Thomas DaMario
Subscribe to Thomas DaMario's PostsThomas DaMario focuses his practice on intellectual property litigation and transactions. Thomas has experience in all phases of litigation—from pre-filing investigations and discovery through trial and appeal. He has been involved in patent infringement cases in various United States district courts, the International Trade Commission and the Patent Trial and Appeal Board. Thomas is experienced in various technical areas, including Internet technologies, wireless and cellular communications, semiconductor chip design and fabrication, power tools, computer and networking systems and mechanical devices. Read Thomas DaMario's full bio.
International Trade Commission Seeks Feedback on Proposed Updates to Practice and Procedure
By Thomas DaMario on Apr 18, 2024
Posted In Uncategorized
The US International Trade Commission issued a Federal Register notice of proposed rulemaking related to 19 C.F.R. Parts 201, 205, 207 and 210, which govern the Commission’s Rules of Practice and Procedure. The Commission seeks feedback by May 20, 2024. Proposed Rules, 89 Fed. Reg. 61, 22012-39 (Mar. 28, 2024). The notice specifies that the...
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Mandamus Denied but Jurisdictional Door Left Open a Crack
By Thomas DaMario on Apr 4, 2024
Posted In Patents
The US Court of Appeals for the Federal Circuit denied a patent owner’s writ of mandamus seeking to prevent a defendant from amending its answer to add an affirmative licensing defense, but also noted that the defense was added only after the district court found that there were no remaining claims. In re VLSI Technology...
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Don’t Assume Sweet Success: Forum Selection Clause Doesn’t Preclude IPR
By Thomas DaMario on Jan 11, 2024
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed a district court’s denial of a preliminary injunction seeking to bar a petitioner from challenging certain patents at the US Patent & Trademark Office (PTO) because of a forum selection clause in a settlement agreement. The Court found that the patent owner was unlikely to...
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Sound the Alarm: Reasonable Royalty Apportionment Analysis Overlooks “Sleep State”
By Thomas DaMario on Dec 14, 2023
Posted In Patents
After a jury found infringement of two patents and awarded almost $2.2 billion in damages, the US Court of Appeals for the Federal Circuit reversed the infringement finding for one asserted patent, vacated the damages award for the other asserted patent, and reversed the district court’s refusal to allow the alleged infringer to add a...
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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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