Kassim M. Ferris

Partner

Portland, OR

P: 503.294.9670

Overview
Experience
Honors & Activities
Insights & Presentations

Overview

About Kassim

Kassim Ferris is a partner of the firm concentrating his practice on intellectual property and international trade regulation matters. Kassim’s intellectual property practice includes domestic and international patent procurement, strategic patent portfolio management, patent opinions, technology licensing, technology development and collaboration agreements, patent enforcement, and intellectual property dispute resolution. Kassim also advises clients on national security reviews by the Committee on Foreign Investment in the United States (CFIUS), intellectual property issues in government contracting, and compliance with U.S. export controls, sanctions, and embargoes. Kassim also has substantial experience with trademark registration and enforcement, intellectual property transfers, and intellectual property aspects of corporate mergers and acquisitions.

Kassim is registered to practice before the U.S. Patent and Trademark Office and has experience procuring patents on a wide range of mechanical, electromechanical, optics and computer-related technologies, including notable experience with atomic layer deposition, optical systems, electrical connectors, sporting optics, ballistics, gun safety equipment, image processing, wireless data networks, electronic image display technologies, Internet/business methods, building products, fenestration systems, apparel, and footwear.

Kassim has hands-on engineering experience with the design and development of tooling and manufacturing processes for electrical connectors, including high-speed progressive die stamping, metal heat treating, and plastics molding. He is also versed in materials science, metallurgy, tribology, surface finishing, electroplating, CAD/CAM systems, material handling systems, machine vision, robotics, nanotechnology, semiconductor integrated circuit fabrication, computer software, and database organization.

Kassim currently serves on the firm's Coaching and Mentoring Committee and on the Technical Advisory Group for the firm's information technology infrastructure.

Expand to Read More + See Less -

Experience

Representative Transactions

Representation of 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.
Representation of a publicly traded Canadian company owner of an Idaho cobalt mine before CFIUS in connection with review of its sale to another foreign company.
Representation of a Chinese-owned company in connection with its acquisition of a U.S. electronics company, including in connection with a Joint Voluntary Notice to CFIUS.
Representation of Planar Systems, Inc. in connection with its divestiture of intellectual property assets relating to the CoolSign digital signage business, in two separate transactions: the sale of a joint interest and exclusive 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 license rights outside the field of gaming to a second buyer in the digital signage and advertising software business.
Representation of a privately held company in connection with an Ocean Tomo auction of its patent portfolio in the course of winding down affairs of the company.
Representation of a private company in its $3 million acquisition of well-known brand assets from a public company.
Representation of a public company in a $3.5 million divestiture of certain patent assets and associated technology to a multinational public company.

Representative IP Enforcement Matters

Representation of a client in a contentious renegotiation of a patent license from a global provider of equipment and process technology for making insulated glazing units, resulting in significant long-term financial savings for the client.
Handled Markman claim construction briefing and argument, summary judgment motion and argument, and briefing on a successful appeal to the U.S. Court of Appeals for the Federal Circuit in a patent infringement matter involving bleeding simulation systems for training medics, resulting in a published opinion.
Representation of patent owner client in enforcement and licensing of numerous patents on sporting optics, including patent litigation involving eight patents on five distinct technologies.

Representative Patents and Published Patent Applications

US 9,186,812	Fiber Composite Manufacturing System With Anti-bonding Coatings
US 9,115,958	Dual Field Optical Aiming System for Projectile Weapons
US 8,926,366	PCB-mount Electrical Connector With Shielding for Inhibiting Crosstalk
US 8,637,123	Oxygen Radical Generation for Radical-Enhanced Thin Film Deposition
US 8,544,372	Manual Table Saw and Blade Therefor
US 8,187,679	Radical-Enhanced Atomic Layer Deposition System and Method
US 8,137,464	Atomic Layer Deposition System for Coating Flexible Substrates
US 7,654,029	Ballistic Ranging Methods and Systems for Inclined Shooting
US 7,234,641	Illumination Pulsing Method for a Data Reader
US 7,141,095	Precursor Material Delivery System for Atomic Layer Deposition
US 7,119,566	Test Probe Alignment Apparatus
US 7,090,207	Single-end-mount Seismic Isolator
US 7,059,092	Fire-Resistant Wood Assemblies for Building
US 6,941,963	High-speed Diaphragm Valve for Atomic Layer Deposition
US 2004/0208994	Deposition of Carbon- and Transition Metal-Containing Thin Films
US 6,771,629	In-Band Signaling for Synchronization in a Voice Communications Network
US 6,694,064	Digital Aerial Image Mosaic Method and Apparatus
US 6,631,658	Saw Sharpening Machine with Pitch Measurement Feedback Control for Saw Blade Indexing
US 6,597,809	Rollup Functions for Efficient Storage, Presentation, and Analysis of Data
US 6,392,877	Laptop Computer Display Mounting
US 2002/0119770	Class Switched Networks for Tracking Articles
US 2002/0111889	Network Reverse Auction and Spending Analysis Methods
WO 02/19683	Controller for Receiving Data and Providing Services over a Communication Network
US 6,056,405	Lamp Module with Kinematic Mount
US 6,005,711	Variable Optical Power Telescopic Sight with Side Focus Control

Expand to Read More + See Less -

Honors

Honors & Activities

Professional Honors & Activities

Included in The Best Lawyers in America^® (Patent Law), 2013–2024
Selected as one of “America’s Leading Lawyers for Business” (Oregon) by Chambers USA (Intellectual Property), 2009–2023
AV Preeminent Peer Review Rated with Martindale-Hubbell^®
Listed in the IAM Patent 1000: The World’s Leading Patent Practitioners, 2020–2023
Member, Oregon Patent Law Association
Member, Intellectual Property Owners Association, Patent Search Committee
Member, American Intellectual Property Law Association
Member, Optical Society of America - Columbia Section
Member, Outdoor Industry Association

Civic Activities

Member, Oregon State Bar Diversity Section, Employment & Advancement Subcommittee, 2009
Volunteer, Lewis & Clark Small Business Legal Clinic, 2006–2009
Volunteer, Multnomah County Legal Aid, 1997–2009
Member, Oregon State Bar Affirmative Action Committee, 1997–1999

Expand to Read More + See Less -

Insights & Presentations

Presenter, “What Every Business Lawyer Needs to Know About CFIUS,” OSB Business Law & Int’l Law Sections, April 2023
Presenter, “International Trade Regulation & National Security Overview,” Stoel Rives Business Attorney Training Series, May 2018
Presenter, “CFIUS Update: Foreign Investment Risk Review Modernization Act of 2018 (FIRRMA) and Broadcom/Qualcomm,” Stoel Rives Mergers & Acquisitions Subgroup, March 2018
Presenter, “CFIUS Fundamentals: National Security Review of Foreign Acquisitions of U.S. Businesses under the Exon-Florio Amendment to the Defense Production Act and the Foreign Investment and National Security Act of 2007,” Stoel Rives Energy Initiative Meeting, March 2017
Presenter, “Avoiding Patent Pitfalls: Protecting Your Company's Crown Jewels,” Stoel Rives and Outdoor Industries Association “Outdoor University” Webinar, April 2013
Author, Law of Outdoor Industries, Chapter 4—Patents (2011–2012)
Presenter, “America Invents Act—What You Need to Know Now,” Stoel Rives, 2011
Editor, Business Law Practice, Part 5: Intellectual Property Considerations, Washington Lawyers Practice Manual, 2006–2008
Presenter, “Patent Protection Pitfalls,” Stoel Rives Intellectual Property Series, 2006
Author, “Patent Numbers Reflect Oregon's R&D Vitality,” Portland Business Journal, September 15, 2006
Contributor, 2005 Oregon Patent Report, July 2006
Author, “Oregon Patent Growth Skyrockets,” Multnomah Lawyer, October 2005
Contributor, 2004 Oregon Patent Report, July 2005
Presenter, “They Can't Do That! (Can They?) - What Every Business Should Know About Responding to IP Infringement Claims,” Stoel Rives Intellectual Property Series, 2004
Author, “Inventorship in U.S. Patent Applications,” 2003