Todd Tucker

Practice Areas

Intellectual Property

Intellectual Property Litigation

IP and Technology Transactions

Patent Litigation

Private Equity

Technology Transfer

Career

Todd Tucker, Intellectual Property Partner and Director of International Business, has served as lead trial counsel in patent litigation actions before district courts, the Federal Circuit, and the International Trade Commission.

Todd focuses his practice on intellectual property litigation and intellectual property counseling. He counsels companies on the procurement of IP assets and management of worldwide IP portfolios with a particular focus on protecting IP assets in China. He provides Chinese companies general counseling on doing business in the U.S.

Todd’s first-chair patent trial experience includes securing a jury verdict of non-infringement for a snow plow manufacturer, obtaining a non-infringement judgment for a maker of house arrest bracelets and obtaining a series of preliminary injunctions for a manufacturer of construction products.

He was also part of a trial team that won more than $39 million for infringement of his client’s semiconductor testing equipment patent – the largest verdict in 2011 for the State of Arizona.

Todd also has experience with reexamination proceedings, inter partes reviews and derivation actions in the U.S. Patent Office.

Todd has developed and managed global patent enforcement programs for a variety of clients. These programs include obtaining preliminary injunctions in the United States while managing worldwide counsel seeking to enforce related patent rights throughout Europe and Asia.

As part of his global IP experience, he assists clients with protecting business interests and inventions in China. He has formed and managed several Chinese R&D centers and is well-versed in many aspects of Chinese IP Law, including procurement and enforcement of Chinese patents, utility models and trademarks.

Todd also has managed Chinese invalidation proceedings and is experienced with the nuances of IP licensing in China.

Finally, Todd has been tasked by several clients with the strategic management of patent portfolios, including coordinating a network of international patent counsel for worldwide patent procurement and protection of medical devices, consumer products, food packaging and construction material inventions.

He provides clients with right-to-market, patentability and non-infringement/invalidity opinions.

Todd is licensed to practice before the U.S. Patent and Trademark Office and is a member of the Cleveland Intellectual Property Law Association, AIPPI, AIPLA and INTA.

Todd started at Calfee as an Associate in 1995 and returned to Calfee as a Partner in 2013. Todd was elected to the firm's Management Committee in 2020, and he began serving as Director of International Business in 2022.

Professional Memberships

The Kathleen O'Malley IP Inn of Court, Master of the Bench and Founding Member

International Trademark Association (INTA), Member

Cleveland Intellectual Property Law Association (CIPLA), Member

Expert in these Jurisdictions

Ohio

USPTO

Experience

Handling IP matters for a publicly traded, Fortune 1000, global manufacturer, including drafting and prosecuting dozens of patent applications directed to technology of strategic importance to the client. Calfee also represents the company in significant IP litigation matters when they occur. Calfee routinely manages and assists with matters related to patent prosecution and IP strategy, management and strategy of patent and trademark portfolios, and advice on IP strategy and litigation. Calfee also is handling "take-down" disputes related to infringers of the client's patents on the Amazon.com website.

Representing a publicly traded, Fortune 1000 company and its operating entities spanning several continents in its complex intellectual property litigation and transactional matters. These matters range from complex IP deals (purchases, licensing, government contract issues) to infringement and theft of trade secret disputes, including multiple multi-million-dollar patent enforcement matters, an IP Option and Evaluation agreement to acquire a large IP portfolio and to assume government contracts, and an arbitration/litigation matter to resolve trade secret and contract claims relating to military and civilian systems.

Serving as global Intellectual Property Lead Counsel for an Asia-based manufacturer, representing the client in district court litigation matters and prosecuting patent applications. The patent work for this client includes patent infringement matters filed in district courts in two states and the Federal Circuit as well as in six inter partes reviews before the Patent Trial and Appeal Board. These actions are being heard in a variety of forums in four countries.

Education