Jeff Nelson uses his experience in litigating patents to write and prosecute strong, enforceable patents.
Nixon Vanderhye Shareholder Jeff Nelson obtains patents worldwide for new mechanical and electromechanical technologies. He also litigates patent disputes, handles post-grant proceedings before the U.S. Patent and Trademark Office (USPTO), advises on developing patent portfolios, prepares licensing and confidentiality agreements, performs due diligence on patent portfolios, and provides legal opinions on patent issues.
Jeff has personally written hundreds of patent applications and prosecuted several thousand applications before the USPTO. He applies his experience litigating patents to draft and prosecute patent applications
In the litigation arena, Jeff has tried lawsuits regarding patent disputes and argued appeals before the U.S. Court of Appeals for the Federal Circuit. He has been lead counsel or held other significant roles in over 90 intellectual property lawsuits. Technologies at issue in the lawsuits include aircraft and aircraft engines, audio speakers, televisions, pulping and paper making systems, and medical devices. Jeff assists clients by drafting intellectual property agreements; handling due diligence processes, including guiding them through due diligence investigations; and providing counsel in arbitration and mediation proceedings.
Before joining Nixon Vanderhye, Jeff was a patent litigator for the U.S. Department of Justice and clerked for Judge Robert Seto in U.S. Court of Federal Claims.
- Obtained summary judgment of non-infringement of audio speakers on behalf of Yamaha in Pazandeh v. Yamaha (C.D. Ca.; Fed. Cir.). The judgment was affirmed on appeal.
- Obtained a favorable claim construction ruling for Toshiba in Patent Harbor v. Toshiba (E.D. Tx.), a patent dispute involving liquid crystal displays. The case settled.
- Obtained a favorable claim construction ruling for Toshiba in Positive v. Toshiba (E.D. Tx.), a patent dispute involving liquid crystal displays.
- Obtained summary dismissal of a case against Toshiba on the basis that the plaintiff lacked full patent ownership in Cooper v. Toshiba (D. Ohio; Fed Cir.). The dismissal was affirmed on appeal.
- Represented Andritz in Andritz v. J&L, (D. Or.) that involved a dispute alleging trade secret violations and patent infringement over pulp manufacturing technology. The case settled.
- Obtained a favorable claim construction ruling for Moore in ABP Inc. v. Moore (M.D. Fl.), resulting in settlement of a patent dispute involving labels for prescription pill bottles.
- Obtained finding of non-infringement for the defendant in the Standard Havens v. Gencor arbitration of a patent dispute involving asphalt-making plants.
- Obtained summary judgment of non-infringement for the defendant in Simplimatic Engr' v. Sentry Equip. (W.D. Va.; Fed. Cir.), a patent dispute involving conveyor systems. The decision was affirmed on appeal.
- Represented Wetend in Nalco v. Wetend Technologies (E.D. Ill), a dispute regarding patented papermaking technology. The case settled.
- Represented Andritz in Andritz v. Metso (N.D. Ga) that involved several patents on papermaking technologies. The case settled.
- Represented the U.S. in Pratt Whitney Canada v. U.S. (Fed. Cl.; Fed. Cir.), a six-week trial resulting in a judgment of non-infringement that was affirmed on appeal.
- Represented the U.S. in Steve Altman v. U.S. (Fed. Cl.), a trial involving a copyright infringement claim related to a photograph of President Ronald Reagan that ended in a successful judgment.
- Represented the Copyright Register in John Muller & Co. v. Register of Copyrights (W.D. Mo; 11th Cir.) by successfully obtaining summary judgment that upheld the administrative decision to deny copyright registration.
- Post-Grant Proceedings
- Due Diligence
- Domestic and Worldwide Portfolio Management
- PTAB Practice
- IPRs, PGRs, CBMs, Reexams, and Derivations
- Trademarks and Unfair Competition
- Trade Secrets
- Domain Name
IP Transactions, Agreements, and Trade Secrets
- Licensing, Sales, and Assignments
- Non-Disclosure Agreements
- Due Diligence
- IP Audits
- District of Columbia
- U.S. Patent and Trademark Office
- U.S. Court of Appeals for the Federal Circuit
- U.S. District Court for the Eastern District of Virginia
- U.S. District Court for the District of Columbia
- U.S. Federal Claims Court
George Mason University
(Completion of coursework for master’s degree in computer and electrical engineering, 1982-1987)
- J.D., College of William & Mary, Marshall Wythe Law School, 1982
- B.S. in Mechanical Engineering, cum laude, Virginia Tech, 1979
- Martindale-Hubbell, AV Preeminent Rating
- American Intellectual Property Law Association
- Order of the Barristers
- Speaker on patent prosecution topics at the U.S. Patent and Trademark Office Customer Partnership Meetings for the Mechanical Arts, Spring 2018, 2017 and 2016.
- Speaker, “Drafting a Patent Application for Success at the U.S. Patent and Trademark Office,” American Intellectual Properly Law Association Annual Meeting, October 2015.