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 regularly 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

Experience

Representative Transactions

  • Represented a publicly traded Canadian company owner of an Idaho cobalt mine before the Committee on Foreign Investment in the United States (CFIUS) in connection with review of its sale to another foreign company.
  • Represented 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.
  • Represented 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.
  • Represented 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.
  • Represented a private company in its $3 million acquisition of well-known brand assets 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.

Representative IP Enforcement Matters

  • Successfully represented 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.
  • Represented 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© (currently: Copyright Law, Patent Law), 2013-2020
  • Selected as one of “America’s Leading Lawyers for Business” (Oregon) by Chambers USA (currently: Intellectual Property), 2009-2019
  • AV Preeminent Peer Review Rated with Martindale-Hubbell®
  • 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

Insights & Presentations

  • 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, Sept. 15, 2006 
  • Contributor, 2005 Oregon Patent Report, July 2006
  • Author, “Oregon Patent Growth Skyrockets,” Multnomah Lawyer, Oct. 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 



Related News & Publications


Expand to Read More + See Less -
×
Saved Pages

Use the arrows to arrange content.  Download pages as a .pdf file or share links via email..

{{ item.Title }} {{ item.AttorneyPosition }}, {{ item.AttorneyLocation }} , C. {{ item.AttorneyCell }} , P. {{ item.AttorneyPhone }} , F. {{ item.AttorneyFax }} {{ item.TypeText }} Remove
You have no pages saved
            {{ state | json }}