Christopher J. McKenna

Partner

Overview

Christopher McKenna is a partner and intellectual property lawyer with Foley & Lardner LLP. He practices in the areas of intellectual property protection, litigation, and due diligence. Mr. McKenna is co-chair of the firm’s Electronics Practice and the Technology Industry Team.

Mr. McKenna’s intellectual property protection experience involves all aspects of patent protection and strategic counseling, including establishing patent positions for startups, patent portfolio development for emerging technology companies, and world wide patent portfolio management for larger companies; accelerated patent examination; counseling on third-party patent related matters, including noninfringement and competitive patent landscape analysis; and strategic counseling on the development and integration of patent portfolios obtained via merger and acquisition.

His experience with IP litigation includes complex patent infringement cases within high technology industries, trade secret misappropriation cases involving complex software and technology; and pre-litigation patent related counseling, including patent analysis, non-infringement and infringement opinions.

Mr. McKenna also provides IP due diligence for merger and acquisition transactions; patent portfolio diligence and strategic counseling during the venture capital investment process; and review and counseling of intellectual property licensing, assignment and purchase agreements.

Prior to his legal career, Mr. McKenna held technical and executive roles in a variety of software, system integration and information technology companies. He was previously the chief operations officer and managed the legal affairs of a start-up solution integrator of manufacturing software systems to semiconductor, electronic and medical device manufacturers. He also previously worked as the director of professional services for a software company delivering operational performance solutions to global manufacturers. Using a strategy first approach to client engagements, Mr. McKenna provides practical, client tailored advice leveraging his previous experience spanning technology, business and law.

Representative Engagements*

Intellectual Property Protection

  • Drafted and prosecuted U.S. and foreign patent applications for software, information technology, networking, application delivery and security related technologies as well as Internet based and Web 2.0 platforms
  • Developed strategy and patent portfolio of leading designer, manufacturer and systems developer of "green" advanced LED lighting solutions
  • Advised and developed patent portfolio of leading provider of interactive broadband video-on-demand for IP TV based solutions
  • Developed strategy and patent positions for various Internet based platforms, including technical support delivery and social networking sites
  • Designed and implemented strategies for managing and integrating patent portfolios of several acquired companies of Fortune 500 manufacturer of networking appliances
  • Counseled and developed defensible patent positions and content, filing and budget strategies for various start-up companies
  • Counseled and performed freedom to operate analysis of web enabled industrial control products of leading international process control company
  • U.S. counsel for Asian manufacturers of LCD and GPS based tracking solution

Intellectual Property Litigation

  • Defense counsel in a patent infringement litigation involving digital imaging. Polaroid Corporation v. Hewlett-Packard Company, D. Del.
  • Court designated technical counsel in trade secret misappropriation case involving advanced speech recognition technologies. Nuance, Inc. v. Voice Signal Technologies, Inc., D. Mass.
  • Counsel in patent litigation involving speech recognition and mobile communications technology. Nuance, Inc. v. Voice Signal Technologies, Inc., D. Mass

IP Due Diligence

  • Performed intellectual property due diligence for follow up public offering of leading vendor of WiMAX and Wi-Fi solutions
  • Counseled and performed patent portfolio impact analysis related to major partnership and technology development agreement with cooperative and competitive industry leader
  • Counseled on intellectual property related terms for a variety of purchase and sales agreements and asset purchase agreements

*To reflect the breadth of experience, the foregoing lists of representative engagements include representations by Mr. McKenna prior to joining Foley.

Recognition

Mr. McKenna was selected for inclusion in the 2009 - 2011 Massachusetts Super Lawyers – Rising Stars® lists. In 2011-2014, The Legal 500 recognized him for his work in patent licensing and transactional, and patent prosecution.

Education

Mr. McKenna earned his law degree, cum laude, from Suffolk University Law School (J.D. 1997). His undergraduate degree was conferred, magna cum laude, from the University of Lowell (B.S.E.E., 1989).

Admissions and Professional Memberships

Mr. McKenna is admitted to practice in Massachusetts and before the U.S. Patent & Trademark Office. He is a member of the Boston and Massachusetts Bar Associations. He also is a member of the American Intellectual Property Law Association.

Community Engagement

Mr. McKenna participates as a member in a variety of community based groups, such as the Museum of Science and New England Aquarium, as well as being actively involved in youth sports in Lexington, Massachusetts.

Presentations

Mr. McKenna was a guest speaker on protecting and leveraging intellectual property for a class on cross-border transactions at Harvard Extension School (Summer 2006).

Representative Matters

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Counseled online service start-up company which provides innovative personalized and rewards-based content to online users on IP protection. Analyzed the technical landscape for the client and prepared a strategic platform patent application for broad-based IP protection.
Acted as patent strategy counselors for Vibrant Media Inc., a developer of in-text advertising platforms. Foley also worked with Vibrant Media on patent portfolio development and licensing as well as pre-litigation counseling.
Developed and prosecuted worldwide patent portfolio for Citrix Networking Division —Enterprise and Cloud Networking Solutions, which is directed to networking appliances.

Capabilities

Insights