Thomas DaMario
Subscribe to Thomas DaMario's PostsThomas DaMario focuses his practice on intellectual property litigation and patent prosecution. Read Thomas DaMario's full bio.
Say Goodbye: Argument Not Presented in IPR Petition Is Waived
By Thomas DaMario on Nov 2, 2023
Posted In Patents
In a split decision, the US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board patentability determination, finding that the challenger’s appeal arguments were not raised in its inter partes review (IPR) petitions and were therefore waived. Netflix, Inc. v. DivX, LLC, Case Nos. 22-1203; -1204 (Fed. Cir. Oct. 25,...
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Remedies as Big as Your Bamba
By Thomas DaMario on Aug 10, 2023
Posted In Trademarks
Following the district court’s finding of trademark infringement on summary judgment, the US Court of Appeals for the Sixth Circuit affirmed the district court’s subsequent award of profits, costs and attorneys’ fees in favor of the trademark holder. La Bamba Licensing, LLC v. La Bamba Authentic Mexican Cuisine, Inc., nka La Villa Rica Mexican Cuisine,...
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The Best Option Is Obviously Not the Only Option
By Thomas DaMario on Jun 22, 2023
Posted In Patents
Following a jury verdict finding infringement of two patents and awarding $2.2 billion, the Patent Trial & Appeal Board issued a final written decision finding all claims in one of the asserted patents invalid. The Board explained that an asserted prior art combination only needs to be a suitable option, not the best option. Patent...
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Heart-to-Heart on Reduction to Practice: When It Comes to Testing, How Much Is Enough?
By Thomas DaMario on Jun 1, 2023
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board decision that the patent owner successfully demonstrated that the claimed heart catheter invention was conceived and reduced to practice prior to the effective date of the reference, by record evidence of adequate testing to demonstrate that the invention would...
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Branding Function Patent Yet Another 1[01] to Bite the Dust
By Thomas DaMario on Apr 20, 2023
Posted In Patents
Addressing the patentability of claims directed to digital image branding functions, the US Court of Appeals for the Federal Circuit affirmed a district court’s determination that claims across three related patents were invalid under 35 U.S.C. § 101 for lacking patent-eligible subject matter. Sanderling Mgmt. Ltd. v. Snap Inc., Case No. 21-2173 (Fed. Cir. Apr. 12,...
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When It Comes to Claim Construction, Prosecution History and Specification Rule
By Thomas DaMario on Feb 23, 2023
Posted In Patents
Addressing claim constructions across two patents that ultimately led to noninfringement findings by a district court, the US Court of Appeals for the Federal Circuit affirmed one construction because it was supported by the prosecution history but reversed another because it was unsupported by the specification. SSI Techs., LLC v. Dongguan Zhengyang Elec. Mech. Ltd.,...
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Calling All US IP Owners: Submit Your Comments on IP-Lax States
By Thomas DaMario on Jan 5, 2023
Posted In Uncategorized
The Office of the US Trade Representative (USTR) seeks public commentary regarding countries that deny adequate and effective protection of intellectual property rights, or deny fair and equitable market access to US persons that rely on intellectual property protections. Comments are due by January 30, 2023. Each year the USTR requests that intellectual property owners,...
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Construing the Construction: Federal Circuit Chips Away at IPR Win
By Thomas DaMario on Nov 29, 2022
Posted In Patents
Addressing claim construction issues in inter partes review (IPR) proceedings before the Patent Trial & Appeal Board (Board), the US Court of Appeals for the Federal Circuit affirmed an obviousness finding as to some claims but reversed and remanded an obviousness finding as to another claim because of a claim construction error. VLSI Technology LLC...
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Sliced and Diced: PTAB Decision Remanded for Further Analysis
By Thomas DaMario on Oct 6, 2022
Posted In Patents
In an appeal from a Patent Trial & Appeal Board final written decision, the US Court of Appeals for the Federal Circuit affirmed the Board’s decision to include certain evidence first presented in the petitioner’s Reply but vacated the Board’s obviousness decision for a failure to fully and particularly set out the bases for its...
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Not a Well-Crafted Housing: Product-by-Process Claim Element Isn’t Limiting
By Thomas DaMario on Aug 25, 2022
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed a ruling that certain claims reciting a “housing . . . being cast in one piece” should be construed as a product-by-process claim element and affirmed the subsequent finding of invalidity of all challenged claims. Kamstrup A/S v. Axioma Metering UAB, Case No. 21-1923 (Aug....
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