Steven P. Weihrouch
Steven P. Weihrouch joined Rothwell Figg after serving nearly 20 years with an internationally known IP firm. At his previous firm, he served on the Management Committee, and co-chaired the firm’s Litigation Practice group and the Patent Prosecution Practice group. He also headed their Tokyo Japan Office as a Gaikokuho Jimu Bengoshi for more than two years.
Mr. Weihrouch practices patent litigation in U.S. courts and works closely with Japanese, European and domestic clients, advising them and offering opinions on all aspects of U.S. patent protection and enforcement including patent validity and infringement issues, redesign, patent prosecution, intellectual property (IP) portfolio management, licensing, pre-litigation, post-litigation, litigation avoidance, settlement strategies, International Trade Commission (ITC) practice, and USPTO post grant proceedings.
A skilled litigator, Mr. Weihrouch successfully argued on behalf of the defendants in AK Steel v. Sollac in the U.S. District Court for the Southern District of Ohio, prevailing on all six patents in the suit. He then successfully argued the appeal before the Court of Appeals for the Federal Circuit, with the Federal Circuit affirming the District Court decision. This case is cited in the United States Patent and Trademark Office’s (USPTO) Manual of Patent Examining Procedure, and in the Federal Circuit Bar Association’s 2009 Model Patent Jury Instructions on enablement and claim construction.
Mr. Weihrouch was also lead counsel for Toyota Motor Corp. in Toyota Motor Corp. v. Hyundai Motor Co., and Ryan et al. v. Toyota Motor Corp.; for Aisin Seiki in BorgWarner v. Aisin Seiki and Aisin Seiki v. BorgWarner; and for VersaMed Medical Systems in Pulmonetic v. VersaMed and Viasys v. VersaMed.
A former Patent Examiner with the USPTO, Mr. Weihrouch has extensive experience in the preparation and prosecution of patent applications in a wide range of technologies including automotive, semiconductors, medical instruments, manufacturing, machines, automated assembly lines, and metallurgy. He takes a hands-on approach with clients, visiting them regularly to enhance communication and familiarize himself with their businesses, innovations and goals in order to gain insight to help them develop strategies to protect their intellectual property and optimize its value.
Mr. Weihrouch also regularly counsels clients regarding noninfringement, invalidity and Inter Partes Review (IPR) strategies.
Before attending law school, Mr. Weihrouch gained experience in an engine testing and research laboratory. Mr. Weihrouch worked extensively with the International Committee of the Japan Intellectual Property Association (JIPA) to assist in learning the America Invents Act (AIA) for education of JIPA members. He has also lectured widely concerning patent litigation, strategies, procedure and the U.S. legal system in many different venues including for JIPA in Tokyo and Nagoya; the European-American Chamber of Commerce in Paris; the Association of In-House French Patent Professionals; the Federation of Belgium Companies in Brussels; and the Advanced Patent Law Institute in Alexandria, Virginia. He also has taught as a Visiting Professor at the George Mason University School of Law.
Litigation matters in which Mr. Weihrouch has been lead counsel include:
Successfully represented French steelmakers Sollac and Ugine (then subsidiaries of Usinor, now ArcelorMittal) against AK Steel’s accusation that Sollac infringed six patents relating to aluminum coated stainless steel, which is highly desirable and profitable for automotive applications due to its appearance and corrosion resistance. Despite the daunting task of defending against this six-patent attack in Ohio, AK’s home state and the heart of American’s steel industry, Sollac defeated AK with respect to all six patents after district court and appellate court proceedings. Due to the strength of this victory, Sollac then received a monetary settlement from patentee AK to revolve a related antitrust countersuit. AK Steel v. Sollac.
Represented defendant Toyota in patent infringement action involving RFID technology. Obtained dismissal of lawsuit. Ryan v. Toyota Motor Corp., (S.D. Iowa)
Represented plaintiff Toyota in patent infringement action involving automatic transmissions. Toyota Motor Corp., v. Hyundai Motor Co., (C.D. Cal.). Settled on favorable terms.
K-Swiss, Inc. v. Glide’n Lock. Before Court of Appeals for the Federal Circuit, prevailed on behalf of K-Swiss in having all claims of asserted patent found invalid.
Memory Control Enterprises v. Edmunds.com and K-Swiss Inc., in the Central District of California, represented defendant K-Swiss, case dismissed.
Geox S.p.A. v. Kenneth Gole, in the Southern District of New York, represented plaintiff Geox, case settled on favorable terms.
Outdry Technologies Corp. v. Geox S.p.A., in the Southern District of New York, represented defendant Geox, case dismissed.
Milwaukee Electric Tool Corp. v. MAX USA Corp., in the Eastern District of Wisconsin, represented defendant MAX, settled.
Viasys Respiratory Care, Inc. et al v. VersaMed Medical System. Represented VersaMed against Viasys in District Court of Delaware, and Central District of California. After uncovering and disclosing to Viasys evidence of inequitable conduct committed by the inventor of the patent at issue. Viasys withdrew its lawsuit.
Pulmonetic Systems v. VersaMed Medical Systems. Represented defendant VersaMed in District Court of Minnesota, case settle on favorable terms.
Areas of Concentration
- Validity and Infringement
- Pre-litigation and Litigation Strategies
- Federal District Courts
- International Trade Commission
- Federal Court of Appeals
Professional Affiliations, Honors & Recognition
Top Patent Prosecutor, Patent Research Review (2011)
Martindale-Hubbell® AV® Preeminent™ 5.0 out of 5 (more than 12 years consecutively)
The Legal 500 U.S. 2010, recognized as a leading attorney in Mechanical Patent Prosecution
Washington DC Super Lawyers (2013-2019)