New York
310.826.7474
EDUCATION
Fordham University School of Law, 2013, cum laude & Law Review
University of Rochester, M.S., 2004, Optics
University of Rochester, B.S., 2003, Optics
Stephen O’Donohue is a partner at Russ August & Kabat, where he represents clients in complex intellectual property litigation. Stephen has significant trial experience including serving as both plaintiff and defense counsel in federal courts throughout the country, the Patent Trial and Appeal Board (PTAB), and in the International Trade Commission. His recent victories involved a wide range of technologies, including semiconductor design and manufacturing, speech recognition and natural language understanding software, connected fitness equipment, chip fabrication and design, smart home and electric grid monitoring, high-speed data transfer cables, LASIK refractive surgery equipment, electronic cigarettes, and LED design and illumination.
Prior to joining Russ August & Kabat, Stephen was an attorney at Baker Botts LLP and Latham & Watkins LLP with experience representing technology innovators in intellectual property disputes and pro bono clients in matters related to special education and family law.
- iFIT v. Peloton (D. Del., ITC): Represented Peloton in numerous competitor patent cases related to home exercise equipment and streaming media content.
- STA v. Motorola (E.D. Tex.): Defended Motorola in four patent competitor case in district court involving mobile land radio network technology and asserted trade secret misappropriation counterclaims. Instituted IPRs for all asserted patents and obtained stay after claim construction, and counterclaims ordered to move forward. Obtained walk away settlement.
- Nuance Communications v. M*Modal (D. Del., N.D. Ga.): Represented M*Modal in multijurisdictional patent cases related to speech recognition and natural language understanding technology. Asserted novel Walker Process antitrust counterclaims and successfully precluded plaintiff’s reasonable royalty damages opinions. Received favorable settlement before trial.
- CCC Intelligent Solutions v. Tractable (N.D. Ill.): Represented CCC Intelligent Solutions in a trade secret misappropriation case involving automobile collision repair software. Successfully defeated defendant’s motion to compel arbitration, which was affirmed on appeal.
- Xperi v. Samsung (E.D. Tex., D. Del., ITC): Represented Xperi in patent cases related to semiconductor packaging and finFET design. Favorable settlement resulted in a 40% increase in client’s stock price.
- Intellectual Ventures v. Honda (ITC): Represented Honda in multi-patent infringement case relating to motor technology. Secured voluntary dismissal of multiple patents prior to successful evidentiary hearing where the Commission determined no violation occurred, allowing client to continue importing products.
- LET v. Latch (S.D.N.Y.): Represented Latch in dispute involving trade secret misappropriation, breach of contract, and civil RICO claims. Complete verdict on contract claims adjudicated in arbitration. Walk-away settlement after dismissal of state actions and winning discovery motion related to underlying criminal RICO case.
In addition to Stephen’s trial and litigation practice, he also advises companies in protecting and developing their intellectual property, including through portfolio management and advising in various strategic transactions in the United States and internationally.
Stephen is a member of the New York State bar and is admitted to practice in the United States District Courts for the Southern District of New York and Eastern District of New York.