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Alexander B. Englehart provides vital legal guidance to clients navigating the complex terrain of patent prosecution and litigation. His broad experience encompasses a variety of technologies, including mobile devices, wireless networking, sporting goods, automotive parts, metallurgy, and cosmetics. In addition, he assists clients in effectively managing potential risks during the development and rollout of innovative products and services.

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As Senior Counsel based in Merchant &amp; Gould's Washington D.C. Area office, Alex is a member of the Litigation Practice Group. His work encompasses all facets of patent litigation in U.S. district courts, the International Trade Commission (ITC), and the U.S. Patent and Trademark Office (USPTO). Alex provides practical advice on the intersection of district court, ITC, and post-grant proceedings at the USPTO. His caseload often involves high-stakes litigation paired with post-grant proceedings.

During law school, Alex served as a judicial extern for Judge Randall Rader of the U.S. Court of Appeals for the Federal Circuit and Magistrate Judge Bernard Zimmerman of the U.S. District Court for the Northern District of California. He has also lectured on ITC practice at the University of Washington's Center for Advanced Study and Research on Innovation Policy and to the Japanese Intellectual Property Association.

University of Washington School of Law, J.D.

University of California - Berkeley, B.A. Computer Science and Math

Washington, D.C. Area

<h2 class="wp-block-heading">Five new hires bring decades of experience, leadership and innovation</h2>



Merchant &amp; Gould welcomes Daniel J. Pereira, Ph.D., John S. Kern, Eric W. Schweibenz, and Donald R. McPhail, as Partners and Alexander B. Englehart, as Of Counsel in its Washington D.C. Area office. The new additions will expand Merchant &amp; Gould’s capabilities in handling International Trade Commission (ITC) cases, complex IP litigation, post-grant proceedings, patent prosecution, and strategic IP portfolio management, as well as increase its presence in Japan, China, Taiwan and Korea.



“We are continually investing in serving our client base worldwide, and this group will deepen our bench nationally and increase our existing presence in Japan, China, Taiwan and Korea,” said Heather Kliebenstein, Managing Director and Partner at Merchant &amp; Gould. “Each of these experienced attorneys brings the right cross-culture experience and technical background that we want at Merchant &amp; Gould.”



All five hires look forward to continuing their work in the D.C. area, serving clients worldwide. Merchant &amp; Gould’s long-standing reputation for stability, creative legal solutions, collaboration and technologically advanced systems attracted the latest hires.&nbsp;



“Transitioning to Merchant &amp; Gould was the right move for us and our clients. We are excited to join such a dynamic firm that has superior technical strength, advanced internal systems and processes, extensive trial experience, and breadth of knowledge in all areas of intellectual property,” said Pereira. Dr. Pereira most recently served as the Managing Partner and previously led the Chemical Practice Group at Oblon. Mr. Kern and Mr. Schweibenz formerly led the Electrical/Mechanical and Litigation Practice Groups, respectively.



One of the oldest full-service intellectual property and trial law firms in America, Merchant &amp; Gould evolves with technology, just like its client base. Through harnessing and pioneering advanced legal solutions, they have established themselves as an indispensable partner in delivering exceptional legal guidance and service to their clients.



“When we look to add new talent to our team at Merchant &amp; Gould, we want to find people who have the right mindset — forward-thinking, collaborative and client-focused,” Kliebenstein shared. “Each of these attorneys embodies those values and will carry our firm’s legacy forward.”

Strategic Power Move: Merchant & Gould Lures Quintet of Highly-Experienced Attorneys to Supercharge DC Office and Accelerate Asia Expansion

Recently, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in&nbsp;<a href="https://cafc.uscourts.gov/opinions-orders/23-1147.OPINION.5-23-2024_2322401.pdf">Speck v. Bates, No. 23-1147 (May 23, 2024)</a>, reversing the Patent Trial and Appeal Board’s holding that a party’s claims in an interference were not time-barred under pre-AIA 35 U.S.C. § 135(b)(1).



By way of background, an interference is a PTAB proceeding that involves determining which of two or more parties was the first to invent the subject matter claimed in competing pre-America Invents Act (AIA) patents or patent applications.&nbsp; The particular interference here concerned U.S. Patent Application No. 14/013,591, owned by Bates, and U.S. Patent No. 8,257,305, owned by Speck. In the interference proceeding, Speck filed a motion arguing that the claims of Bates’s ’591 application were time-barred under pre-AIA 35 U.S.C. § 135(b)(1), which provides that “[a] claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted.”&nbsp; The PTAB denied Speck’s motion and ultimately awarded priority to Bates. &nbsp;Speck appealed.



The Federal Circuit reversed.&nbsp; The Court first found that there has been a longstanding exception to the plain language of § 135(b)(1) when the patent applicant files its claim after the one-year cutoff but had already been claiming substantially the same invention before the one-year cutoff.&nbsp; Thus, the issue before the Court was whether Bates’s new claims presented after the cutoff were directed to substantially the same invention as claims Bates had filed before the cutoff.&nbsp; The PTAB had found that Bates’s pre-cutoff and post-cutoff claims were directed to substantially the same invention (and thus the post-cutoff claims were not time-barred) based on its determination that the post-cutoff claims were not materially narrower than the pre-cutoff claims.&nbsp; The Court concluded that approach was insufficient for determining substantial similarity.&nbsp; Specifically, the Court held that the PTAB should have applied a “two-way test” to also check if the pre-cutoff claims were materially narrower than the post-cutoff claims.&nbsp; The Court further held that, here, Bates’s pre-cutoff claims were materially narrower than Bates’s post-cutoff claims as a matter of law.&nbsp; Thus, Bates’s post-cutoff claims were time-barred.

CAFC Reverses PTAB’s Time-Bar Decision in Patent Interference

Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in <a href="https://www.cafc.uscourts.gov/opinions-orders/23-1178.OPINION.4-3-2025_2493030.pdf">In re: Forest, No. 23-1178 (Apr. 3, 2025)</a>, dismissing for lack of jurisdiction an appeal from the Patent Trial and Appeal Board’s decision affirming an examiner’s rejection of certain claims of an individual inventor’s pending patent application.



By way of background, Mr. Donald Forest filed U.S. Patent Application No. 15/391,116 (’116 application) in 2016.&nbsp; But the ‘116 application claimed priority to an earlier application filed in 1995—meaning that if the ’116 application were to issue as a patent, its expiration date would be twenty years later, in 2015.&nbsp; In other words, the patent would already be expired on the day it issued.&nbsp; In view of this timeline, the USPTO argued that Mr. Forest’s appeal should be dismissed for lack of jurisdiction.&nbsp; In particular, the USPTO argued that Mr. Forest had no personal stake in the appeal because he could not be granted any enforceable rights by a patent grant with zero term. In response, Mr. Forest argued that he would still acquire “provisional rights” under 35 U.S.C. § 154(d) if the Patent Office issued him an expired patent, and therefore he had a personal stake in the appeal.



The Federal Circuit agreed with the USPTO and dismissed Mr. Forest’s appeal.&nbsp; Under 35 U.S.C. § 154(d), a patent grant confers limited “provisional rights” in addition to the exclusionary rights that exist during the patent’s term. Specifically, a patentee whose application was previously published has the right to obtain a reasonable royalty from the time the application is published until the patent issues. Mr. Forest argued that under the plain language of the statute, he should still be able to enforce provisional rights during the time between when his application is published and the time when the application issues as a patent—even if the patent would already be expired (and thus not carry any exclusionary rights) at the time it issued.&nbsp; The Court analyzed the statute and legislative history and concluded that Mr. Forest’s reading was incorrect.&nbsp; Rather, the Court held, provisional rights are granted only when a patent would issue with exclusionary rights (i.e., would issue before its expiration date).&nbsp; The Court, therefore, dismissed Mr. Forest’s appeal because he would not be entitled to any rights—exclusionary or provisional—based on any patent that issued on his ‘116 application.

CAFC Dismisses Individual Inventor’s Appeal for Lack of Jurisdiction

Litigation

ITC Section 337 Investigations

Electrical & Software

Rhondalyn Dulic

Of Counsel

Alexander B. Englehart

<ul>
<li>American Bar Association</li>
<li>American Intellectual Property Law Association (AIPLA)</li>
</ul>

Professional Affiliations

Named Rising Star by Managing Intellectual Property Magazine (2019, 2021-2022)

Alexander B. Englehart

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