Mr. Kelly counsels clients in connection with intellectual property protection and claims. He concentrates his litigation practice in the areas of patent infringement, trademark infringement, trade secret litigation, non-compete agreements and business disputes. He has handled numerous multi-million dollar trade secret, franchise, contract and intellectual property cases. He has served as lead counsel in both state and federal jury and non-jury trials.
As a registered patent attorney he has drafted and prosecuted patent applications in a wide array of technologies including food storage and serving apparatus, engine components, medical devices, fuel systems, refrigeration/AC systems, industrial tools, network security, optical coatings and optical cleaning methods. He also counsels clients in connection with trademark, copyright, trade secrets, technology license agreements and intellectual property opinions and infringement analyses. Mr. Kelly is qualified as a mediator under Missouri Supreme Court Rule 17.
Recent Intellectual Property Litigation
(D.NJ 2011) – Lead counsel for defendant container and packaging manufacturer in patent infringement claim involving plastic film cutting technology.
(C.D.CA. 2011) – Lead counsel for defendant in multi-defendant patent infringement claim involving medical documenting software systems.
(D.NJ 2011) – Lead counsel for defendant Internet gaming company in patent infringement case involving network lottery technology.
(E.D.TX. 2010) – Lead counsel for seven defendants in multi-defendant patent infringement claim involving medical billing systems.
(E.D.TX. 2010) – Lead counsel for three defendants in multi-defendant patent infringement claim involving medical documenting software systems.
(E.D.MO 2010) – Lead counsel for plaintiff in trademark infringement case involving molded plastic products.
(E.D.MO 2010) – Lead counsel for defendant Internet gaming company in patent infringement case involving multi-media signal compression technology.
(E.D. MO 2009) – Lead counsel for defendant in Lanham Act, false advertisement case involving loan processing software.
(Il. State Court 2008) – Lead counsel for defendant in trade secret case involving web site development software; all claims against client dismissed.
(E.D. MO 2008) – Lead counsel for plaintiff automobile dealership in trademark infringement action. Obtained consent decree under which defendants ceased use of allegedly infringing mark.
(N.D. IL 2008) – Lead counsel for plaintiff container and packaging manufacturer in patent infringement claim involving food container design. Defendant agreed to remove allegedly infringing product from market.
(E.D. MO 2008) – Lead counsel for plaintiff, a seller of material handling products and services in trademark infringement case. Obtained consent decree under which defendants ceased use of allegedly infringing mark.
(S.D. IL 2007) – Lead counsel for two defendants in multi-defendant (18 co-defendants) patent infringement claim involving medical documentation software systems.
(E.D. MO 2007) – Lead counsel for defendant mortgage company in trademark infringement action. Case dismissed with no finding or admission by client of trademark rights or infringement.
(E.D. MO 2007) – Lead counsel for plaintiff container and packaging manufacturer in patent infringement claim involving food container design. Defendant agreed to stop sale and distribution of allegedly infringing product.
(E.D. MO 2007) – Lead counsel for defendant operating oil change facility in trademark infringement claim.
(M.D. TN 2006) – Represented manufacturer and distributor defendants in patent infringement claim involving pharmaceutical vials.
(Il. State Court 2005) – Counsel for defendants in non-compete and trade secret case involving insurance agency. Case settled after judgment on all counts rendered in favor of defendants.
(E.D. MO 2004) – Lead counsel for plaintiff automobile dealership in trademark infringement case. Defendant agreed to stop use of allegedly infringing mark.
Professional Affiliations
Bar Association of Metropolitan St. Louis
American Intellectual Property Law Association
International Trademark Association
Published Works
Legal Issues Protecting Your Product Intellectual Property Indemnity, (Featured Contributor), 02/2009, Midwest CEO Magazine
Reusing Patented Medical Devices, 06/12/2007, IPFrontline.com
Refurbishing Patented Products, 07/10/2007, IPFrontline.com
FACTA: New Law Imposes Duties On All Businesses As to Disposal of Consumer Information, 03/06/2006, St. Louis Small Business Monthly
Presentations
Business Torts - Looking Beyond Traditional IP Litigation to Protect IP - Co-Presenter, 9th Annual Rocky Mountain Intellectual Property & Technology Institute Denver, Colorado 06/01/2011
Improving Your Game - Understanding and Leveraging the Patent System, Open presentation to firm clients and contacts, 11/18/2009
Business Retention Strategies and Obligations, Lorman Education Services, Continuing Legal Education Seminar, 08/11/2009
Disappearing Ink: Unenforceable Contract Provisions: Select Issues of Invalidity in Intellectual Property Provisions, Association of Corporate Counsel – St. Louis Chapter, 28th Annual Corporate Counsel Institute, 05/14/2009
Where the Internet and Intellectual Property Law Collide What You Don’t Know Can Hurt You, Business Marketing Association – St. Louis, 04/02/2009
Information Retention Strategies and Obligations A Guide to Best Practices for Managing Information, Including Complying with the New Federal Rules of Civil Procedure, Business and Management Program, St. Louis Community College, 03/12/2009
Select Ethical Issues in Patent Litigation, National Business Institute, Continuing Legal Education Presentation, 03/20/2008
Business Information Retention Obligations and Strategies, Open presentation to firm clients and contacts, 10/18/2007
Recent Developments in Patent Law, Open presentation to firm clients and contacts, 09/28/2007
Trademarks – What Every Business Should Know, Open presentation to firm clients and contacts, 04/27/2007
Identifying and Protecting Trade Secrets, Presentation to Printing Industries of St. Louis, 02/15/2007
Business Information Retention Obligations and Strategies, Open presentation to firm clients and contacts, 02/09/2007
Identifying and Protecting Trade Secrets, Open presentation to firm clients and contacts, 12/12/2006
Identifying and Protecting Trade Secrets, Open presentation to firm clients and contacts, 11/08/2006
Improving Your Business Game: Understanding and Using Trademarks, Open presentation to firm clients and contacts, 01/20/2012