Thomas D. Kohler

Director

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  • Overview

    • Intellectual Property counselor – experienced and creative, with a practical business focus.

      Tom Kohler is an experienced, registered patent attorney who has worked with individuals, start-ups, and Fortune 100 companies in diverse technology areas including medical devices, renewable energy and electric power generation, consumer products, Internet and computer products, semiconductor fabrication, and telecommunications. Prior to joining DRM, Tom was a partner in a leading IP boutique firm in New York City. He has also worked in London and San Francisco with two large international law firms. Paired with a deep understanding of patents and patent prosecution, Tom’s extensive experience in all aspects of patent litigation, counseling and prosecution allow for a unique litigation perspective to his prosecution work. He advocates for his clients in settlement negotiations, in court, and in inter partes proceedings before the Patent Trial and Appeal Board (PTAB) at the USPTO. His experience and dedication to his work are brought to bear when counseling clients on developing strong portfolios, building value and avoiding IP risk.

  • Experience

    • The following matters are demonstrative of the successes Tom has achieved on the behalf of his clients throughout his career: 

      • Achieved a settlement for his client, a consumer products innovator and retailer, in patent infringement litigation initiated by the client in the District of Vermont and in parallel interference proceedings subsequently initiated by the defendant in the USPTO.
      • Worked with a San Francisco Bay Area start-up for a number of years developing, growing and strengthening a world-wide patent portfolio protecting their unique spinal fixation implant. This work lead to the acquisition of Tom’s client by a major corporation.
      • Successfully represented design patent holders in patent infringement actions in Federal Court, most recently achieving a settlement for a client accused of infringement in a case pending in the Southern District of Florida.
      • Twice successfully represented patent holders in patent infringement actions while fending off ex parte reexamination proceedings in the USPTO initiated by the accused infringers. In each case, Tom was able to sustain the patentability of each patent, and the litigation settled with the accused infringer’s withdrawal from the market.
      • Achieved a settlement on behalf of a Vermont consumer electronics company against an accused infringer located in Hong Kong and China. Federal Court litigation in Vermont was settled after depositions in Hong Kong and on the eve of initiation of a parallel enforcement action in China.
      • Won summary judgment of non-infringement in defending an international dental company against accusations of infringement in the Central District of California. Tom then successfully defended the judgment of non-infringement against the plaintiff’s appeal to the Court of Appeals for the Federal Circuit.
      • For over 10 years, Tom advised an alternative energy technology company in developing, expanding and maintaining a worldwide patent portfolio, and in patent and trade secret licensing transactions domestically and abroad.
      • Achieved a settlement for a client accused of patent infringement and trade secret misappropriation in a case involving injection molding technology brought against his client in the District of Vermont.
      • Represented clients domestically in patent litigation matters in Federal courts in Massachusetts, Vermont, New York, Florida, Indiana, Illinois, Idaho, Utah and California. He has also worked with U.S. and foreign clients on matters in countries including the United Kingdom, Germany, France, Luxembourg, Switzerland, Korea and Japan.
  • Admissions & Clerkships

    • U.S. Patent and Trademark Office, 1988
      New York, 1990
      Connecticut, 1990
      California, 2000

  • Memberships & Activities

      • Sailing
      • Backcountry skiing
      • Woodworking: furniture and wooden boats
      • Metal working
      • Generally fabricating cool stuff
  • Community Involvement

    • Westport Central School, Westport NY, Member of School Board

Intellectual Property counselor – experienced and creative, with a practical business focus.

Tom Kohler is an experienced, registered patent attorney who has worked with individuals, start-ups, and Fortune 100 companies in diverse technology areas including medical devices, renewable energy and electric power generation, consumer products, Internet and computer products, semiconductor fabrication, and telecommunications. Prior to joining DRM, Tom was a partner in a leading IP boutique firm in New York City. He has also worked in London and San Francisco with two large international law firms. Paired with a deep understanding of patents and patent prosecution, Tom’s extensive experience in all aspects of patent litigation, counseling and prosecution allow for a unique litigation perspective to his prosecution work. He advocates for his clients in settlement negotiations, in court, and in inter partes proceedings before the Patent Trial and Appeal Board (PTAB) at the USPTO. His experience and dedication to his work are brought to bear when counseling clients on developing strong portfolios, building value and avoiding IP risk.

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