Thomas J. Brindisi

Partner

Mr. Brindisi is an intellectual property lawyer with a strong ethic for serving clients by tailoring his services thoughtfully and efficiently to their individual needs. Mr. Brindisi’s practice has focused on patents, trade secrets, trademarks, and licensing throughout his career going back to 1994.

This includes litigation and prosecution of patents and trademarks, opinions on validity and infringement, and drafting and negotiation of IP-related agreements. Having practiced as a patent litigator and an attorney before the Patent Office, Mr. Brindisi knows how to obtain strong patents for his clients, and how to find and exploit weaknesses in other parties’ patents, providing big firm value at reasonable prices for clients around the world.

Mr. Brindisi began and spent his first seven years at the West Coast’s then-largest IP firm (Lyon & Lyon), prosecuting and litigating patents, rendering numerous complicated opinions on patent validity and infringement, performing IP evaluations relating to due diligence, drafting and negotiating technology licensing and transfer agreements, and developing strategy and procedures with clients. Mr. Brindisi led or played the primary substantive role in successful motions for summary judgment in “make or break the company” cases and successfully defended victories at the federal court of appeals. When Lyon & Lyon foundered in 2002, Mr. Brindisi opened his own practice in Los Angeles, prosecuting domestic and international patent applications before the U.S. Patent Office, rendering opinions on the validity and infringement of issued patents, providing patent litigation consulting and support, drafting and reviewing licensing agreements and various other agreements involving IP, evaluating IP targeted for possible acquisition, and providing second opinions and opinions on ethical matters for other IP firms.

Mr. Brindisi’s technical subject matter expertise includes mechanical, electrical, chemical, biological, medical, pyrotechnical, aerospace, cryptography, hardware, software, and networks. In addition to admission in the courts and bars listed below, his experience has included matters in the Board of Patent Appeals and Interferences, the Trademark Trial and Appeal Board, and the International Trade Commission.

Mr. Brindisi’s litigation experience includes substantively leading the defense of a patent infringement case through favorable summary judgment and defense of that judgment on appeal, resulting in an opinion that set national precedent and was recently relied upon by the Supreme Court in interpreting the 2013 America Invents Act.

  • University of Baltimore, JD, 1994 (cum laude; editor-in-chief of the Intellectual Property Law Journal and associate comment editor of the Law Review)
  • Carnegie Mellon University, B.S., chemical engineering plus biomedical engineering option, 1991 (four-year partial scholarship as a National Merit Finalist)
  • California State Bar (1994 exam)
  • Florida State Bar (2015)
  • U.S. Patent & Trademark Office (1995 exam)
  • U.S. District Courts for the Northern, Central, and Southern Districts of
  • California (1996 and 2020)
  • Southern and Middle Districts of Florida (2018 and 2020)
  • U.S. District Courts for the Eastern and Western Districts of Texas (2020)
  • U.S. Courts of Appeals for the Ninth and Federal Circuits (each in 1997)
  • U.S. Supreme Court (2016)
  • Patents written, prosecuted, and/or invented by Mr. Brindisi have been the subject of acquisitions by companies including Google and Analog Devices, with some representative examples as follows:
  • Design:  D627,988 & D645,040
  • Mechanical:  6,550,739, 9,885,518 & 10,006,708
  • Chemical:  6,964,715
  • Pyrotechnic:  7,004,071 & 7,239,225
  • Electronic & Lighting:  7,577,756, 8,872,420 & 9,746,138
  • Cryptography:  9,258,129, 9,806,718, 10,425,235 & 10,958,452
  • Dealing with the Willfulness Issue, Including Bifurcation Motion Practice, Patent Litigation 1996, II:151 (PLI) (co-authored with Robert C. Weiss)
  • 117 F. Supp. 2d 989 (C.D. Cal. 2000) (granting client’s motion for summary judgment of patent invalidity)
  • 131 F. Supp. 2d 1171 (C.D. Cal. 2001) (finding patent case exceptional & awarding client attorney fees)
  • 269 F.3d 1340 (Fed. Cir. 2001) (dismissing adversary’s appeal of attorney fees award)
  • 270 F.3d 1353 (Fed. Cir. 2001) (affirming client’s summary judgment) (relied upon by the U.S. Supreme Court in Helsinn Healthcare S.A. v. Teva Pharm. USA (2019), 586 U.S. ___, Slip Op., pp. 2, 7-9)
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