Oliver Edwards, attorney-at-law

State admissions:

  • Maryland
  • District of Columbia
  • Virginia
U.S. District Court admissions:
  • Maryland
  • Eastern District of Virginia
  • Western District of Virginia
  • District of Columbia
U.S. District Court pro hac vice appearances:
  • Southern District of New York
  • Western District of Washington
  • Eastern District of Texas
U.S. Court of Appeals admission:
  • Federal Circuit
U.S. Agency registration:
  • Patent and Trademark Office

Oliver Edwards

Attorney, Member

Mr. Edwards's legal practice involves prosecuting and litigating intellectual property matters. His practice includes consulting with inventors to prepare patent applications and prosecuting patent and trademark applications in the U.S. Patent and Trademark Office and intellectual property offices abroad. In addition, he works on a variety of intellectual property-related issues such as: patentability of inventions; infringement, validity, and enforceability of the client's or the client's competitors' patents; licensing of patents; and intellectual property due diligence. Mr. Edwards's practice also includes litigation in matters involving a range of intellectual property issues including patents, trade secrets and trademarks.

 

Mr. Edwards earned dual B.S. degrees in electrical engineering and computer engineering from the University of Missouri-Columbia in 1985. Mr. Edwards is a registered professional engineer in Maryland and has designed high-performance computers systems, integrated circuits, board-level systems, and related software and database systems. His design expertise includes internet, cryptographic and other communications protocols and he is experienced in many computer programming languages. Mr. Edwards has taught college level courses in computer systems architecture, integrated circuit design, and mathematics.

 

Mr. Edwards earned his J.D. degree from the University of Maryland School of Law (cum laude) and received the national Order of Barristers honor.

 

Prior to founding the firm, Mr. Edwards was an attorney with Rothwell, Figg, Ernst and Manbeck, p.c., a well-regarded intellectual property boutique law firm in Washington, DC.

 

Mr. Edwards is a member of the Federal Circuit Bar Association, the American Bar Association (member of Intellectual Property Law, Science and Technology Law, and Litigation sections), the Maryland State Bar Association (member of the Intellectual Property, Business Law, and Litigation sections, Professionalism Committee, 2013-14 fellow in Leadership Academy), the Montgomery County Bar Association and the Institute of Electrical and Electronics Engineers (IEEE-USA Intellectual Property Committee).

 

Areas of Concentration

  • Patent Prosecution
  • Intellectual Property, Patent and business tort Litigation
  • Computer hardware and software
  • Internet, e-commerce, business methods
  • Electrical
  • Counseling
  • Licensing and Transactions
  • Trademark Prosecution and contested TTAB cases

Education

  • B.S. Electrical Engineering University of Missouri-Columbia 1985
  • B.S. Computer Engineering University of Missouri-Columbia 1985
  • Graduate mathematics and engineering coursework at University of Maryland-College Park 1987-93
  • J.D., cum laude, University of Maryland School of Law 2006
Publications

Reported Cases

Recent representative contested matters
  • 2016: represented laser manufacturer Akela Laser Corporation sued for patent infringement in Eastern District of Texas; obtaining a speedy cost-effective resolution for Akela, including dismissal with prejudice
  • 2015-16: represented Enplug, a California company with ground-breaking digital display technology sued in the Southern District of New York for infringement of two patents; cost-effectively represented Enplug in obtaining a dismissal with prejudice
  • 2015-16: represented client sued for trademark infringement in Eastern District of Virginia; case dismissed
  • 2014: represented client sued for purportedly infringing five patents; case dismissed
  • 2014: represented client accused of patent and trademark infringement; brought declaratory judgment and false marking actions; obtained covenants not to sue from patentee and mark owner and dismissal with prejudice
  • 2014: represented client accused of trademark infringement, dilution, false advertising, breach of noncompetition covenant, breach of confidentiality covenant, cyberpiracy; opposed motions for temporary restraining order and preliminary injunction and successfully achieved dismissal
  • 2013: represented trademark holder in recovery of disputed domain names; National Arbitration Forum and World Intellectual Property Organization Arbitration and Mediation Center
  • 2013: represented former employee of Amazon in suit recovering employee's invention and patent application; Washington State King County Superior Court
  • 2012: represented trademark owner in lawsuit seeking injunction and damages for trademark infringement in U.S. District Court in Washington State and in related opposition proceeding before the U.S. Patent and Trademark Office's Trademark Trial and Appeal Board; defendant, an S&P 500 company, settled and abandoned their trademark application
  • 2011-2012: defended client sued in U.S. District Court in Maryland for patent infringement and false advertising; countersued for patent invalidity, unenforceability, noninfringement, false marking, false advertising, business interference torts and trademark declaratory judgment; infringement claims dismissed with prejudice and financial settlement in client's favor
  • 2011: represented small business in obtaining, without litigation, cessation of competitor's use of infringing name and trademark
  • 2010: defended client whose trademark application was opposed in the U.S. Patent and Trademark Office's Trademark Trial and Appeal Board by Fortune 100 company; persuaded company to withdraw opposition in exchange for minor amendment to application