Steven Schwarz is a partner in Venable's Patent Prosecution and Counseling Group, resident in the firm's Washington, DC office. He is also the Co-Chair of Venable's Post-Grant Practice Group. Mr. Schwarz's practice focuses on worldwide patent prosecution and portfolio management, strategic patent counseling and due diligence, and patent litigation.
Mr. Schwarz helps clients develop worldwide patent portfolios geared toward enforcement, monetization, and protecting core commercial embodiments. He works closely with clients through all phases of product development and launch to obtain patent protection aligned with business objectives. Mr. Schwarz has prepared and prosecuted hundreds of U.S. and foreign patents, several of which have been successfully enforced against marketplace competitors. He is proficient in a number of technologies, including automotive, consumer products, consumer electronics, industrial equipment and processes, medical devices (orthopedic implants, vascular implants, drug delivery devices, and medical imaging systems, among others), power generation (fossil fuel, nuclear, and solar), and semiconductors. Prior to his law career, Mr. Schwarz designed and prototyped vertical form fill and seal (VFFS) machines for an international packaging company.
Mr. Schwarz also has an active design practice. He has prepared and prosecuted numerous design patents in the U.S. and abroad. In this regard, he has experience with athletic apparel, consumer products and electronics, graphical user interfaces, icons, and household appliances, among others. He is adept at patent prosecution strategies aimed toward efficiently acquiring worldwide design rights.
As part of his counseling practice, Mr. Schwarz frequently advises clients regarding issues of non-infringement, design-around, and freedom-to-operate, and prepares related opinions of counsel. He frequently performs patent landscape searches and analyses. Additionally, Mr. Schwarz is active in technology licensing and due diligence. He works with acquiring companies to assess the value of a target’s portfolio, and to clear target products. Mr. Schwarz also helps his clients to monitor the patent activities of their competitors and, where necessary, to take steps to impede the issuance of overly broad patents.
Mr. Schwarz routinely participates in patent litigation. He has represented clients in all phases of patent litigation, from pre-complaint counseling through trial. Mr. Schwarz has successfully litigated patent cases involving orthopedic implants, catheters, food safety, gas turbines, and other technologies. As part of his litigation practice, Mr. Schwarz has extensive expertise with AIA proceedings before the Patent Trial and Appeal Board (PTAB). He has served as lead or backup counsel in numerous inter partes review (IPR) proceedings before the PTAB. Representative cases include:
- Representing the petitioner in nine IPRs challenging the validity of every one of the 160 claims of four asserted patents related to turbine inlet cooling for energy-producing gas turbines. The PTAB instituted review on 156 of the 160 challenged claims. Following a stay of the companion district court cases, the PTAB entered final written decisions in the first four IPRs, finding all of the instituted claims to be unpatentable as obvious. Shortly thereafter, the parties settled in favor of Venable’s client. See IPR 2015-00882, IPR 2015-00886, IPR 2015-01212, and IPR 2015-01214.
- Representing petitioner, a major domestic automotive manufacturer, in multiple IPRs relating to variable intake valve technology. Two IPRs were instituted on all requested grounds, and a third IPR resulted in a statutory disclaimer of all challenged claims by the patent owner. The IPRs and accompanying litigation ultimately settled on favorable terms for Venable's client. See IPR 2015-01229, IPR 2015-01234, and IPR 2015-01370.
Mr. Schwarz is the past chair of the Intellectual Property Section of the Bar Association of the District of Columbia. He frequently writes and presents on various topics relating to U.S. patent law and practice, including design patents, additive manufacturing (3D printing), and PTAB practice. He is certified in German as a foreign language by the Goethe Institute.