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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;

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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;

Using Knowledgeable Guidance to Achieve Business Success&nbsp;

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<h3 class="wp-block-heading">Using Knowledgeable Guidance to Achieve Business Success&nbsp;</h3>

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;

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;

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’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;

<h3 class="wp-block-heading">Client-Centric Values in Action&nbsp;</h3>

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.

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.

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;

<h3 class="wp-block-heading">Endurance and Dedication in Practice&nbsp;&nbsp;</h3>

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’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.

<h3 class="wp-block-heading">Background and Interests</h3>

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.

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.

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

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

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.

CAFC Affirms PTAB Decision Allowing Joined Party to Raise New Art

Merchant & Gould is pleased to announce a significant victory before the U.S. International Trade Commission (ITC). The case involved MOTORTECH’s engine ignition systems, which power critical energy and industrial applications. The ITC rejected claims that MOTORTECH’s accused products infringe and denied the requested exclusion order, ensuring that MOTORTECH’s products will remain available to U.S. customers without restriction.



In February 2024, the ITC instituted an investigation (Inv. No. 337-TA-1390) based on a complaint alleging that MOTORTECH violated U.S. trade law by importing ignition systems and components that infringe on a competitor’s patent related to capacitive discharge ignition systems. The complaint accused MOTORTECH of commercializing “knock-off versions” of the competitor’s products and asked the ITC to block U.S. imports and domestic sales of MOTORTECH’s accused products.



In response, MOTORTECH vigorously contested the claims and demonstrated that its innovative, patented products fundamentally differ from the complainant’s patented ignition systems.



After an evidentiary hearing in late September, the ITC’s Chief Administrative Law Judge issued an initial determination on January 28, finding MOTORTECH’s products did not infringe. The initial determination therefore found that MOTORTECH had not violated U.S. trade law. On March 31, 2025, the ITC declined to review the initial determination and terminated the investigation.



“We have been honored to represent MOTORTECH in this matter, and we are delighted by the ITC’s decision, which vindicates MOTORTECH and reflects its position as an innovator in engine ignition systems,” said Josh Hartman, who led the Merchant team in trial. The cross-office team, led by Josh Hartman and Benjamin Tramm, included Jeff Blake, Bette Muirhead, John Winemiller, Bridget Carmichael, Zach Krenz, Ariel Howe, Ben Dooley, Sarah Wilkening, Jeremy Miller, and Lisa Amos.

Merchant & Gould Secures ITC Victory

Last week, the U.S. Court of Appeals for the Federal Circuit issued an 8-2 en banc opinion in <a href="https://www.cafc.uscourts.gov/opinions-orders/23-1101.OPINION.5-21-2025_2518737.pdf">EcoFactor, Inc. v. Google LLC, No. 2023-1101 (May 21, 2025)</a>––a patent infringement case involving smart thermostat technology.  The full Federal Circuit reversed a district court’s denial of a new trial on damages and reinstated a prior Federal Circuit panel ruling on issues other than damages.



EcoFactor sued Google in the Western District of Texas, alleging that Google’s Nest thermostats infringed claims of EcoFactor’s U.S. Patent No. 8,738,327. At trial, EcoFactor’s damages expert, David Kennedy, opined that Google should pay damages based on a per-unit royalty rate, relying on three prior lump-sum settlement licenses between EcoFactor and other companies. Kennedy asserted the settlement licenses reflected an industry-accepted per-unit rate, but the actual license agreements only stated that EcoFactor, not the licensees, believed a certain rate was reasonable—without any indication that the licensees agreed to that rate. Further, the operative provisions of the licenses expressly stated the lump-sum payments were not based on sales and did not constitute a royalty. Following trial, a jury found infringement and awarded EcoFactor $20 million in lump-sum damages. Google appealed and a Federal Circuit panel upheld the verdict in a 2-1 decision with the dissenting judge criticizing the reliability of Kennedy’s damages calculations. The full Federal Circuit later agreed to rehear the case en banc primarily to determine if Kennedy’s testimony was properly allowed.



The Federal Circuit sitting en banc reversed, finding the district court abused its discretion by admitting Kennedy’s testimony and denying Google’s motion for a new trial on damages. The Court found EcoFactor’s prior licenses did not support the conclusion that prior licensees agreed to the per-unit royalty rate Kennedy used. Likewise, the Court found the only other evidence Kennedy relied on for his asserted per-unit royalty rate––testimony by EcoFactor’s CEO regarding calculation of the lump-sum amounts in the licenses––was unsupported by evidence of actual or projected sales data. The Court concluded Kennedy’s expert opinion was not based on sufficient facts or data and prejudiced Google, noting that on the record it could not be “sure that the admission of Mr. Kennedy’s testimony did not influence the jury’s damages award.” Accordingly, the Court remanded for a new trial on damages. Finding the parties’ remaining arguments “unpersuasive,” the Court reinstated the panel’s rulings on non-damages issues.

CAFC Reverses District Court’s Denial of New Trial on Damages in Smart Thermostat Patent Litigation

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://www.cafc.uscourts.gov/opinions-orders/24-2313.OPINION.4-2-2026_2670424.pdf">Fortress Iron, LP v. Digger Specialties, Inc., No. 2024-2313 (April 2, 2026)</a>, affirming the district court’s grant of summary judgment that held two patents invalid for omission of a coinventor and denying the patentee’s motion to correct inventorship under 35 U.S.C. § 256(b).



Fortress Iron sued Digger Specialties for infringement of U.S. Patents 9,790,707 and 10,883,290, which covered a vertical cable railing panel invention. During the lawsuit, it was discovered that two individuals, Hua-Ping Huang and Alfonso Lin, had contributed to the invention but were not named as inventors. Fortress successfully added Lin as a coinventor under § 256(a), but was unable to locate Huang because he had left his employer without providing contact information. Fortress then moved for partial summary judgment to add Huang under § 256(b), while DSI moved for summary judgment of invalidity due to incorrect inventorship. The district court denied Fortress’ motion and granted DSI’s, holding the patents invalid.



The Federal Circuit affirmed. On the § 256(b) issue, which the Court identified as a case of first impression, the Court applied Chou v. University of Chicago, 254 F.3d 1347 (Fed. Cir. 2001), to find that Huang, as an omitted coinventor, was a “party concerned” under § 256(b) and therefore entitled to notice and an opportunity to be heard before the Court could order any correction. The Court rejected Fortress’ arguments that “party concerned” should be limited to those with constitutional standing and economic interests that may be adversely affected, holding that such a reading would improperly rewrite the statute. Because Fortress could not provide Huang with the required notice, it could not utilize § 256(b) to correct the patents.



On invalidity, the Court held that a patent that incorrectly lists its inventors and cannot be corrected under § 256 is invalid. Relying on 35 U.S.C. § 100(f)’s definition of “inventor,” the Court rejected Fortress’ argument that only “one true inventor” must be named, reasoning that adopting such a position would render the § 256(b) savings provision meaningless. The Court further held that the repeal of former § 102(f) did not eliminate invalidity for incorrect inventorship because long-standing precedent and relevant legislative history revealed § 102(f) simply established that non-inventors are not entitled to a patent, not that actual inventors can be omitted on a patent.

Benjamin L. Dooley

Using Knowledgeable Guidance to Achieve Business Success

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