Frederick S. Frei
Partner
fredfrei@andrewskurth.com

1350 I Street, NW
Suite 1100
Washington D.C. 20005
P: 202.662.3049
F: 202.662.2739

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Fred has been involved with the patent system for more than 35 years, including five years as a Patent Examiner with the US Patent and Trademark Office. His practice includes counseling relating to the creation, protection, management, and exploitation of intellectual property assets, including acquisitions, sales, and licensing. He has extensive experience in rendering patentability, validity, infringement, and enforceability opinions and conducting due diligence and product clearance studies and intellectual property audits.

A primary focus of Fred's practice is intellectual property litigation, with particular emphasis on patents and related antitrust and trade regulation issues. He has been lead counsel in numerous litigations. He was lead patent trial counsel for US Patent No. 4,893,297, the basic patent for all modern-day optical discs, obtaining a favorable verdict on validity and infringement, including a finding that the patent claims covered the industry standard for all audio and CD-ROM compact discs. The patent had more than 140 licensees.

His representations have included diverse areas of chemical, electrical, and mechanical technology, including pharmaceutical, nutritional supplements, medical devices, chemical sensors, food products, solar cells, coolant systems, packaging products, optical disc products and players, plastics and plastic molding processes and apparatus, road-milling equipment, catalytic converters, electronic commerce, and thin-screen monitors.

Representative Experience

• McCormick & Co., Inc., v. Weatherchem Corp., No. 07-1100 (D.Md. filed Apr. 30, 2007). Representation of the defendant in a trademark and unfair competition case relating to grinder bottles for pepper and other similar items.
• ITC Section 337 Investigation: (Pass & Seymour, Inc. v. Shanghai Meihao Electric, Inc.) (2007).  Representation of the respondent in an investigation involving ground fault circuit interrupters.
• Technical Witts, Inc. v. Skynet Electronic Co., Ltd., Skynet Electronic Corp., No. 04-2025 (D.Ariz. filed Sept. 27, 2004). Representation of the defendant in this patent infringement action relating to power converters.
• B-50.com, LLC v. Xformity, Inc., Case No. 3:04-CV-0542-D (N.D.Texas) (Lead counsel for the alleged infringer in a patent infringement case involving a point of sale reporting system using the Internet.)
• The SCO Group, Inc. v. International Business Machines Corporation, Case No. 2:03-CV-0294 DAK (D. Utah ) ( Lead IP counsel for The SCO Group, Inc. in a case involving the UNIX and LINUX operating systems. The case involves three patent counterclaims filed by IBM and copyright infringement and contract claims against IBM arising out of IBM's source code contributions to LINUX.)
• Gateway Plastics, Inc. f/k/a Glendale Plastics, Inc. v. Weatherchem Corporation, Case No. 02-C-0870 (E.D. Wis.) (Lead IP counsel for the alleged infringer/counterclaim-plaintiff in a case involving three patented closure devices.)
• Ion Beam Applications S A, et al. v. The Titan Corporation, et al., Case No. 00CV 1994J (BEN) (C.D. Calif.) (irradiation system for food, medical devices, and mail)
• Monster Cable Products, Inc. v. Lightning Audio, Inc., Case No. C 99-05416 SBA (MED) (N.D. Cal.) (utility and design patents and trade dress)
• Dr. Abulkalam M. Shamsuddin, et al. v. PharmWest, Inc., Case No. JFM 99-CV-3857(D. Md.) (nutritional supplements)
• DiscoVision Associates v. Disc Manufacturing, Inc., 25 F. Supp.2d 301 (D. Del. 1998) (optical disc patents)
• Disctronics Texas, Inc. v. Sony Corp., Case No. 4-95CV-300Y (N. D. Tex.) (antitrust action relating to optical disc patents and licensing)
• DiscoVision Associates v. Technicolor Videocassette, Inc., Case No. 94-592-LON(D. Del.) (optical disc patents)
• Linear Dynamics, Inc. v. A. H. Harris & Sons and Koch Materials Company, Case No. 94-3779 JWB (D. N. J.) (bridge joints)
• A.T. Plastics v. Tyco International, Ltd., Case No. 94-11435 RGS (D. Mass.) (roofing materials)
• Miratech, Inc. v. Johnson Matthey Inc., Case No. 93-C-0240-E (N.D. Okla.) (catalytic converters)
• DiscoVision Associates v. Nimbus Records Limited, Case No. 92-CV-008 (W.D. Va.) (optical disc patents)
• Rovers, B.V. v. Wallach Surgical Devices, Inc., Case No. N-90-290 TFGD (D. Conn.) (medical devices)

Professional / Civic Affiliations

Member

• District of Columbia Bar
• State Bar of Massachusetts

Practice Areas

• Intellectual Property Litigation
• Intellectual Property
• Antitrust

Education

• JD, 1973, Georgetown University Law Center, Georgetown Law Journal, Editor; First Prize in the Nathan Burkan Memorial Copyright Law Writing Competition
• BS, 1968, Chemical Engineering, Cornell University, Dean’s List, scholarship recipient
• Law Clerk to the Honorable Harry Phillips, Chief Judge United States Sixth Circuit Court of Appeals (September 1973 - August 1974)

Admitted

• Massachusetts 1989
• Texas 1985 (inactive)
• District of Columbia 1974
• US Patent and Trademark Office