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.
Prosecution History Prevents Patent Owner from “Intercepting” Win on Appeal
By Thomas DaMario on May 20, 2021
Posted In Patents
In reviewing whether the Patent Trial & Appeal Board (Board) correctly interpreted the meaning of “intercepting” in the context of Voice over Internet Protocol (VoIP) technology, the US Court of Appeals for the Federal Circuit found that the claim language and prosecution history supported the Board’s decision. The Court thus affirmed the Board’s construction and...
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2G or Not 2G: Patent License Applies to Future Generation Wireless Networks
By Thomas DaMario on Feb 18, 2021
Posted In Patents
In interpreting a patent license agreement originally drafted in the era of third generation (3G) cellular networks, the US Court of Appeals for the Federal Circuit found that the license agreement covered subsequent wireless network generations, affirming a district court decision that infringement claims were barred by the license agreement and the doctrine of patent...
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Stick to the Fax: Conflicting Statements Made During Prosecution Lead to Indefiniteness
By Thomas DaMario on Feb 18, 2021
Posted In Patents
In deciding whether use of the term “passive link” to define a connection between a computer terminal and a fax machine rendered a patent claim indefinite, the US Court of Appeals for the Federal Circuit affirmed the district court’s finding of invalidity based on conflicting statements made by the patent owner during prosecution. Infinity Computer...
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Jetting along the Thin Line between Appellate Standing and Admitting Infringement
By Thomas DaMario on Jan 14, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit found that an inter partes review (IPR) petitioner that had not been accused of infringement had standing to appeal a final decision in an IPR because the petitioner alleged facts establishing that there was a substantial risk of infringement of the challenged claims. General Elec. Co....
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Amended Opinion Hedges Constitutionality of Punitive Damages Award
By Thomas DaMario on Dec 10, 2020
Posted In Trade Secrets
The US Court of Appeals for the Seventh Circuit amended its August 2020 opinion in Epic Systems v. Tata Consultancy to clarify that its analysis of punitive damages applies only to this particular case. Epic Systems Corp. v. Tata Consultancy Services Ltd., Case Nos. 19-1528, -1613 (7th Cir. Nov. 19, 2020) (Kanne, J.) In the...
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Analogous Art Includes Reference a Skilled Artisan Would Reasonably Consult
By Thomas DaMario on Nov 19, 2020
Posted In Patents
Addressing the standard for determining whether a prior art reference constitutes analogous art for purposes of an obviousness analysis, the US Court of Appeals for the Federal Circuit vacated and remanded a Patent Trial and Appeal Board decision that a reference was not analogous. The Court explained that the Board did not consider the purpose...
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Define Frustration: Appealing from Decision in Suit Against Co-Owner’s Wholly Owned Subsidiary with Major Issues Still Undecided
By Thomas DaMario on Oct 22, 2020
Posted In Patents
The US Court of Appeals for the Federal Circuit vacated a grant of summary judgment of non-infringement and remanded for resolution of numerous factual issues in a case addressing “extremely frustrating” issues involving the litigant’s failure to differentiate statutory prerequisites for bringing suit under 35 USC §262 and Article III standing, waiver of a co-owner’s...
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Epic Punitive Damages Award Violates Due Process
By Thomas DaMario on Sep 3, 2020
Posted In Trade Secrets
Addressing the appropriateness of three separate damages awards totaling $520 million, the US Court of Appeals for the Seventh Circuit affirmed the lower court’s award of $140 million in compensatory damages, but found that $280 million in punitive damages does not meet the Due Process Clause of the Fourteenth Amendment. Epic Systems Corp. v. Tata...
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Challenge to PTAB’s Finding of Non-Obviousness Fails to Pay Out
By Thomas DaMario on Aug 13, 2020
Posted In America Invents Act, Patents
Addressing whether the Patent Trial and Appeal Board (PTAB) ran afoul of the Administrative Procedure Act (APA) in finding that a dependent claim was valid despite the patent owner’s lack of validity arguments beyond those advanced for the corresponding and invalid independent claim, the US Court of Appeals for the Federal Circuit affirmed the PTAB’s...
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More Than a Feeling: No Fees for Frivolous Claim Where “Perceived Wrongs Were Deeply Felt”
By Thomas DaMario on Jul 1, 2020
Posted In Copyrights, Trademarks
Addressing the appropriateness of the district court’s decision to deny attorneys’ fees relating to a copyright claim it labeled “frivolous,” the US Court of Appeals for the Seventh Circuit affirmed the denial, despite the strong presumption in favor of awarding fees. Timothy B. O’Brien LLC v. Knott, Case No. 19-2138 (7th Cir. June 17, 2020)...
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