Alexander P. Ott Alexander P. Ott

Subscribe to Alexander P. Ott's Posts
Alexander (Alex) P. Ott focuses his practice on litigating complex patent disputes and representing clients in a variety of high technology industries, including the semiconductor, consumer electronics, telecommunications, pharmaceutical and software industries. He is a registered patent attorney with significant experience in patent prosecution matters. Alex has represented clients in federal district courts, in Section 337 investigations before the US International Trade Commission (ITC), in inter partes review (IPR) and post-grant review (PGR) proceedings at the US Patent and Trademark Office, and before the US Court of Appeals for the Federal Circuit. Read Alexander (Alex) P. Ott's full bio. 

US Courts Can Compel Parties to Transfer Ownership of Foreign Patents

By on Dec 17, 2020
Posted In Patents

Addressing a district court decision agreeing to transfer ownership of certain US patents, but declining to do likewise for the related foreign patents, the US Court of Appeals for the Federal Circuit explained that US courts have authority to compel litigants before them to transfer ownership of their patents and held that ownership of the...

Continue Reading

Summary Judgment Foreclosed when There Is More than One Possible Inference from Evidence

By on Nov 19, 2020
Posted In Patents

Reversing a summary judgment ruling that barred a correction of inventorship claim, the US Court of Appeals for the Federal Circuit, found issues of material fact foreclosed summary judgment and warned that where an issue is a “quintessentially fact-laden one” such as equitable issue involving possible equitable estoppel on inventorship, summary judgement is likely not...

Continue Reading

Independently Performed, Publicly Disclosed Prior Work Can Lead to Joint Inventorship

By on Jul 23, 2020
Posted In Patents

Addressing an inventorship decision that added two co-inventors to patents covering cancer treatments, the US Court of Appeals for the Federal Circuit agreed that the co-inventors’ work constituted joint inventorship even though it was performed independently and publicly disclosed prior to conception of the claimed invention. Dana-Farber Cancer Institute v. Ono Pharma. Co., Ltd., Case...

Continue Reading

Prior Art-Based Invalidity Analysis May Be Possible for Indefinite Claim

By on May 27, 2020
Posted In Patents

Addressing a decision by the US Patent and Trademark Office’s Patent Trial and Appeal Board (Board) declining to find certain claims unpatentable because they contained means-plus-function elements without any corresponding disclosed structure, the US Court of Appeals for the Federal Circuit affirmed the Board’s decision except as to one challenged claim where the means-plus-function element...

Continue Reading

Trade Secret Claim Premised on Patent Inventorship Assertion Did Not Warrant Removal to Federal Court

By on Apr 15, 2020
Posted In Trade Secrets

Addressing a decision by California district court denying a motion to remand a trade secret case back to the California state court where it was originally filed, the US Court of Appeals for the Federal Circuit held that the removal to federal court was improper and vacated the district court’s decision. Intellisoft Ltd. v. Acer...

Continue Reading

Knowledge and Control of Importation Can Lead to § 337 Violation

By on Mar 12, 2020
Posted In Patents

The US Court of Appeals for the Federal Circuit affirmed a US International Trade Commission (ITC) decision that a respondent qualified as an importer under § 337 despite not being the actual importer of record, based on the respondent’s involvement in the importation. Comcast Corp. et al. v. ITC, Case Nos. 18-1450, -1653, -1667 (Fed....

Continue Reading

A Lot of Hot Air? Obviousness Testimony Must Come from POSITA

By on Feb 20, 2020
Posted In Patents

Addressing a jury verdict of invalidity, the US Court of Appeals for the Federal Circuit found that the district court abused its discretion in allowing trial testimony regarding obviousness from a lay witness, and remanded for a new trial. HVLPO2, LLC v. Oxygen Frog, LLC, Case No. 19-1649 (Fed. Cir. Feb. 5, 2020) (Moore, J).

Continue Reading

No En Banc Review of Non-Institution Decision After Remand of Partial Institution

By on Jan 29, 2020
Posted In America Invents Act

Addressing a panel decision that affirmed a Patent Trial and Appeal Board (PTAB) holding denying institution of an inter partes review (IPR) after an earlier partial institution decision, the US Court of Appeals for the Federal Circuit denied both a panel rehearing and a rehearing en banc over a dissent from Judge Newman. BioDelivery Sciences...

Continue Reading