The Supreme Court
On May 30, 2017, Ed made U.S. Supreme Court history. He was counsel on the merits briefs in the first case in which the United States Supreme Court, in a single case, overturned two separate long-standing decisions of any appellate court —two distinct questions, decided by two different majorities. No other case hasbeen found in which the Court has done so.
(Sources: Impression Products, Inc. v. LexmarkInternational, Inc., 581 U.S. 360 (2017); Lexmark International, Inc. v. Impression Products, Inc., 816 F.3d721 (Fed. Cir. 2016) (en banc); Ropes & Gray, Supreme Court Holds That Patent Exhaustion Applies to All Sales,Domestic and International (June 1, 2017) (“The Supreme Court overruledboth lines of Federal Circuit precedent”); Perkins Coie, First Impressions: New Strategies in the New Era of Patent Exhaustion(“Mallinckrodt and Jazz Photo are no longer good law”);McDonnell Boehnen Hulbert & Berghoff, PatentExhaustion: Supreme Court Expands Patent-Limiting Doctrine (the“now-overruled” Mallinckrodt and “nowalso overruled” Jazz Photo); Taft Stettinius & Hollister (8-0 on domestic exhaustion, 7-1 on international,Justice Gorsuch not participating).)
The case was Impression Products, Inc. v. Lexmark International, Inc., 581 U.S. 360(2017). The decisions overturned were Mallinckrodt, Inc. v. Medipart, Inc.,976 F.2d 700 (Fed. Cir. 1992), and Jazz Photo Corp. v. International TradeCommission, 264 F.3d 1094 (Fed. Cir. 2001).
Ed represented Impression Products at every stage — the district court, the Federal Circuit panel, the Federal Circuit sitting en banc, where he argued the case, and the Supreme Court. In February 2016 the en banc Federal Circuit reaffirmed both precedents by a vote of 10-2. Fifteen months later the SupremeCourt reversed on both questions: 8-0 on domestic exhaustion and 7-1 on salesabroad, Justice Gorsuch taking no part.This victory capped Ed's ten-year crusade to overturn two Federal Circuit decisions heconsidered poison to remanufacturing industries worldwide and terribly harmful to the environment. On September 7, 2015, the editorial board of the NewYork Times endorsed his position.As a direct result, Ed received the Media Global Legal Defense Award — "presented toan individual who provides a legal breakthrough or defense that advances the legitimacy of the aftermarket imaging supplies industry" — presented in Zhuhai, China by Recycling Times Media Corporation. It was his second time receiving the award; he is the only lawyer to have received it more than once.
Ed's first Supreme Court case was Illinois Tool Works Inc. v. Independent Ink,Inc., 547 U.S. 28 (2006). With co-counsel Kathleen Sullivan, formerdean of Stanford Law School, he represented Independent Ink in its antitrustcase against Trident and Illinois Tool Works.
The district court granted summary judgment to the defendants. Ed took the appeal, and theFederal Circuit reversed in Independent Ink's favor. Independent Ink v.Illinois Tool Works, 396 F.3d 1342 (Fed. Cir. 2005). Illinois Tool Worksobtained certiorari, and the Solicitor General joined it in urging the Court todismantle market power tying doctrine altogether.
The Court declined. While it held that a patent does not by itself establish market powerin the tying product — the plaintiff must prove it — it rejected thegovernment's broader position and left tying doctrine intact. The case wasreturned to the district court for further proceedings.
Background
Prior to law school, Ed earned a degree in physics with a calculus minor from the University of Michigan, Ann Arbor. His senior research project developed a radial density distribution formula for pi-meson particle showers resulting from proton-proton collisions in the lower stratosphere. That combination of disciplines led him to become a federally registered patent lawyer.
He received his law degree from Indiana University, Bloomington, where he served on the National Moot Court Team and was elected by his classmates as the first chairman of the Student Faculty Committee on Teaching.
Ed presently serves as chair of Avyno's litigation department. His career includes service as a Public Defender in Palm Beach County, Florida; with the Air Force Judge Advocate General's Corps, where he wrote patent applications in computer technology, space exploration, and advanced weapons systems at the civilian equivalent rank of major; as Senior Intellectual Property and Litigation Attorney with Intel, responsible for managing Intel's litigation; and as patent and antitrust jury and appellate lawyer with Poms, Smith, Lande & Rose, then one of the oldest patent law firms in Los Angeles.
Recognition
Ed is a Martindale-Hubbell AV Preeminent rated attorney, a rating awarded to 10% of the nation's lawyers, and has held it for over 30 years. He also holds a Martindale-Hubbell AV rating from the judiciary — the top rating for ability and integrity from both his fellow lawyers and the judges before whom he has appeared.
In 2024 he received the "Superb Attorney" rating from Martindale-AVVO and was recognized by the American Registry as among the top 1% most honored lawyers in America. In 2017 he was inducted into Lawyers of Distinction, whose membership is limited to the top 10% of lawyers nationwide.He is listed in the Los Angeles Times as one of the leading lawyers in Southern California, and was listed in the San Diego Register as the only leading lawyer in both patent prosecution and intellectual property litigation.
He was designated by the American Bar Association, Intellectual Property Law Section, Special Committee on Litigation Planning and Budgeting, as an attorney "having significant patent litigation experience as identified by the managing partners of the approximately one hundred largest intellectual property law firms."
Ed is listed in Martindale-Hubbell's Bar Register of Preeminent Lawyers. He is a member of the Multi-Million Dollar Advocates Forum, as a result of having obtained multi-million-dollar jury verdicts; Chairman Emeritus of the Intellectual Property Committee, Torts and Insurance Practice Section, American Bar Association; and a Fellow of the Litigation Counsel of America. He has served on the Intellectual Property Advisory Board for Indiana University School of Law (Bloomington), was a Practitioner in Residence guest lecturer there, and supervised the Student Extern Program at Yale Law School.
Trial and Appellate Practice
In addition to representing clients in the United States Supreme Court, Ed has appeared before the International Trade Commission and has won patent infringement, antitrust, and other intellectual property cases throughout the United States. He has won cases in the United States Courts of Appeals for the Federal, Second, Fourth, Fifth, Seventh, Ninth, and Eleventh Circuits, and has served as lead attorney in complex cases before the Judicial Panel on Multidistrict Litigation.
Clients he has represented in litigation include Kawasaki (antitrust, defense), Nike (patent, defense), Thermos (trade dress, defense), and Bed Bath & Beyond (patent, defense).
Ed is an internationally recognized expert on intellectual property law, with a lecture circuit that has included New York, Los Angeles, Zurich, Dusseldorf, Rome, Prague, Shanghai, Zhuhai, Singapore, Jakarta, Barcelona, and Mexico. He is frequently used as a resource by the intellectual property bar and has authored three books on intellectual property law and litigation published by the American Bar Association.
Beyond Intellectual Property
Ed's practice has never been limited to intellectual property and antitrust. He began as an assistant public defender in Palm Beach County — the first jury trial he ever tried was defending an armed robbery case.
He continues to try cases. In December 2024 he obtained a jury verdict in a defamation case tried in San Diego, with judgment entered in excess of one million dollars; his client had been terminated from a teaching position by a letter of discharge containing false and defamatory statements, and Ed relied on the seldom-used doctrine of compulsory self-publication. He is trying a multi-million-dollar medical malpractice case in January 2027.
He also maintains a pro bono practice in immigration appeals and habeas corpus. He sued the United States Secretary of State in an immigration case filed in the federal district court in Washington, D.C.; within a few months the U.S. Attorney conceded the merits and the plaintiff was admitted to the United States and granted a visa. He sued the Commissioner of Immigration in the federal district court in Miami; within weeks the government reversed its position and granted his client citizenship, which had previously been denied. Recently he has won a number of habeas corpus cases on behalf of incarcerated immigrants.
As a partner in his firm in Palm Beach, Florida, Ed practiced in criminal law, real estate, wills and estates, personal injury, workers' compensation, mechanics liens, eminent domain, family law, product liability, medical and dental malpractice, corporate law, and contracts. In his real estate practice he handled numerous multimillion-dollar closings, representing individual buyers and sellers as well as developers, and provided all legal work for a shopping center and for condominium developments. He was a member of the Lawyers Title Guarantee Fund, for which he wrote numerous title insurance policies.Ed is fluent in written and spoken Spanish, having lived in Mexico City for a number of years.
Martindale Hubbell Rating: AV
Education:
Bar Admissions:
Designations:
Selected Cases
ImpressionProducts, Inc. v. Lexmark International, Inc., 581 U.S. 360(2017). Represented Impression Products from the district court through theFederal Circuit panel, the Federal Circuit en banc, and the Supreme Court. Theen banc Federal Circuit reaffirmed Mallinckrodt and Jazz Photo10-2; the Supreme Court reversed on both questions, 8-0 and 7-1, overturningboth Federal Circuit decisions.
Opposing Counsel: Latham & Watkins.
Illinois Tool Works Inc. v. Independent Ink, Inc., 547 U.S. 28 (2006). RepresentedIndependent Ink before the United States Supreme Court in its antitrust caseagainst Trident and Illinois Tool Works. The district court had granted summaryjudgment to defendants. On appeal, the Federal Circuit reversed in favor ofIndependent Ink. Independent Ink v. Illinois Tool Works, 396 F.3d 1342(Fed. Cir. 2005). The Supreme Court held that a patent does not by itselfestablish market power in a tying case, but rejected the Solicitor General'sbroader position urging the elimination of market power tying doctrine, andremanded for further proceedings.
Opposing Counsel: Sonnenschein Nath & Rosenthal; Mayer Brown; U.S. SolicitorGeneral.
Systems Division, Inc. v. Teknek, 2003 U.S. App. LEXIS 3288 (Fed. Cir. 2003).Obtained reversal of summary judgment against plaintiffs. Obtained $3 millionjury verdict at trial after remand.OpposingCounsel: Mitchell Silberberg & Knupp.ScholleCorp. v. Packaging Systems, 2001 U.S. App. LEXIS 11772 (Fed. Cir.2001). Obtained reversal of summary judgment against plaintiff.
Opposing Counsel: Hanson Bridgett Marcus Vlahos & Rudy.
Worldwide Home Products, Inc. v. Bed Bath & Beyond Inc., No. 1:11-cv-03633(LTS)(MHD) (S.D.N.Y.). Obtained summary judgment in favor of defendants and a judgment against plaintiff and its attorney for attorney fees of over $800,000.
Automotive Products plc v. Tilton Engineering, Inc., 855 F. Supp. 1101 (C.D. Cal. 1994). Lead counsel in a complex patent infringement and antitrust case resulting in a $24,000,000 judgment for the client, including over $3,000,000 in attorneys' fees. The court stated at 1114: "Patent and antitrust laws are not new ornovel, but often involve factually difficult issues. Such was the case here. Inthe patent phase of the case, for example, Tilton had to analyze the myriad ofpatent defenses raised by AP, including obviousness, best mode, indefiniteness,public use, inequitable conduct, and noninfringement. . . . Tilton's counseldemonstrated to this Court time and again that they had the requisite skill andability to handle this complex lawsuit. Their written work product andperformance before this Court have been uniformly good."
Opposing Counsel: Pepper Hamilton & Scheetz (Philadelphia); Lyon & Lyon; CrosbyHeafey Roach & May; Finnegan, Henderson, Farabow, Garrett & Dunner.
Hewlett-Packard Co. v. Repeat-O-Type Stencil Mfg. Corp., 123 F.3d 1445 (Fed. Cir. 1997).Obtained summary judgment against Hewlett-Packard of non-infringement based onrepair/reconstruction, and successfully defended it on appeal. One of theleading cases on the repair/reconstruction doctrine.
Opposing Counsel: Irell & Manella LLP; Townsend and Townsend and Crew LLP; Pennie& Edmonds.
Reiffinv. Microsoft Corp., 214 F.3d 1342 (Fed. Cir. 2000). Wrote the appeal briefresulting in reversal of summary judgment previously obtained by Microsoftagainst Reiffin. One of the leading cases in the Gentry Gallery v. BerklineCorp., 134 F.3d 1473 (Fed. Cir. 1998) line of cases.
St.Charles Mfg. Co. v. Mercer, 719 F.2d 380 (11th Cir. 1983). Obtainedsummary judgment against St. Charles and successfully defended it on appeal.One of the leading cases on trademark infringement damages.
OpposingCounsel: Wallenstein, Wagner, Hattis, Strampel & Aubel.
The Beachcombers International, Inc. v. WildeWood Creative Products, Inc., 31 F.3d 1154 (Fed.Cir. 1994). Obtained a jury verdict of invalidity on behalf of WildeWood andsuccessfully defended it on appeal. One of the leading cases on the on-salebar, establishing that sales by a person other than the patentee, and unknownto the patentee, nonetheless constitute a statutory bar if made more than a year before the application was filed.
OpposingCounsel: William Brinks Olds Hofer Gilson & Lione; Stevens & O'Connell. [VERIFY — theoriginal ran two firm names together]
Abeshousev. Ultragraphics,754 F.2d 467 (2d Cir. 1985). Obtained a jury verdict for plaintiff in acopyright infringement suit involving the Rubik's Cube. Remanded on appeal forreduction of the verdict, which the Second Circuit found excessive.
OpposingCounsel: Moller, Horton & Fineberg.
Caddock Electronics v. Siemens Components (E.D. Va.) (patentinfringement; antitrust).
OpposingCounsel: Howrey Simon Arnold & White LLP; Heller Ehrman LLP.
PyMaHCorp. v. Propper Mfg. Co. (C.D. Cal.) (patent infringement).OpposingCounsel: Lyon & Lyon.WynnOil Co. v. Prestone Products (C.D. Cal.).
Opposing Counsel: Kirkland & Ellis.
Schollev. Blackhawk Molding (C.D. Cal.) (patent infringement).
Opposing Counsel: Baker & McKenzie.
Schollev. Cap Snap Co.(N.D. Cal.) (patent infringement).
Opposing Counsel: Brobeck, Phleger & Harrison LLP.
OakleyInc. v. Nike Inc.(C.D. Cal.) (patent infringement).
Opposing Counsel: Knobbe Martens Olson & Bear LLP.
PacificMarket Inc. v. Thermos LLC (W.D. Wash.) (trademark infringement).
Opposing Counsel: Dorsey & Whitney.
MassEngineered Design v. Global Marketing Partners (E.D. Tex.) (patentinfringement).
Opposing Counsel: Foley & Lardner (Chicago).
ClaytonJacobson v. Kawasaki Heavy Industries Ltd. (C.D. Cal.)(antitrust).
Opposing Counsel: Steven Markl Law Offices.
Progressive Games, Inc. v. Bally's Grand, Inc., No. CV 1209-NV-2-95-208, and related casesin California, Nevada, Mississippi, and New Jersey, and before the JudicialPanel on Multidistrict Litigation. Defended Shuffle Master, Inc. and most ofthe major U.S. casinos, including MGM Grand Hotel, Las Vegas Hilton, andBally's Grand. Prevented issuance of a preliminary injunction in Mississippiand secured dissolution of a preliminary injunction in New Jersey.
Opposing Counsel: Reilly & Purcell P.C.
Published Works
A Primeron Intellectual Property Law and Litigation, American Bar Association.
IntellectualProperty Law and Litigation, 2d ed., American Bar Association.
IntellectualProperty Law and Litigation: Practical and Irreverent Insights.
The AmericanBar Association commented: "Fans of the irreverent Edward F. O'Connor willrejoice in the forthcoming new edition of his book, Intellectual PropertyLaw and Litigation. O'Connor discusses the principles of IP law in thecontext of cases that he has actually tried or in which he has been involved,providing a real-world framework to make the principles easier to understandand remember. . . . In short, anyone who needs to be conversant with thefundamental principles and language of intellectual property law will benefitfrom—and enjoy—this book."
Ed's books are carried in many of the country's top law school libraries, including Yale,Cornell, the University of Virginia, Indiana University Bloomington, and theUniversity of Chicago, as well as in state and county law libraries across the country.
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