafter.*
• Defended Fujitsu Limited against declaratory judgment litigation filed by KLA-Tencore Corp. against Fujitsu relating to "ellipsometer" measuring tools used in the manufacture of semiconductor chips.*
• Represented plaintiffs Fujitsu Limited and Fujitsu Micro Devices against EPCOS in patent infringement litigation in the Eastern District of Virginia in the field of Surface Acoustic Wave filters used in telecom devices.*

Patent - Pharmaceutical

• Represented Orexo AB and Orexo US Inc. in a bet-the-company Hatch-Waxman litigation against Sun Pharma in the US District Court for the District of New Jersey. The case involved Orexo's patents covering its lead product, Zubsolv®, a drug used for treating opioid dependence. Following a five-day bench trial, the district court issued an opinion in favor of Orexo on all issues, finding that Sun infringed Orexo's asserted patents and that those patents were valid. Sun appealed to the Federal Circuit, in which Steptoe continued to represent Orexo as lead counsel. Following appellate briefing, Steptoe negotiated a very favorable settlement to Orexo.
• Represented Apotex in an IPR proceeding before the PTAB challenging one of Novo Nordisk's patents relating to its blockbuster GLP-1 drug. In a unique procedural maneuver, Steptoe succeeded in joining Apotex to pending IPR proceedings several months after the joinder deadline and the board instituted Apotex's petition. Steptoe negotiated a favorable settlement shortly thereafter.
• Represented a pharmaceutical client in connection with IPR proceedings against a patent relating to a treatment for opioid dependence. Settled the matter favorably for the client.
• Represented a pharmaceutical client in connection with IPR proceedings against a patent relating to a pain treatment for chronic pain. Settled the matter favorably for the client.
• Represented a pharmaceutical client in connection with IPR proceedings against a patent relating to a blockbuster treatment for prostate cancer. Settled the matter favorably for the client.
• Successfully represented biopharma companies in multinational, multi-party brand/generic patent litigations. Co-led a large team that successfully defended a biopharma company's blockbuster drug against two waves of eight generic companies through appeal and defended another drug against early challengers until settlement.*

Chapter 11 and Distressed IP

• Served as intellectual property counsel to the Ad Hoc Group of Bondholders in the Nortel Networks Chapter 11 proceedings. Co-led patent valuation and negotiation efforts relating to Nortel's global telecommunications patent portfolio, culminating in the record-setting $4.5 billion sale of more than 6,000 patents and patent applications.*
• Served as intellectual property counsel to the Official Committee of Unsecured Creditors in Eastman Kodak's Chapter 11 proceedings. Led patent valuation and negotiation efforts relating to Kodak's digital imaging patent portfolio, culminating in a $527 million patent sale transaction that facilitated Kodak's emergence from Chapter 11.*

*Representation provided while working at a prior firm.

• "PTAB 2024 Year in Review," PTAB Bar Association, Webinar, February 26, 2025

• "Biologics Post-Grant Proceedings: Over a Decade of Experience," Intellectual Property Owners Association, Pharmaceutical and Biotechnology Issues Committee and U.S. Post-Grant Patent Office Practice Committee, August 3, 2023
• "It's Evidence, Not Argument! Incorporate Neither by Reference, PTAB Says in Parus Holdings v. Google," Intellectual Property Owners Association, US Post-Grant Office Practice Committee, June 13, 2023
• "Xerox Corp. v. Bytemark, Inc., and the Support Required for Expert Declarations in PTAB Litigation," Intellectual Property Owners Association, US Post-Grant Office Practice Committee, May 16, 2023

Awards

• China Business Law Journal, Deals of the Year, (2024-2025)
• Super Lawyers, New York, Intellectual Property Litigation (2019-2023)
• Managing Intellectual Property, IP Star (2015-2016)
• Intellectual Asset Magazine, Leading Patent Litigator (2014-2016)
• Federal Circuit Bar Association, George Hutchinson Award (2012)

Prior Publications

• "The Defense Patent Holiday Closes July 22, Offering a Time-Sensitive Shortcut Into the Defense Drone Market, With an IP Catch," Step Into IP Blog (Steptoe), June 3, 2026
• "Defense Patent Holiday's Real Prize May Be Collab Potential," Law360, May 29, 2026 (in IP Law360 and International Trade Law360)
• "Fed. Circ. Inherency Ruling Refines Obviousness Framework," Law360, Jan. 29, 2025 (top of Law360's "The Most-Read IP Law360 Guest Articles Of 2025")
• "PTAB Reveals Route to IPR Institution Denial in Parallel Cases," Law360, March 18, 2021
• "'Teva' and Standard of Review on Patent Claim Construction," New York Law Journal, January 30, 2015
• "Therasense—Vaccine for a Plague," National Law Journal, June 6, 2011
• "Considering The Impact of New Legislation on Biologics in the US," Financier Worldwide, December 2010
• "The Challenger Is Prepared, Are You? Strategies for Preparing to Enforce Patents Covering Pharmaceutical Products," BNA's Patent, Trademark & Copyright Journal, 81 PTCJ 36, November 5, 2010
• "Implications of 'Ariad' for Describing Biological and Chemical Inventions," New York Law Journal, June 1, 2010
• "ITC Patent Dispute Over Wind Turbines Turns Political," National Law Journal, January 25, 2010
• "Is There a Written Description Requirement After All?," Law360, December 11, 2009
• "Abbott Laboratories v. Sandoz Inc.: Patenting a Product by Defining How It's Made," BNA's Patent, Trademark & Copyright Journal, 79 PTCJ 86, November 20, 2009
• "Emerging Issues for Clean Energy Technologies," North American Clean Energy, August 2009
• "International Patent Prosecution After 'In re Bilski': Incorporating Limitations," New York Law Journal, December 2, 2008
• "Patent Exhaustion, Litigation, Licensing After 'Quanta'," New York Law Journal, August 6, 2008
• "Utility Must Be Specific, Practical," National Law Journal, October 17, 2005
• "FTC Takes Drug-Patent 'Reverse Payments' to High Court," New York Law Journal, October 3, 2005
• "Drug Patents in the Spotlight," New York Law Journal, February 28, 2003
• "Federal Circuit Reconsiders Ruling in 'Enzo Biochem'; Court Takes More Flexible View of the Written-Description Requirement," National Law Journal, October 14, 2002
• "More Flexible View of the Written-Description Requirement," October 14, 2002
• "A Roadmap for Biotechnology Patents? Federal Circuit Precedent and the PTO's New Examination Guidelines," AIPLA Quarterly Journal, Spring 2002
• "Declaratory Judgements in Patent Cases," New York Law Journal, July 9, 2001
• "Business Method Initiatives," National Law Journal, May 7, 2001
• "A Computerized Business Method Is Patentable Subject Matter," New York Law Journal, August 6, 1998

• Association for Unmanned Vehicle Systems International (AUVSI)
• Federal Circuit Bar Association
  • PTAB and TTAB Committee
• Intellectual Property Owners (IPO) Association
  • US Post-Grant Office Practice Committee
• PTAB Bar Association