Careers

At M&G, we dedicate ourselves to finding the best solutions to our clients’ challenges, no matter where it takes us.

Case Studies

Industries

Offices

About Merchant & Gould

Pages

People

News Room

Practices

Staff

Home - Merchant & Gould P.C.

Benjamin (Ben) Dooley is an intellectual property (IP) lawyer and registered patent attorney with a strong background in business. He applies an acute understanding of how business and law interact to achieve favorable outcomes for clients navigating IP challenges.&nbsp;

core/heading

Using Knowledgeable Guidance to Achieve Business Success&nbsp;

Before practicing law, Ben worked successfully in business development and marketing roles. In so doing, Ben uncovered a knack for analyzing and improving business profitability, which he now brings to his IP practice.&nbsp;

core/paragraph

Ben’s practice involves litigating, licensing, and protecting trade secrets, trademarks, copyrights, and patents. His keen eye toward economic considerations allows him to give clients valuable guidance on their IP portfolios. In addition, his background in business enables him to analyze not just the legal challenges but also the corresponding business effects.&nbsp;

Ben highly values integrity and efficiency, influencing how he approaches each client. Consequently, when he commits to a course of action, it comes from a place of certainty. He ensures every minute counts, from consultations to document drafting, eliminating wasting resources and time.

Pinpointing a situation's core issues and optimal outcomes comes naturally to Ben.&nbsp; This ability, paired with Ben’s analytical thought process, ensures clients feel understood and receive proactive solutions to their concerns.

Endurance and Dedication in Practice&nbsp;&nbsp;

Benjamin’s perspective on the practice of law is unique. As someone who actively trains for endurance races of all distances, he derives great benefits of personal discipline and mental resilience from this routine. Unsurprisingly, he brings the same dedication to the law. This equips him to tackle even the most challenging legal matters with ease, including the ever-evolving complexities of IP law.

Benjamin was born in Lafayette, a small town outside of Nashville, Tennessee, but now calls Knoxville his home. Outside the office, he enjoys spending time with his wife and sons and cheering on the Tennessee Volunteers. He also loves luxury watches and is constantly buying and selling new pieces for his collection.

Tennessee Technological University, B.S. Civil Engineering, 2014

The University of Tennessee College of Law, J.D., 2023, 

Knoxville

Recently, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/21-1855.OPINION.1-18-2024_2255076.pdf">CyWee Grp. Ltd. v. ZTE (USA), Inc., No. 2021-1855 (Jan. 18, 2024)</a>.



CyWee asserted U.S. Patent No. 8,441,438 against several large companies, including ZTE and LG Electronics, Inc. ZTE responded with an IPR petition asserting that certain claims of the ’438 Patent were unpatentable. Thereafter, and more than a year after being sued by CyWee, LG filed an IPR petition challenging the ’438 Patent and moved to join ZTE’s ongoing IPR. The Board granted LG’s motion to join but placed several restrictions on LG’s participation, requiring it to allow ZTE to take the lead. However, after ZTE failed to oppose a revised motion to amend by CyWee seeking to add new claims, LG sought and was granted an opportunity to respond. LG argued the proposed new claims were obvious in view of a combination of prior art references, one of which had not been cited by ZTE in its prior filings. Subsequently, the Board issued a final written decision finding the proposed new claims unpatentable as obvious based on the combination urged by LG and denying the motion to amend. CyWee appealed.



The Federal Circuit affirmed. CyWee’s principal argument on appeal was that the Board erred in allowing LG to oppose CyWee’s motion and to raise a new prior art reference in that opposition. On the issue of allowing LG to oppose, the Court explained that the Board’s restrictions on LG’s participation were contingent on ZTE remaining an active participant in the IPR. When ZTE agreed not to oppose CyWee’s revised motion to amend, it was not error for the Board to permit LG to respond. On the issue of the new prior art reference, the Court explained that, although 35 U.S.C. § 315(c) “does not authorize [a] joined party to bring new issues . . . into [an] existing proceeding,” a motion to amend is different. A motion to amend necessarily alters the grounds on which the IPR is based because the patent owner has introduced new claims into the proceeding. Accordingly, the Court found no error in the Board’s consideration of the new prior art reference raised by LG in deciding CyWee’s revised motion to amend. The Court further rejected CyWee’s challenge to the Board’s finding that the proposed new claims were obvious, holding substantial evidence supported the Board’s determination.

Benjamin L. Dooley

Practices

Education

Professional Affiliations