Kelsey Nix has more than 30 years of experience representing clients in their most important patent, trade secret, copyright, and trademark cases. Clients describe him as a strategic and creative litigator who focuses on the end result.
Kelsey has represented companies in the federal courts and the ITC in a wide range of technologies, including medical devices, aviation and avionics, pharmaceuticals, biotechnology, banking and trading platforms, encryption, electronic commerce, clean technology such as light emitting diodes, microprocessors, telephony, security systems, modems, NiMH batteries, and machine tools.
Kelsey has been lead counsel in more than 30 cases. Exemplary cases as lead counsel include successfully defending an international spirits manufacturer against patent infringement allegations in the ITC and in New York and Texas district courts and obtaining a complete defense victory on summary judgment in a copyright and trademark infringement case concerning aviation maintenance manuals.
Kelsey is a member of the ABA, the American Intellectual Property Law Association, and the ITC Trial Lawyers Association. He has served on the editorial boards of Intellectual Property 360 (2015) and the AIPLA Quarterly Journal (2012-2014), the board of the Columbia University Engineering Alumni Association, IPO's standards setting committee, and AIPLA's trade secrets committee.
Kelsey has been an invited lecturer at patent and trade secret conferences sponsored by many leading IP associations. He has published articles on patent and trade secret law and has been quoted as an authority on patent law in many influential publications, including The National Law Journal.
The following represents experience prior to joining Jones Day.
Successfully represented a major lighting device manufacturer in defending its LED designs against a claim of patent infringement in the Eastern District of Texas. The case was settled on favorable terms for the client after successful motion to disqualify the patentee's trial counsel and the U.S. Patent Office granted request to reexamine the patent in suit.
As co-chair in an ITC investigation involving digital signal processors, successfully represented a semiconductor manufacturer in defending against claims of patent infringement. Following a two-week trial, the asserted patent was found invalid, unenforceable for inequitable conduct, and not infringed.
Lead trial counsel in a patent infringement case concerning computer systems for global trade financial processes in a two-week jury trial.
Co-chair in a two-week jury trial of a major medical device manufacturer where the Federal Circuit decided an interlocutory appeal in client's favor that plaintiff's foreign counterpart patents could not be asserted in a U.S. district court.
Co-lead trial counsel in three cases involving 12 patents and four accused products relating to mailing systems and internet postage dispensing systems in the District of Delaware. Case settled successfully for client following claim construction and decision on summary judgment cross-motions.
Successfully represented patentee in one-week evidentiary hearing on preliminary injunction motion involving three patents on controlled-release pain medication. Preliminary injunction granted and affirmed by the Court of Appeals for the Federal Circuit.
Second chair in seven-week jury trial successfully defending manufacturer of wireless security system against patent infringement claims in the District of Minnesota.
Successfully represented eyeglass manufacturers against patent infringement claims. Summary judgment of non-infringement affirmed by Federal Circuit.
Trade Secret Litigation
Represented a major medical device manufacturer in defending against claims of theft of trade secrets and patent infringement. Successfully argued appeal of summary judgment of no trade secret misappropriation in the Court of Appeals for the Sixth Circuit. Plaintiff then dismissed its patent infringement claims with prejudice in view of motion for summary judgment of patent invalidity.
Lead trial counsel for a leading hedge fund in a trademark infringement case in the District of Delaware against another hedge fund and in related proceedings before the Trademark Trial and Appeal Board. Case settled on successful terms with defendant agreeing to change its company name and to abandon four trademark applications.
Lead trial counsel in trademark and patent infringement case concerning machine tools in the Southern District of New York. Obtained permanent injunction against further trademark and patent infringement.
Corporate Transactions and Licensing
Advised a European private equity fund in connection with the purchase of a well-known global trademark portfolio in a bankruptcy proceeding.
Negotiated the intellectual property provisions in a licensing transaction for a billion-dollar video game franchise.
Advised a leading aerospace company on trade secret and patent issues in connection with an aircraft licensing transaction.
Medical Device Litigation and Counseling
Counseled companies and private equity funds and represented them in litigation concerning many types of medical devices, including cardiac catheters, urethral valves, vascular resistance gauges, digital mammography systems, portable cardiopulmonary resuscitators, clinical nitric oxide monitors, micro insulin pumps, neurovascular microcatheters to treat aneurysms, and nasopharyngeal brain cooling systems.
- May 17, 2019
AIPLA Spring Meeting, Plenary Session, Mid-Year Review of Trade Secret Developments
- November 16, 2018
Georgetown-Berkeley Conference on The Role of the Courts in Patent Law & Policy: The Impact of the Evolving Apportionment Standard on Patent Damages Awards
- November 7, 2008
In re Bilski: The Patentability of Business Methods Under 35 U.S.C. §101, The New York Intellectual Property Law Association's Fall CLE Program
- May 9, 2007
Injunctive Relief in the ITC, The New York, New Jersey, and Connecticut Intellectual Property Law Associations' Joint Patent Practices Seminar
- April 1, 2003
Developing A Coherent Claim Construction Strategy That Will Be Successful in the District Court and on Appeal, American Conference Institute: Maximizing Pharmaceutical Patent Life Cycles
- November 5, 2002
Patent Damages, International Property Owners Association Annual Meeting
- Duke University (J.D. 1987); Columbia University (B.S. in Mechanical Engineering 1984); Hendrix College (B.A. in Physics 1984)
- New York; U.S. Supreme Court; U.S. Courts of Appeals for the Federal, Second, Sixth, and Eleventh Circuits; U.S. District Courts for the Eastern and Southern Districts of New York; and registered to practice before the U.S. Patent and Trademark Office
Regularly recognized as a leading intellectual property lawyer in Who's Who in American Law (since 2007) and Who's Who in America (since 2010)
Selected as being among the top five percent of intellectual property litigation lawyers in New York by Super Lawyers magazine (2006, 2010-2012)