Kassim M. Ferris

Representative Experience

• Patent Procurement and IP Portfolio Management Plus

  • Successfully prosecuted patents on a scramjet engine with variable fuel injection for hypersonic thrust over a large mach number range, for use in next-generation space launch vehicles.*

  • Successfully prosecuted patents on a phonetic markup system and text encoding method for teaching reading skills, overcoming difficult examiner’s rejections on subject matter eligibility grounds under 35 U.S.C. § 101.*

  • Served as primary outside IP counsel to a global manufacturing company with over $4 billion in annual revenue, including managing its portfolio of nearly 1000 active patent and trademark matters, patent preparation and prosecution, design protection strategy, IP licensing, patent dispute resolution, IP aspects of corporate acquisitions, and patent clearance for new products.*

  • Represented a private company in a multimillion-dollar acquisition of well-known brand assets and patents from a public company.*

  • Represented a public company in a $3.5 million divestiture of certain patent assets and associated technology to a multinational public company.*

  • Represented electronic display technology company, Planar Systems, Inc., in connection with its divestiture of the CoolSign digital signage business, in two separate transactions: the sale of a joint interest and exclusive IP rights in the field of gaming to a leading gaming and entertainment technology company, and the subsequent sale of the remaining joint interest and exclusive IP license rights outside the field of gaming to a second buyer in the digital signage and advertising software business.*

• Intellectual Property Dispute Resolution Plus

  • Represented a sports optics manufacturer in complex patent enforcement litigation against a competitor through summary judgment on eight patents covering five distinct technologies. The litigation was ultimately resolved on mutually agreeable terms via a license agreement.*

  • Advised an educational software company on legal and business issues arising from gaps in a complex chain of title to patent and copyright assets, and successfully leveraged strategic legal action to secure title ownership.
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  • Represented one of the world’s largest door and window manufacturers in a contentious renegotiation of a long-term patent license from a provider of equipment and technology for making insulated glazing units, resulting in significant financial savings.*

  • Represented a manufacturer of emergency rescue and medical training equipment, in successful enforcement of a patent on bleeding simulation systems for training field medics, including handling briefing and oral argument on patent claim construction and on a motion for summary judgment, preparing discovery responses, facilitating expert reports, and assisting with briefing on a successful appeal to the U.S. Court of Appeals for the Federal Circuit.*

• National Security and International Trade Compliance Plus

  • Represented a U.S.-based energy development company in two mandatory declarations to CFIUS in connection with its acquisition of four solar power generation projects in Arizona having a combined peak output of 750 MW, in two separate transactions.*

  • Represented HydrantID, a provider of managed public key infrastructure (PKI) and digital certificate authentication services, through CFIUS review in connection with sale of the company to HID Global, a subsidiary of Swedish lock and security company ASSA ABLOY.*

  • Represented a global engineering consulting firm in an investigation by the Department of State, Directorate of Defense Trade Controls (DDTC), Office of Defense Trade Controls Compliance (DTCC), regarding compliance with the International Traffic in Arms Regulations (ITAR) under the Arms Export Control Act (AECA).*

  • Represented a semiconductor process technology company in five simultaneous mandatory declarations to CFIUS in connection with a Series C round of investment by investors from Korea, Japan, France, and Taiwan.
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  • Represented an Idaho cobalt mine owner, US Cobalt Inc., through CFIUS review in connection with its sale to Canadian company First Cobalt Corp.*

  • Represented a Chinese-owned company in connection with its acquisition of a U.S. designer of optical motion capture camera systems and software, including on intellectual property diligence, export classification, and a joint voluntary notice to CFIUS.*

• Government Contracting Plus

  • Represented SunPower Corporation in drafting and negotiating subcontracts under a $6.65 million grant from the U.S. Department of Energy for collaborative research and development of a solar and storage-powered microgrid community, including preparing three subaward agreements, a multi-party intellectual property management plan, and a cybersecurity and data protection agreement.*

  • Represented a provider of data center facilities and services on compliance with federal government contracting requirements under Section 889 of the John S. McCain National Defense Authorization Act (NDAA).*

* Denotes experience prior to joining Miller Nash LLP