Theodore Y. McDonough

Special Counsel

Location
New Jersey
Phone number
(973) 503-5996

Ted McDonough focuses his practice on intellectual property litigation, advising clients across a wide range of industries, including pharmaceuticals, nutraceuticals, diagnostic testing and laboratory equipment, medical products, consumer electronics, entertainment, and financial services.

Ted brings extensive experience to every phase of IP disputes, from pre-suit investigations through trial and appeal. He has litigated parallel U.S. Patent and Trademark Office and federal district court proceedings, successfully argued dispositive motions, and appeared in numerous federal trials. He is known for crafting persuasive briefs and particularly excels at appellate advocacy.

While comfortable in adversarial settings, Ted also recognizes the value of efficient dispute resolution. He has successfully mediated and negotiated favorable settlements for clients both before and after the commencement of litigation.

Ted also renders validity and infringement opinions, counsels clients on trademark matters and licensing and technology agreements, and frequently handles electronic discovery issues.

With an educational background in life science, Ted draws on his scientific training to benefit clients in complex patent matters, bringing a deep familiarity with technologies, scientific concepts, and technical literature to bear on behalf of his clients.

Represented a Japanese producer of chemical products in parallel infringement proceedings in California and Texas federal courts, and in successful appeals to the U.S. Court of Appeals for the Federal Circuit.

Principal author of briefs to the Federal Circuit leading to the summary affirmance of a Patent Trial and Appeal Board decision in favor of a major manufacturer of laboratory analytical equipment.

Represented a sovereign nation in a dispute over its domain name, involving claims of cybersquatting, domain name hijacking, and trademark infringement.

Successfully resolved infringement allegations against a developer and manufacturer of perimeter intrusion detection systems, video management software, and access control software.

Represented a manufacturer of patented solar technology in parallel district court and inter partes review proceedings.

Defended a manufacturer of a battery used in military applications in trade secret litigation.

Successfully resolved a trademark dispute on behalf of creators of a popular stock trading app.

Prepared validity and infringement opinions, and prosecuted infringement actions, for owners of patents for a web-based electrical circuit design tool and a robotic surgical tool.

Ted was selected for inclusion in the 2016 New York Super Lawyers’ ​“Rising Stars” list, issued by Thomson Reuters. A description of the selection methodology can be found here.

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Federal Bar Association