Gary D. Fedorochko
Gary Fedorochko has a broad base of experience in intellectual property including involvement in all phases of the preparation and prosecution of patent applications including reissue and re-exams before the U.S. Patent and Trademark Office, participating in patent infringement litigation in U.S. District Courts, preparing requests for inter partes review in the U.S. Patent and Trademark Office and advising clients on intellectual property issues such as licensing and AIA related matters.
Mr. Fedorochko prepares and prosecutes patent applications encompassing a vast array of industries and technological areas including computer software, e-commerce and Internet related technology, telecommunications, satellite communications, semiconductors, computer hardware, and electromechanical devices.
Mr. Fedorochko renders advice to clients on a multitude of issues including assessing validity, infringement, and patentability, formulating and evaluating positions for post grant proceedings, conducting due diligence investigations and formulating right-to-use opinions. Examples of activities include:
- Successfully argued before the Patent Board of Patent Appeals and Interferences on issues of patentability in semiconductor cases.
- Providing intellectual property due diligence assistance for business acquisitions.
- Participating as a pivotal member of a litigation team in an infringement suit involving more than ten patents — included analyzing and drafting pleadings; preparing and responding to document requests and interrogatories; managing document review and production; interfacing with client decision-makers, engineers, and opposing and local counsel; participating in pretrial conferences; and rendering advice regarding validity, infringement, and general litigation strategy.
- Analyzing the product line of a major international corporation and preparing a non-infringement opinion with respect to a patent asserted by an aggressive patentee.
- Preparing patent applications for Fortune 100 companies as well as for individuals seeking to commercialize their inventions in the computer software, telecommunications, Internet and e-commerce fields among others.
- Analyzing patents and advising clients in the fields of pen computing, multi-function devices, e-commerce, interactive programming guides and television.
- Assess invalidity positions and assist in preparation of petitions for inter partes review for patents related to interactive communication systems.
- Advise e-commerce company in connection with licensing patent applications, which resulted in successful sale of assets.
Mr. Fedorochko received his Bachelor of Science degree in Computer and Systems Engineering from Rensselaer Polytechnic Institute, and his Juris Doctor from The George Washington University School of Law. During his final semester of law school, he served as an intern for the Honorable Helen W. Nies of the United States Court of Appeals for the Federal Circuit.
Mr. Fedorochko was elected to Banner & Witcoff’s Board of Directors in 2009, and served as President of the firm from 2013-2015.
Mr. Fedorochko serves as President-Elect and Chair-Elect of the Licensing Executives Society (LES) for 2018-2019. He previously served as Senior Vice President, Meetings, Education & Strategic Alliances; Trustee of Education, Webinars; Trustee at Large; and Trustee For Sponsorship for LES. He also served as Co-Chair of the 2012 LES Annual Meeting; Chair of the LES High Technology Sector Standards Committee; and Chair of the LES CEO Search Committee. He continues to be an active member of the Seasonal and Annual Meeting Planning Committees, and co-authored LES’ amicus brief in Cuozzo Speed Technologies LLC v. Lee at the Supreme Court. Mr. Fedorochko also served as President of the LES Foundation.
Mr. Fedorochko is also an active member of several other professional organizations, including the American Intellectual Property Law Association, the Virginia State Bar Association Intellectual Property Section, and the PTAB Bar Association. Mr. Fedorochko co-authored an article published in IP Law360 directed to the proposed new patent office rules entitled “New USPTO Definition: A Potential Minefield.”
Mr. Fedorochko is admitted to practice in both the District of Columbia and the Commonwealth of Virginia and before the U.S. Patent and Trademark Office. He also has been admitted to practice before the U.S. Court of Appeals for the Federal Circuit, the U.S. Court of Appeals for the Fourth Circuit and the U.S. District Court for the Eastern District of Virginia.
Mr. Fedorochko resides in the Washington, DC office of Banner & Witcoff, Ltd.
1100 13th Street, NW
Washington, DC 20005-4051
B.S. 1987, Rensselaer Polytechnic Institute
J.D. 1990, George Washington University
1996, District of Columbia
U.S. Circuit Court of Appeals for the Federal Circuit
U.S. Court of Appeals for the Fourth Circuit
U.S. District Court for the Eastern District of Virginia
U.S. Patent and Trademark Office