Ned Pejic

Ned’s intellectual property practice runs the gamut from patent litigation and legal opinions encompassing infringement, validity and enforceability issues to patent prosecution and portfolio management involving patents, copyrights and trademarks. Ned has worked with clients of all sizes to establish and manage strategic IP portfolios and implementation of internal IP portfolio management and budget control processes.

His litigation experience includes trial and appellate practice before the Court of Appeals for the Federal Circuit. This includes first chair experience with large complex cases involving multiple patents, Non-Practicing Entities (NPE’s), and client competitors. Ned’s experience further includes first chairing oral arguments before District Court judges and depositions of fact and expert witnesses. Ned has also represented clients in many Inter Partes Reviews (IPR) proceedings and argued before the Patent Trial and Appeal Board.

He has prepared and prosecuted patent applications involving computers, software, digital and analog circuitry, and mechanical inventions ranging from medical equipment to micro-electromechanical systems. He has prosecuted re-examinations and appealed successfully to the Board of Patent Appeals and Interferences. 

Ned worked as an electrical engineer prior to attending law school. He served as a patent agent with Calfee from 1994 to 1996, becoming an Associate with the firm in 1996 and elected Partner in 2006.

Education

J.D., with honors, Cleveland State University College of Law, 1996

B.S. in Electrical Engineering, The Ohio State University, 1991

Experience

• Drafting and prosecuting the client’s patent applications and assisting in patent portfolio development and research collaborations with academia for a multi-billion-dollar, international manufacturer. Calfee handles domestic and foreign patent litigation, patent prosecution, and IP strategy for the client, and we also provide management and strategy services for its patent and trademark portfolios and advise on IP strategy.

Professional & Community

• Cleveland Intellectual Property Law Association, Member
• Intellectual Property Owners Association, Member

Presentations & Publications

Presentations

• “Why Patents Matter, Law of Obviousness, before and after KSR:  A New Threshold” and “Intellectual Property Business Planning.”
• “Computer, Diagnostic, and Business Method Patents in the Wake of Bilski.”

Published Articles

• “Myriad: Unlocking the Deep Secrets of DNA and Patentability,” Impact IP, an Intellectual Property Law Newsletter (May 2013)
• “Why do Patents Matter? . . . Because Not Everything is Patentable,” Impact IP, an Intellectual Property Law Newsletter (March 2013)
• “Last Rites: AIA to bury “First to Invent” on March 16, 2013,” Impact IP, an Intellectual Property Law Newsletter (February 2013)
• “U.S. Supreme Court to Nike Competitor: You Have No Case or Controversy,” Impact IP, an Intellectual Property Law Newsletter (February 2013)
• “Patents Can Protect Your Business Innovations,” Managed Healthcare Executive (September 2010)
• “Computer, Diagnostic, and Business Method Patents in the Wake of Bilski,” Lexology (July 2010)
• “What You Don’t Know Can Hurt You:  Having a Website Could Mean You’re Susceptible to Being Sued for Software Patent Infringement,” ACC Docket (November 2007)