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.
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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Clarification or Raising the Bar? PTO Director Issues New Guidance for Discretionary PTAB Denials
By Thomas DaMario on Jun 30, 2022
Posted In America Invents Act, Patents
On June 21, 2022, US Patent & Trademark Office (PTO) Director Katherine K. Vidal issued a memorandum addressing interim procedures for discretionary denials in America Invents Act (AIA)-post grant proceedings at the Patent Trial & Appeal Board (Board). In 2020, in order to minimize the potential conflict between the Board and parallel district court proceedings,...
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Hypothetical Device Doesn’t Meet Domestic Industry Requirement
By Thomas DaMario on Mar 17, 2022
Posted In Patents
In a consolidated appeal from the International Trade Commission (Commission) and two inter partes review (IPR) proceedings before the Patent Trial & Appeal Board (Board), the US Court of Appeals for the Federal Circuit affirmed the Commission’s findings that a hypothetical device does not meet the domestic industry requirement, as well as findings by the...
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2022 IP Outlook Report: The Developments Shaping Patent Law
By Amol Parikh, Dr. Henrik Holzapfel, Thomas DaMario, Tim Dunker and Dr. Maximilian Kiemle, LLM on Feb 17, 2022
Posted In Patents
Key Takeaways and Outlook for 2022 Tracking with this era’s continuation and uncertainty trends―global supply chain disruption, innovation outpacing legislation, the unstoppable internet of [all the] things (IoT)―2022 is expected to be another busy year in the world of patent litigation. We fully expect persistence in these spaces: Patents/SEP FRAND Licensing Venue Developments Subject Matter...
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IPR Petition Cannot Be Based on Applicant Admitted Prior Art
By Thomas DaMario on Feb 10, 2022
Posted In Patents
Addressing the type of prior art that may form the basis of an inter partes review (IPR) proceeding, the US Court of Appeals for the Federal Circuit vacated an unpatentability finding based on “applicant admitted prior art” in the challenged patent. Qualcomm Inc. v. Apple Inc., Case Nos. 20-1558, -1559 (Fed. Cir. Feb. 1, 2022)...
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Failing to Address All Reasons for Noninfringement Renders Appeal Moot
By Thomas DaMario on Oct 14, 2021
Posted In Patents
In deciding whether the district court correctly interpreted various claim terms in four patents related to communication techniques used in computer gaming technology, the US Court of Appeals for the Federal Circuit found that rendering a decision as to the terms for at least two of the patents would be moot. Accordingly, the Federal Circuit...
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Greek God or Continent? Defining “Confusing Similarity” under the Anti-Cybersquatting Consumer Protection Act
By Thomas DaMario on Sep 2, 2021
Posted In Trademarks
Examining whether a registered mark and a domain name were confusingly similar under the Anti-Cybersquatting Consumer Protection Act (ACPA), the US Court of Appeals for the 11th Circuit affirmed the district court’s grant of summary judgment in favor of the trademark owner because the mark and domains are nearly identical in sight, sound and meaning....
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