Todd Tucker

Todd focuses his practice on intellectual property litigation and intellectual property counseling with a bent on worldwide IP. 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, German, Japanese, British and Italian 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 co-lead on 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.

He has been first-chair in Section 337 Investigations before the International Trade Commission. His ITC experience includes two significant victories in 2022. In one of these investigations, the ITC ordered his client, who was accused of patent infringement, dismissed from an investigation mid-way through the ITC hearing due to the patent holder’s expert admitting non-infringement during cross-examination.

Todd also has experience with reexamination proceedings, inter partes reviews, post grant reviews and derivation actions in the U.S. Patent Office. On behalf of a large medical device manufacturer, he recently invalidated in IPRs all claims over a family of six patents own by the client’s major competitor.

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. He is global patent counsel for a large Chinese manufacturer of wireless radios where his client is involved in patent litigation on four continents against their largest competitor. 

As part of his global IP experience, he assists clients with protecting business interests and inventions in China. He has managed the IP for 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.

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.

Since 2016, Todd has been recognized for his work in Intellectual Property by Chambers USA, most recently ranked Band 2 in Ohio. Chambers USA researchers noted, "Todd takes on a range of domestic and cross-border IP disputes, including patent litigation. His experience includes matters concerning the protection of assets in China, and he regularly advises Chinese entities on US-based IP portfolios."

Clients interviewed by Chambers USA researchers commented, "Todd is sharp, responsive and understands our business and the Chinese business culture. He is deeply experienced in IP and brings a real wealth of knowledge." Another client stated, "Todd stands out in his ability to provide practical advice from a multinational IP perspective because of his strong, unique background in patent litigation and international patent prosecution. He helps make complex processes simple."

Todd started at Calfee as an Associate in 1995 and went on to be a partner at a patent boutique for over a decade before returning 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.

Honors & Recognitions

• Chambers USA, Intellectual Property, Band 2, Ohio (2016-2024)

Education

J.D., The University of Dayton School of Law, Managing Editor, University of Dayton Law Review, 1995

B.S.E., Biomedical Engineering, University of Iowa, 1992

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.

Professional & Community

• 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

Client Feedback

• "Todd does a great job." – Chambers USA 2023
• "Todd is sharp, responsive and understands our business and the Chinese business culture. He is deeply experienced in IP and brings a real wealth of knowledge." – Chambers USA 2022
• "Todd is well respected for his significant experience handling a broad range of commercial and contentious IP matters. He is also noted for his expertise in advising international clients on conducting business in the U.S.” – Chambers USA 2019