Jeffrey C. Totten focuses on trial-level patent and trade secret litigation, post-grant validity challenges, and strategic client counseling in the mechanical and electrical fields. He enjoys helping clients achieve their business goals in court, at the Patent Office, and across the negotiating table.
Jeff regularly represents clients in U.S. district courts and before the U.S. International Trade Commission (ITC). He has represented clients in patent and trade secret litigations and ITC Investigations, including stand-up roles in bench and jury trials.
In addition to trial work, Jeff has extensive experience managing litigation teams involved in complex intellectual property disputes, developing and briefing claim construction and summary judgment positions, selecting and working with technical experts, and taking discovery in the United States and abroad. He has also assisted clients with the appeal of their cases to the Federal Circuit.
Jeff represents patent owners and petitioners in post-grant validity challenges before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), and has participated in dozens of PTAB proceedings. His work includes presenting oral arguments, preparing petitions and patent owner replies, taking PTAB discovery, and coordinating PTAB proceedings with ongoing district court litigation.
Jeff regularly provides clients with strategic counsel, opinions of counsel, and advice regarding patent prosecution strategy, including the preparation of written opinions regarding patent infringement and validity.
He also assists clients with patent portfolio management, strategic planning, and patent mapping. Jeff serves as co-leader of Finnegans industrial manufacturing industry working group. He regularly presents seminars and webinars on IP issues facing manufacturing companies.
He has advised multiple manufacturing companies on the impact wide-spread adoption of additive manufacturing and 3D printing will have on their IP portfolios. In his pro bono practice, Jeff has represented criminal defendants in misdemeanor and felony cases before the D.C. Superior Court.
- University of Michigan Law School J.D., cum laude, 2003
- University of Virginia B.S., Mechanical Engineering, high distinction, 2000
- District of Columbia
- U.S. Patent and Trademark Office
Professional Activities :
- Intellectual Property Owners Association (Litigation Committee, 2013-present; U.S. Post-Grant Patent Office Practice Committee, 2016-2016)
- ITC Trial Lawyers Association
- American Bar Association
- American Intellectual Property Association
Rate : $$$