On May 30, 2017, Ed succeeded in persuading the United States Supreme Court to reverse two long standing decisions of the Court of Appeals for the Federal Circuit.
Those cases were Jazz Photo Corp. v. International Trade Commission, 264 F.3d 1094 (Fed. Cir. 2001) and Mallinckrodt, Inc.v. Medipart, Inc., 976 F.2d 700 (Fed. Cir.1992). Ed’s case was Lexmark International, Inc. v. Impression Products, Inc., 137 S. Ct. 1523 (2017). This victory capped off Ed’s ten year crusade to overturn those two Federal Circuit decisions which Ed considered to be poison to remanufacturing industries worldwide, as well as terribly harmful to the environment. Ed is understandably proud of his accomplishment.
Ed previously represented Impression Products in this case in the en banc hearing before the Court of Appeals for the Federal Circuit. On September 7, 2015 the New York Times editorial board endorsed Ed’s position.
As a direct result of this victory, Ed was awarded the prestigious Media Global Legal Defense Award, “Presented to an individual who provides a legal breakthrough or defense that advances the legitimacy of the aftermarket imaging supplies industry.” This award was presented in Zhuhai, China by the Recycling Times Media Corporation, an international organization for the worldwide advancement of recycling and refurbishing, particularly in the printing industry.
This was Ed’s second time for receiving this award. He is the only lawyer to have received this award more than once.
This was Ed's second case before the United States Supreme Court. His first case was Illinois Tool Works v. Independent Ink, 126 S. Ct. 1281 (2006). O’Connor and his co-counsel Kathleen Sullivan, the former dean of Stanford Law School, represented Independent Ink, before the United States Supreme Court, in its antitrust case against Trident & Illinois Tool Works. The District Court had previously granted summary judgment to Defendants. The case was appealed to the United States Court of Appeals for the Federal Circuit (CAFC) by Ed. The CAFC reversed in favor of Independent Ink. Independent Ink v. Illinois Tool Works, (ITW) 396 F.3d 1342 (Fed. Cir. 2006). ITW obtained cert. from the Supreme Court. The Bush administration then joined with ITW in attempting to overthrow the doctrine of market power tying. While the Supreme Court reversed the doctrine of presumed market power in a patented product, in tying cases, it agreed with O’Connor that the presumption of market power over a tied product should remain intact if there is market power in the tying product. It rejected the Bush administration’s position regarding the elimination of market power tying.
Ed presently serves as chair of Avyno’s litigation department. His expansive career includes serving as a Public Defender in Palm Beach County, Florida; serving with Air Force J.A.G., where he wrote patent applications in computer technology, space exploration and advanced weapons systems (he held the civilian equivalent rank of a major); serving as “Senior Intellectual Property and Litigation Attorney” with Intel where he was responsible for managing Intel’s litigation; and serving as patent and antitrust jury and appellate lawyer for Poms, Smith, Lande & Rose, at the time one of the oldest patent law firms in Los Angeles, California.
Prior to receiving his law degree from Indiana University Law School, Bloomington, he received his Bachelor of Science degree in physics with a calculus minor from the University of Michigan, Ann Arbor. His senior research project was the development of a radial density distribution formula for pi-meson particle showers resulting from proton-proton collisions in the lower stratosphere. In law school he was on the National Moot Court Team and he was elected by his classmates to be the first chairman of the Student Faculty Committee on Teaching.
Ed is an internationally recognized expert on intellectual property law, with a lecture circuit that includes New York, Los Angeles, Zurich, Dusseldorf, Rome, Prague, Shanghai, Zhuhai, Singapore, Jakarta, Barcelona and Mexico.
Ed has completed over 30 years with a Martindale-Hubbell AV Preeminent rating. He also received a Martindale Hubbell AV rating from the judiciary. This means he has received the top rating for ability and integrity from both his fellow lawyers as well as from the many judges before whom he has appeared.
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.
In 2017, Ed was inducted into the Lawyers of Distinction, an organization whose membership is limited to the top 10% of lawyers nationwide.
In addition to representing clients in the United States Supreme Court, Ed has represented clients before the International Trade Commission and has won patent infringement, antitrust, and other intellectual property cases throughout the United States. He has won cases before the United States Courts of Appeal for the Federal Circuit, the Second Circuit, the Fourth Circuit, the Fifth Circuit, the Seventh Circuit, the Ninth Circuit, and the Eleventh Circuit. He has also served as lead attorney in complex cases before the Panel on Multidistrict Litigation.
Among the many clients he has represented in litigation are Kawasaki (antitrust, defense); Nike (patent, defense); Thermos (trade dress, defense); Bed Bath & Beyond (patent defense).
Ed is an internationally recognized expert on intellectual property law, with a lecture circuit that includes 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.
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 maintains a multitude of professional designations and affiliations. He 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, for the American Bar Association; A Fellow of the Litigation Counsel of America; and has served on the Intellectual Property Advisory Board for Indiana University School of Law (Bloomington). He was a Practitioner in Residence guest lecturer at Indiana University School of Law. He was also a supervisor of the Student Extern Program at Yale University Law School.
Ed's experience is not limited to intellectual property law and antitrust litigation. He was an assistant public defender in Palm Beach County. In fact, the first jury trial that Ed ever tried was providing the defense in an armed robbery case. He recently sued the United States Secretary of State in an immigration case. The case was filed in the Federal District Court in Washington DC. Within a few months after filing the case, the US attorney conceded the merits and the plaintiff was allowed into the United States and granted a visa. He also sued the Commissioner of Immigration in the Federal District Court in Miami, Florida. Within weeks of that filing, the Govt. changed its position and granted Ed's client citizenship, which had previously been denied.
While a partner in his firm in Palm Beach, Florida, Ed practiced law in a multitude of areas. These included criminal law; real estate law; wills and estates; personal injury; workman's compensation; mechanics liens; eminent domain; family law; product liability; medical malpractice; dental malpractice; chiropractor malpractice; corporate law; contracts. In his real estate practice, he handled numerous multimillion-dollar closings and represented not only individual purchasers and sellers of real estate, but also real estate developers. He provided all of the legal work for a shopping center (his own) as well as for condominium developments. He was a member of Lawyers Title Guarantee fund, upon which he wrote numerous real estate insurance policies.
Ed is fluent in written and spoken Spanish as a result of living in Mexico City, for a number of years.
Martindale Hubbell Rating: AV
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The American Bar Association commented: "Fans of the irreverent Edward F. O'Connor will rejoice in the forthcoming new edition of his book, Intellectual Property Law and Litigation. O'Connor discusses the principles of IP law in the context 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 understand and remember. The book is written for intellectual property practitioners, including prosecutors and litigators, as well as in-house corporate counsel and people in business who may not actually practice intellectual property litigation but who employ intellectual property litigators.
In short, anyone who needs to be conversant with the fundamental principles and language of intellectual property law will benefit from—and enjoy—this book."
Ed's books are carried in many of the country’s top law school libraries, including Yale, Cornell, University of Virginia, Indiana University Bloomington, University of Chicago, and many more, as well as in state and county law libraries across the country.
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