Education

  • UCLA School of Law (J.D., 2001); Order of the Coif; Articles Editor of the UCLA Law Review, American Jurisprudence Bancroft-Whitney Award in Legal Research and Writing
  • University of Texas, Austin (M.S.E., Chemical Engineering, 1998), John E. Kasch Endowed Graduate Fellowship, Phi Kappa Phi, Omega Chi Epsilon
  • Harvey Mudd College (B.S., Engineering and Economics, 1996) with Distinction, Dean’s List (1992-1996), Awarded the Davies Engineering Prize

Keith Orso is a partner in the Los Angeles office of Irell & Manella LLP, where he practices patent law in the litigation and intellectual property groups. Mr. Orso has experience with a wide variety of technologies, ranging from computer architecture and communications to medical devices, pharmaceuticals, and biotechnology. 

Mr. Orso has been selected for inclusion in the 2014-2016 editions of Southern California Super Lawyers in the area of intellectual property litigation. Before that, he was regularly named a Southern California Super Lawyers Rising Star, starting in 2005.

Prior to joining the firm, Mr. Orso served as a law clerk to the Honorable Mariana R. Pfaelzer of the United States District Court for the Central District of California.

Mr. Orso earned his J.D. in 2001 from UCLA School of Law, where he graduated Order of the Coif. During law school, Mr. Orso worked as an Articles Editor on the UCLA Law Review and was awarded the American Jurisprudence Bancroft-Whitney Award in Legal Research and Writing.

Before entering law school, Mr. Orso obtained a Master’s degree in Chemical Engineering from the University of Texas, Austin. His research and writing focused on the material properties of polymer thin films, and his graduate coursework included subjects such as solid state physics, surface phenomena, applied kinetics & chemical reaction analysis, mass transfer, and separations processes. At the University of Texas, Mr. Orso was the John E. Kasch endowed graduate fellow and was inducted into the honor societies of Phi Kappa Phi and Omega Chi Epsilon.  He is a member of the American Chemical Society. 

Mr. Orso received his Bachelor’s degree in Engineering, with distinction, from Harvey Mudd College, where he studied electrical, computer, chemical, and mechanical engineering and was awarded the Davies Engineering Prize. While attending Harvey Mudd, Mr. Orso also completed the requirements for a major in Economics at Claremont McKenna College. During summers, Mr. Orso worked with thin film inductive and magnetoresistive disk drive technologies as a design and product engineer at Applied Magnetics Corporation.

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Representative Matters

Representative litigation matters in which Mr. Orso has served as counsel (client bolded) include:

AIDS Healthcare Foundation Inc. v. Gilead Sciences, Inc., a case in the Northern District of California seeking declaratory judgment of patent invalidity and alleged violations of the Sherman Act, the Cartwright Act, the California Business & Professions Code § 17200, and Nevada Unfair Trade Practices Law. The Court granted Gilead’s motion to dismiss all claims, and Plaintiff is appealing.

Boehringer Ingelheim International GmbH et al. v. Biogen Inc., (Patent Trial and Appeal Board, IPR2015-00418), a petition for inter partes review proceedings filed by Boehringer against a patent relating to use of the biologic rituximab to treat low-grade B-cell non-Hodgkin’s lymphoma. The Patent Office declined to institute IPR proceedings, ruling that Boehringer had not established a reasonable likelihood that it would prevail in demonstrating that any claim of the patent at issue is invalid.

Mylan Pharmaceuticals Inc. v. Gilead Sciences, Inc., (Patent Trial and Appeal Board, IPR2014-00885, IPR2014-00886, IPR2014-00887, and IPR2014-00888), four petitions for inter partes review proceedings filed by Mylan against Gilead patents related to the HIV drug tenofovir disoproxil fumarate, which is found in medications such as Viread and combination therapies such as Stribild and Truvada. The Patent Office declined to institute IPR proceedings on all four petitions, ruling that Mylan was unlikely to establish that any claims of the four patents are invalid. The Patent Office also denied Mylan’s petitions for rehearing.

St. Jude Medical Inc. v. Access Closure, Inc., a patent infringement case in the Western District of Arkansas relating to vascular closure devices.  The jury returned a verdict of willful infringement and awarded St. Jude $27.1 million in damages.

The Salk Institute for Biological Studies v. Ferring Pharmaceuticals, Inc., a case in the Southern District of California alleging, among other things, that the Salk Institute was the exclusive owner of a Ferring patent and that Ferring infringed a Salk patent.  Ferring moved to dismiss the claims for failing to state a claim, as being time-barred, and as otherwise defective, and within a month the case was dismissed with prejudice.

Microprocessor Enhancement Corp. v. Texas Instruments Incorporated, a patent infringement case in the Central District of California relating to microprocessor architecture and conditional instruction execution. Irell & Manella obtained summary judgment of noninfringement on behalf of Texas Instruments and the judgment was affirmed on appeal.  After the case concluded, the patentee again sued Texas Instruments, alleging infringement of different products based on the incorporation of various ARM processors.  And again, Irell & Manella obtained summary judgment of noninfringement on behalf of Texas Instruments.

Quantum World Corp. v. Atmel Corp. et al., a patent infringement suit in the Eastern District of Texas involving patents directed to random number generators.

Tessera Technologies Inc. v. Amkor Technology, an arbitration, before a three-judge panel in the International Chamber of Commerce, relating to royalties due under an agreement licensing patented and unpatented semiconductor packaging technology.

Affymax, Inc. v. Johnson & Johnson, a dispute in the Northern District of Illinois and before the American Arbitration Association involving the proper inventorship of various patents and patent applications covering erythropoietin (“EPO”) mimetic peptides.

DataTreasury Corp. v. NCR Corp., a patent infringement case in the Eastern District of Texas involving check image processing technology.

Quidel Corp. v. Inverness Medical Innovations, Inc., a patent infringement case in the Southern District of California involving thin film lateral flow immunoreactive diagnostic test devices.

Intergraph Hardware Technologies Co., Inc. v. Hewlett-Packard Co., a series of patent infringement cases in the Eastern District of Texas involving cache memory technology and microprocessor architecture.

Townshend Intellectual Property L.L.C. v. Cisco Systems, Inc., a patent infringement case in the Northern District of California involving 56k modem technology.

Stamps.com v. Pitney Bowes, Inc., a series of patent infringement cases in Delaware involving electronic postage, encryption, and networked systems for secure transmission of postage over the internet.

Linear Technology Corp. v. Novellus Systems, Inc., a contract dispute in Santa Clara County Superior Court relating to the sale of allegedly infringing semiconductor wafer manufacturing equipment. 

Novartis Consumer Health, Inc. v. Elan Transdermal Technologies, Inc., a patent infringement case in the Southern District of Florida involving transdermal nicotine patches.

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Publications

  • “Insights Into IP Law” column in the Southern California Section of the American Chemical Society monthly/bimonthly magazine (2014-present)
  • "On Excluding Preferred Embodiments," Journal of the Patent & Trademark Office Society (December 2008)
  • "Intellectual Property Litigation, Guide To Intellectual Property," Supplement to BioPharm International (August 2005) (co-author)
  • "Prosecution Laches & Inequitable Conduct: An Outline of Recent Developments," Patent Litigation (Practising Law Institute) (2003 & 2004) (co-author)
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Bar & Court Admissions

  • 2001, California
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, Ninth Circuit
  • U.S. District Court, Central, Northern and Southern Districts of California
  • U.S. Patent and Trademark Office