Overview

Kassim Ferris applies his technological knowledge to deliver business-centric solutions to complex legal and regulatory challenges. His practice spans a broad spectrum of intellectual property matters, including domestic and international patent procurement, patent opinions, technology licensing, technology development and collaboration agreements, patent enforcement, and intellectual property dispute resolution. Kassim also has experience with trademark and copyright matters, and IP aspects of corporate transactions and government contracts. He also represents clients on national security and international trade matters.

Kassim has deep experience procuring patents on a wide range of mechanical, electromechanical, optics and computer-related technologies, notably including atomic layer deposition, electrical connectors, sporting optics, ballistics, gun safety equipment, image processing, food packaging, electronic image display technologies, building products, fenestration systems, apparel, and footwear. He is also versed in materials science, metallurgy, plastics molding, progressive die stamping, and semiconductor integrated circuit fabrication. Kassim takes pride in obtaining defensible patents that provide clients with a real business advantage for sophisticated inventions, whether complex or elegant.

Kassim also leverages his technical and IP expertise in guiding clients through national security reviews by the Committee on Foreign Investment in the United States (CFIUS), and advising on compliance with U.S. export controls, sanctions, and embargoes. He has provided national security diligence and advice on more than 150 transactions involving foreign investments in U.S. software and technology companies, infrastructure, and energy projects, and has filed numerous notices and declarations with CFIUS.

Kassim currently serves on the firm's Coaching and Mentoring Committee and on the Technical Advisory Group for the firm's information technology infrastructure.

Education

Willamette University College of Law, J.D., 1996

Colorado State University, B.S.M.E. with Mathematics minor, 1990; Tau Beta Pi

Admissions

Oregon

Washington

District of Columbia

United States Patent and Trademark Office

United States Court of Appeals for the Federal Circuit

United States District Court for the District of Oregon

Experience

Patent Procurement and IP Portfolio Management

  • Successfully prosecuted patents on a scramjet engine with variable fuel injection for hypersonic thrust over a large mach number range, for use in next-generation space launch vehicles.
  • Successfully prosecuted patents on a phonetic markup system and text encoding method for teaching reading skills, overcoming difficult examiner’s rejections on subject matter eligibility grounds under 35 U.S.C. § 101.
  • Served as primary outside IP counsel to a global manufacturing company with over $4 billion in annual revenue, including managing its portfolio of nearly 1000 active patent and trademark matters, patent preparation and prosecution, design protection strategy, IP licensing, patent dispute resolution, IP aspects of corporate acquisitions, and patent clearance for new products.
  • Represented a private company in a multimillion-dollar acquisition of well-known brand assets and patents from a public company.
  • Represented a public company in a $3.5 million divestiture of certain patent assets and associated technology to a multinational public company. 
  • Represented electronic display technology company, Planar Systems, Inc., in connection with its divestiture of the CoolSign digital signage business, in two separate transactions: the sale of a joint interest and exclusive IP rights in the field of gaming to a leading gaming and entertainment technology company, and the subsequent sale of the remaining joint interest and exclusive IP license rights outside the field of gaming to a second buyer in the digital signage and advertising software business.

Intellectual Property Dispute Resolution

  • Represented sports optics manufacturer, Leupold & Stevens, Inc., in complex patent enforcement litigation against a competitor through summary judgment on eight patents covering five distinct technologies. The litigation was ultimately resolved on mutually agreeable terms via a license agreement.
  • Advised an educational software company on legal and business issues arising from gaps in a complex chain of title to patent and copyright assets, and successfully leveraged strategic legal action to secure title ownership.
  • Represented one of the world’s largest door and window manufacturers in a contentious renegotiation of a long-term patent license from a provider of equipment and technology for making insulated glazing units, resulting in significant financial savings.
  • Represented, Skedco, Inc., an Oregon-based manufacturer of emergency rescue and medical training equipment, in successful enforcement of a patent on bleeding simulation systems for training field medics, including handling of briefing and oral argument on patent claim construction and on a motion for summary judgment, preparing discovery responses, facilitating expert reports, and assisting with briefing on a successful appeal to the U.S. Court of Appeals for the Federal Circuit.

National Security and International Trade Compliance

  • Represented a U.S.-based energy development company in two mandatory declarations to CFIUS in connection with its acquisition of four solar power generation projects in Arizona having a combined peak output of 750 MW, in two separate transactions. 
  • Represented HydrantID, a provider of managed public key infrastructure (PKI) and digital certificate authentication services, through CFIUS review in connection with sale of the company to HID Global, a subsidiary of Swedish lock and security company ASSA ABLOY. 
  • Represented a U.S. company in an investigation by the Department of State, Directorate of Defense Trade Controls (DDTC), Office of Defense Trade Controls Compliance (DTCC), regarding compliance with the International Traffic in Arms Regulations (ITAR) under the Arms Export Control Act (AECA).
  • Represented a semiconductor process technology company in five simultaneous mandatory declarations to CFIUS in connection with a Series C round of investment by investors from Korea, Japan, France, and Taiwan.
  • Represented an Idaho cobalt mine owner, US Cobalt Inc., through CFIUS review in connection with its sale to Canadian company First Cobalt Corp.
  • Represented a Chinese-owned company in connection with its acquisition of a U.S. designer of optical motion capture camera systems and software, including on intellectual property diligence, export classification, and a joint voluntary notice to CFIUS.

Government Contracting

  • Represented SunPower Corporation in drafting and negotiating subcontracts under a $6.65 million grant from the U.S. Department of Energy for collaborative research and development of a solar and storage-powered microgrid community, including preparing three subaward agreements, a multi‑party intellectual property management plan, and a cybersecurity and data protection agreement.
  • Represented a provider of data center facilities and services on compliance with federal government contracting requirements under Section 889 of the John S. McCain National Defense Authorization Act (NDAA).

Representative Patents and Published Patent Applications

US 11,493,834 Modular Track System for Cinematography Robot and Motion Control Systems
US 11,372,228 Reducing Lost Motion in Adjustment Knobs for Riflescopes and Other Devices
US 2022/0108638 LED Module Positioning System
US 2021/0115725 Configurable Astragal and Snap Feature for Fenestration System
US 2020/0199912 Shoot Bolt for Limiting Movement of a Fenestration Panel
US 2020/0192075 Illuminated Reticle System with Fresnel Lens
US 10,495,255 Mount With Hidden Magnetically Actuated Positioning
US 10,060,702 Dual Field Optical Aiming System for Projectile Weapons
US 9,598,274 Fuel Distribution System and Method
US 2016/0375605 Chopstick Making Jig and System
US 9,429,745 Variable Reticle for Optical Sighting Devices Responsive to Optical Magnification Adjustment
US 2016/0061567 Accessory Display for Optical Sighting Devices
US 9,186,812 Fiber Composite Manufacturing System with Anti-bonding Coatings
US 9,182,773 Low Profile Auto-Locking Pinch/Turn Adjustment Knob
US 9,048,564 Insulating Sheath for Retaining Contacts in an Electrical Connector and Related Assembly Method
US 8,926,366 PCB-mount Electrical Connector with Shielding for Inhibiting Crosstalk
US 8,764,471 Electrical Connector for High-Speed Data Transmission
US 8,544,372 Manual Table Saw and Blade Therefor
US 8,187,679 Radical-Enhanced Atomic Layer Deposition System and Method
US 8,137,464 Atomic Layer Deposition System for Coating Flexible Substrates
US 7,654,029 Ballistic Ranging Methods and Systems for Inclined Shooting
US 7,234,641 Illumination Pulsing Method for a Data Reader
US 7,119,566 Test Probe Alignment Apparatus
US 7,090,207 Single-end-mount Seismic Isolator
US 2004/0208994 Deposition of Carbon- and Transition Metal-Containing Thin Films
US 2005/0035163 Security Hood for Handgun Holsters
US 6,771,629 In-Band Signaling for Synchronization in a Voice Communications Network
US 6,694,064 Digital Aerial Image Mosaic Method and Apparatus
US 6,631,658 Saw Sharpening Machine with Pitch Measurement Feedback Control for Saw Blade Indexing
US 6,597,809 Rollup Functions for Efficient Storage, Presentation, and Analysis of Data
US 6,392,877 Laptop Computer Display Mounting
US 2002/0119770 Class Switched Networks for Tracking Articles
US 6,056,405 Lamp Module with Kinematic Mount
US 6,005,711 Variable Optical Power Telescopic Sight with Side Focus Control

Insights

Insights & Presentations

  • Author, The Committee on Foreign Investment in the United States: Its Purpose, Powers, and Procedures, Oregon Business Lawyer, September 2023
  • Presenter, “What Every Business Lawyer Needs to Know About CFIUS,” OSB Business Law & Int’l Law Sections, April 2023
  • Presenter, “CFIUS Considerations for Tax Equity Financing Transactions,” Stoel Rives Energy Industry Group, January 2023
  • Presenter, “Fall 2019 CFIUS Update: FIRRMA Implementation and Critical Infrastructure,” Stoel Rives Mergers & Acquisitions Subgroup, November 2019
  • Presenter, “International Trade Regulation & National Security Overview,” Stoel Rives Business Attorney Training Series, May 2018
  • Presenter, “CFIUS Update: Foreign Investment Risk Review Modernization Act of 2018 (FIRRMA) and Broadcom/Qualcomm,” Stoel Rives Mergers & Acquisitions Subgroup, March 2018
  • Presenter, “CFIUS Fundamentals: National Security Review of Foreign Acquisitions of U.S. Businesses under the Exon-Florio Amendment to the Defense Production Act and the Foreign Investment and National Security Act of 2007,” Stoel Rives Energy Initiative Meeting, March 2017

Recognition

  • Included in The Best Lawyers in America® (Patent Law), 2013–2024
  • Selected as one of “America’s Leading Lawyers for Business” (Oregon) by Chambers USA (Intellectual Property), 2009–2023
  • AV Preeminent® Peer Review Rating™ from Martindale-Hubbell
  • Listed in the IAM Patent 1000: The World’s Leading Patent Practitioners, 2020–2023

Affiliations

Professional

  • Oregon Patent Law Association, Member
  • Intellectual Property Owners Association, Patent Search Committee, Member
  • American Intellectual Property Law Association, Member
  • Optical Society of America - Columbia Section, Member
  • Outdoor Industry Association, Member

Civic

  •  Friends of Saturday Academy, Board Member, 2019–2024
  • Oregon State Bar Diversity Section, Employment & Advancement Subcommittee, Member, 2009
  • Lewis & Clark Small Business Legal Clinic, Volunteer, 2006–2009
  • Multnomah County Legal Aid, Volunteer, 1997–2009
Jump to Page