Alexander P. Ott
Subscribe to Alexander P. Ott's PostsAlexander (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.
Mootness Requires Covenant Not to Sue to Be Unconditional and Irrevocable
By Alexander P. Ott on Jun 29, 2023
Posted In Trade Secrets
Addressing a district court decision finding no trade secret misappropriation, the US Court of Appeals for the Fourth Circuit agreed that the alleged trade secret holder had failed to moot the case because its covenant not to sue was both conditional and revocable. Synopsys, Inc. v. Risk Based Security, Inc., Case No. 22-1812 (4th Cir....
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No Smoking Gun Here: Soliciting Input Sufficient to Satisfy Commission’s Statutory Obligation
By Alexander P. Ott on Apr 6, 2023
Posted In Patents
Addressing a decision by the US International Trade Commission finding a violation of Section 337, the US Court of Appeals for the Federal Circuit agreed with the Commission on a slew of issues, including its determination that soliciting comments from a sister agency regarding the products at issue was sufficient consultation to satisfy the Commission’s...
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Present-Tense Claim Terms Not Sufficient to Require Actual Operation
By Alexander P. Ott on Sep 15, 2022
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed a US International Trade Commission (Commission) decision that found no violation of Section 337 due to noninfringement. The Court disagreed with the Commission that the use of present-tense claim terms required actual operation to be shown to prove infringement, but nevertheless affirmed the Commission’s finding...
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Threat of ITC Exclusion Order Is Too Speculative to Constitute Irreparable Harm
By Alexander P. Ott on Jul 21, 2022
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed a decision by a federal district court denying a defendant’s motion for a preliminary injunction seeking to enjoin a parallel International Trade Commission (ITC) investigation against it. The Federal Circuit agreed that the defendant’s alleged irreparable harm (a “cloud” over its business) was too conclusory...
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Patent Invalidity Doesn’t Demonstrate Good Faith for Consent Order Violation
By Alexander P. Ott on Mar 10, 2022
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed a US International Trade Commission (ITC) decision upholding a civil penalty for violating a consent order based on a patent that was later found to be invalid. The Court agreed with the ITC that a belief that a patent is invalid does not support a...
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Nailed It: Expert Must at Least Meet Ordinary Skill Level to Testify from POSITA Perspective
By Alexander P. Ott on Jan 27, 2022
Posted In Patents
Addressing a US International Trade Commission (ITC) decision finding a § 337 violation as to one patent but no violation as to four other patents, the US Court of Appeals for the Federal Circuit reiterated that a technical expert must at least meet the level of ordinary skill in the art of the asserted patents...
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Judge Albright Issues Updated Standing Order for Patent Cases
By Alexander P. Ott on Oct 28, 2021
Posted In Patents
On October 8, 2021, Judge Alan Albright of the US District Court for the Western District of Texas issued a new standing order governing proceedings for patent cases, which the Court designated as version 3.5 following previous updates in February and June 2021. The Western District of Texas manages more patent cases than any other...
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US Courts Can Compel Parties to Transfer Ownership of Foreign Patents
By Alexander P. Ott 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...
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Summary Judgment Foreclosed when There Is More than One Possible Inference from Evidence
By Alexander P. Ott 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...
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Independently Performed, Publicly Disclosed Prior Work Can Lead to Joint Inventorship
By Alexander P. Ott 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...
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