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Michael Best’s Moran brings practical side to patent protection

Michael Best’s Moran brings practical side to patent protection

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Kevin Moran (Staff photo by Kevin Harnack)
Kevin Moran (Staff photo by Kevin Harnack)

After working as an engineer for three years, Kevin Moran knew the field was not for him.

The next question was, what now?

For Moran, the suggestion came from his wife, who was also an engineer: Go to law school and become a patent attorney.

“I didn’t know anything about the law or law school, but it wound up being an ideal fit,” said Moran, a partner in Michael Best & Friedrich’s intellectual property practice group in the Milwaukee office. “Everyday is different. I am still exposed to new technology; it’s just fascinating.”

In addition to his work with clients, Moran has served in different leadership roles with Michael Best, including as a member of the management committee, chair of the intellectual property group and leader of the advanced manufacturing team.

Moran works regularly with a range of medium and large companies, primarily on mechanical or electromechanical issues, with most of his experience in the fitness equipment, motorcycle, vehicle braking systems, bicycles and window coverings industries.

He looks at technology and products and advises companies about challenging the validity and enforceability of competitors’ patents, enforcement and acquisition. Moran also defends patents in the U.S. and internationally.

Most companies, he said, fear patent infringement.

“I contact the company and we try to work it out. If we can’t we’ll go to court,” Moran said.

Only one in 10 patent cases make it in front of a jury, said Moran, adding that if one does it is vital that attorneys are able to easily explain the finer points of the technology and legal points to jury members.

“You need to be able to pick up technology quickly in this job,” Moran said. “Then, once you grasp the technology, you can focus on the law.”

Moran said keeping up with technology is vital to his success. He regularly attends trade shows and conferences in his clients’ industries.

“I have also found just talking and working with my clients is a great way to stay up to date as well,” Moran said.

Wisconsin Law Journal: What makes your work important to you?
Kevin Moran: It is well known that patent attorneys help clients by obtaining and enforcing patents on new technology. However, an even more fulfilling part of my job is when I help a client avoid a dispute by redesigning products or invalidating competitor’s patents that never should have been granted. By proactively addressing intellectual property issues, I am helping clients bring new products and new technologies to market, while hopefully avoiding resource-draining litigation.

WLJ: Who is your hero in the legal field?
Moran: ‘Hero’ is a word I reserve for those truly deserving, such as those men and women who risk their lives every day to help others and preserve the freedoms of our country. Nevertheless, I ‘admire’ any attorney or judge who can wade through the rhetoric and irrelevant facts and make rational arguments and decisions.

WLJ: What do you do outside of work to deal with stress from the office?
Moran: Outside of work I deal with stress by making sure I stay physically and mentally fit. Physically, I enjoy almost anything outdoors, such as cycling, kayaking, wake boarding, fishing and skate skiing. Mentally, the engineer in me enjoys tinkering with cars, bicycles and vintage motorcycles, which frequently involves problem solving (why is this ’67 BMW not idling smoothly?) and machine design (if you can’t find a seat bracket for a ’72 Norton, then you have to make one).

WLJ: What’s one thing many people get wrong about what you do?
Moran: I think most people have no idea what I really do, other than obtain patents for clients. However, the real value I bring to a client is in providing a business perspective to decisions involving intellectual property. For example, it is not uncommon that, after learning of a client’s business goals, I will counsel not obtaining a patent. In addition, I am often involved with a client’s product development process in order to reduce the likelihood of infringing on another’s intellectual property. Providing a more holistic, business-focused analysis is often unexpected and, ultimately, makes my job more interesting and rewarding.

WLJ: What’s your favorite memory from law school?
Moran: My favorite memory from law school was interning with Justice Callow at the Wisconsin Supreme Court. It was so different from classwork because most of the issues we researched were matters of first impression, and thus it forced me to look more closely at legislative history and public policy — very frustrating for someone who wanted to find the ‘right’ answer, but ultimately one of the best experiences I had during law school.

WLJ: Is there a certain case that stands out to you?
Moran: One case that stands out is an inter partes re-examination that I did for one of my clients. In the re-examination we were challenging the validity of a competitor’s patent. This case stands out to me because, rather than having a seasoned litigator handle the oral hearing at the Board of Patent Appeals and interferences, the client requested that I handle it. This was the first oral hearing I handled at the board, and I realized it was something I enjoyed. This led to many other oral hearings on behalf of my clients.

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