biography

Clif is a registered patent attorney and litigator with over 35 years of experience. He helps clients obtain, enforce, and leverage patent and trademark rights and defend against infringement challenges. He also represents clients on trade secret, trade dress, and copyright matters, and provides opinions on intellectual property availability, validity, freedom to operate, and infringement. He litigates patent and trademark disputes before the federal courts, the International Trade Commission, and the USPTO’s Patent Trial and Appeal Board and Trademark Trial and Appeal Board.

Technologies include: Autoimmune disease treatment, banking and business methods, chemical manufacture, consumer products, corrosion prevention, data extraction, data streaming, diagnostics, e-cigarettes, encryption, fire prevention equipment, hand and power tools, hardware, industrial equipment and vehicles, laboratory equipment, measurement and detection instruments, medical devices, office machines, packaging, pharmaceuticals, pharmaceutical delivery, plastics, semiconductors, software, storm water treatment, TENS devices, and water and wastewater treatment equipment and processes.

  • IP Bar Activities
    • Former Chair and 2024 Chair-Elect of the IP Section of the Bar Association of D.C.
    • Chaired IP Litigation Committee of American Bar Association
    • Chaired Patent Claim Interpretation Subcommittee of American Bar Association
    • Chaired Trademark Committee of the D.C. Bar
    • Trustee, Foundation of the Bar Association of D.C.
  • Distinctions
    • IP Star, Patents, Washington, D.C., Managing Intellectual Property survey, 2013-present
    • IP Star, Trademarks, Washington, D.C., Managing Intellectual Property survey, 2013-present
    • Selected to the Washington, D.C. Super Lawyers list, 2012-present
    • AV® “Preeminent” Rating by Martindale-Hubbell 1986-present
  • Representative Presentations and Publications
    • “Ethical Considerations in Intellectual Property,” Tri-Association Conference presentation (AWWA, CWEA and WWOA), Ocean City, MD, August 2024
    • “Patenting During the Pandemic,” Thompson Hine COVID-19 Update, April 2020
    • “The U.S. Supreme Court’s Helsinn Decision Makes Six Years of U.S. Patents Vulnerable to ‘On Sale’ Prior Art,” In House Defense Quarterly, Defense Research Institute, Summer 2019
    • “Medical Device Marketing Under Substantial Equivalence – FDA Clearance and USPTO Patent Considerations,” Regulatory Focus, Regulatory Affairs Professional Society, September 2018
    • “PTAB Challenges Can Reduce Royalty Obligations, Open New Markets,” Thompson Hine Intellectual Property Update, March 2016
    • “Patent Owner’s Considerations for Review Proceedings at the PTAB Concurrent with Litigation,” IPO Law Journal, Intellectual Property Owners Assoc’n., July 2015 (co-author)
    • “Hague Agreement Enhances Benefits of US Design Patents,” Law360, May 2015
    • “Protection of Proprietary Technology throughout the Supply Chain: Patents and Trade Secrets,” GlobalChem 2015 presentation, Baltimore, MD, March 2015
    • “Dollars and Sense: A Water Technology Owner’s Guide to Transferring Intellectual Property,” Ultrapure Water Journal, August 2014
    • “Intellectual Property Audits: The Purpose, Importance, and Cost,” National Meeting of the American Chemical Society presentation, March 2014
    • “IP Audits: What are they? Why are they important? What do they cost?”, Corporate Compliance Insights, July 15, 2013
    • “Obtaining, Challenging and Enforcing Pharmaceutical Patents Under the America Invents Act,” Pharmaceutical Patent Analyst, September 2012
    • “America Invents Act of 2011: How You Can Use It to Your Company’s Advantage,” International Water Conference presentation, November 2011
    • “America Invents Act of 2011: Major Changes in the Law that Will Affect Patent Litigation Strategies,” IP Frontline, October 2011
    • “Effective Use of Patents to Raise Capital and Protect R&D,” Annual Water Innovations Alliance Conference presentation, September 2011
  • Representative Experience
    • Won eight-figure damages award and $4M in attorneys’ fees as lead trial and appellate counsel for patentee Ecolochem, resulting in precedent-setting Federal Circuit decision on obviousness against Fortune 500 Southern California Edison. (C.D. Cal., Fed. Cir.)
    • Obtained favorable decision for ThermoFisher Scientific against Becton Dickinson in Post Grant Review (PGR) of patent for sepsis diagnosis by USPTO’s Patent Trial and Appeal Board.
    • Successfully defended Staples as lead counsel in patent infringement action brought by leading Taiwanese manufacturer concerning 3-ring binder mechanisms. (D. Del.)
    • Negotiated favorable settlement as lead counsel for WesTech Engineering in mediation of patent infringement action brought by Veolia Water involving rotary disc filters. (E.D.N.C.)
    • Lead counsel for GEO Specialty Chemicals in successful defense against patent infringement action brought by USALCO involving the manufacture of polyaluminum sulfate. (D. Md.)
    • Co-counsel for Swedish forensics software provider in trade secret misappropriation and copyright infringement action brought by Israeli forensics software competitor. (E.D. Va.)
    • Defended nation’s third largest credit union as lead counsel in action brought by TQP Development, in which TQP alleged that client’s website infringed encryption patent. (E.D. Va.)
    • Achieved favorable settlement as patent trial counsel for e-cigarette distributors in patent infringement cases brought by JUUL before the U.S. International Trade Commission. (USITC)
    • Manager of National Institutes of Health (NIH) patent portfolio consisting of over 500 U.S. and non-U.S. chemistry and biotech patent applications.
    • Trial counsel for American Mensa in trademark dilution action over famous MENSA mark, resulting in defendant’s cessation of use of ADMENSA on drug development services. (D. Md.)
    • Achieved favorable settlement as co-counsel for Powerchip Semiconductor in suit by Texas Instruments for alleged breach patent license for semiconductor technology. (S.D. N.Y.)
    • Successfully defended trademark rights in FM Approvals’ use of well-known “FM” in Diamond certification mark for loss prevention products against Fullco Industries. (D.R.I.)
    • Negotiated favorable settlement as lead trial counsel for Red Devil in trademark and trade dress infringement action brought by competitor over color-coding system for trowels. (N.D. Ill.)
    • Trial counsel in patent infringement action by Benchmark Games that resulted in jury verdict for validity, infringement, and damages against competitor’s infringing arcade game. (S.D. Fla.)
    • Successfully defended Michilin, Staples, and Office Depot against charge of infringement of patent for shredder lubrication before court and in inter partes reexamination. (D. Utah, USPTO)
    • Achieved seven-figure settlement for Ecolochem as lead trial counsel in patent infringement action involving water purification against Arrowhead Industrial Water. (N.D. Ill.)
    • Represented Software AG, Germany, in patent infringement action against BEA Systems for infringement of enterprise software patent, resulting in favorable settlement. (D. Del.)
    • Defended Porex Technologies in patent infringement action by Labcon, Inc. involving pipette tips, resulting in favorable settlement after summary judgment in client’s favor. (N.D. Ga.)
    • Prosecuted patents in water purification that have withstood competitors’ challenges in three civil actions, four appeals to the Federal Circuit, and a failed petition to the U.S. Supreme Court.

 

 

Washington, D.C.

Clifton McCann

Partner

[email protected]

+1.202.495.1192

Credentials

Admissions

District of Columbia

Virginia

U.S. Court of Appeals for the District of Columbia Circuit

U.S. Court of Appeals for the Federal Circuit

U.S. Court of Appeals for the Fourth Circuit

U.S. District Court for the District of Columbia

U.S. District Court for the Eastern District of Texas

U.S. District Court for the Eastern District of Virginia

U.S. Patent and Trademark Office

U.S. Supreme Court

Education

George Washington University, LL.M., Intellectual Property, 1985

Catholic University Law School, JD, 1977

Northern Illinois University, B.A., 1972

Prior Law Firm Experience

Venable LLP

Thompson Hine LLP

Practice Areas