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James Beard is an intellectual property attorney in Merchant &amp; Gould’s Denver office. While his practice involves all facets of intellectual property law, James focuses on patent, trade secret, and trade dress litigation for clients from a diverse range of industries.

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IP Litigation Attorney With Over 10 Years of Experience

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James brings over ten years of litigation experience on complex matters to the table. His experience includes representing high-technology household names and Fortune 500 companies in a wide range of industries such as:

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James Beard works in all stages of litigation, from general advice and counseling to complex discovery, trials, and appeals. His experience also includes motion practice, claim construction, and post-trial motion practice and appeal. In the past, he’s represented clients in district courts around the country, the International Trade Commission and the Federal Circuit Court of Appeals.

Dedicated to Creating Innovative Strategies for IP Cases

Intellectual property cases are complex and require a great depth of strategy to address each client’s overarching business goals. James prides himself on being able to find novel and innovative arguments based on complex fact patterns and aligning his clients’ business interests with their litigation needs.

Litigation requires curiosity; attorneys must enjoy seeking new challenges, arguments, and ideas to best serve their clients. As an inquisitive litigator, James is passionate about new technology as well as discovering how innovative techniques and methods can benefit his clients.

In his spare time, James enjoys downhill skiing, road cycling, home brewing, and Texas-style barbecue.

University of California - Hastings College of the Law, J.D., 2009, 

University of California - Berkeley, B.S. Political Science; Religious Studies, 2006, 

James Beard, Intellectual Property Attorney

he / him / his

Computer Technology

Consumer Products

Electronics

Manufacturing

Denver

Los Angeles

James Beard joins as partner in Litigation Practice Group.



Merchant &amp; Gould is pleased to announce that James Beard joined the firm’s Denver office as a partner on Jan. 10.



As an IP trial lawyer, James brings more than 10 years of experience to the Litigation Practice Group, representing high-technology household names and Fortune 500 companies in computer hardware and software, electronics, consumer products, biotechnology and medical device industries.&nbsp; He works on all stages of litigation, from general advice and pre-litigation counseling through complex discovery, motion practice, trials, and appeals.&nbsp; Prior to joining Merchant &amp; Gould, James worked at Sherman &amp; Howard in Denver, as well as Kirkland &amp; Ellis in San Francisco.



“James is an excellent addition to our Litigation Practice Group, as we continue expand our capabilities in Denver and across the firm,” said Chris Leonard, Managing Partner and CEO of Merchant &amp; Gould.&nbsp; “He has experience in some of Colorado’s most innovative industries, spanning a range of technologies. We are excited to have him join us.”

Merchant & Gould Hires Attorney, as Denver Office Grows

Covid-19 is proving to be the impetus the legal industry needed to embrace remote technologies, Merchant &amp; Gould attorneys write. They look at how law firms are adjusting to new technologies now and how courts may adopt new technologies going forward.



In law firms, one might guess the graduation year of attorneys based only on the technologies employed in their practices.



Lawyers graduating in the last decade may have never even seen a dictaphone in person or have experienced paper cuts from thumbing through thousands of paper documents to prepare them for production in litigation. Only recently did a small number of litigators begin using tablets instead of paper documents in depositions. Nearly all litigators firmly believed it was not possible to effectively conduct a deposition or hearing remotely.



But the Covid-19 pandemic forced change in an age-old profession, nearly overnight. As courthouses around the country continue trials and hearings, and even close completely, courts and attorneys alike have been forced to adopt new technologies at every stage of proceedings.



<h2 class="wp-block-heading">The Present: Evolution of Litigation</h2>



Some areas of civil litigation were already primed for a 21st&nbsp;century make-over. Even before the outbreak, attorneys occasionally conducted remote depositions by telephone, shipping documents in large boxes across the country to unseen witnesses. But with offices now closed and no resources or time to print and ship documents, attorneys have within a matter of weeks begun use of virtual video technology for depositions and hearings.



Several vendors already offer, and are quickly deploying and scaling, platforms that allow electronic versions of documents to be loaded in advance and published individually through the course of testimony. Screens can be shared to facilitate discussion of documents, though the ability to annotate exhibits in real-time sometimes requires creative work-arounds.



And while people around the country are already familiar with videoconferencing technology—FaceTime meet-ups and kids’ playdates held over Zoom—these technologies have seen rapid adoption in litigation as well.



With&nbsp;<a href="https://www.miamiherald.com/news/local/community/broward/article241976371.html">some amusing exceptions</a>, many courts have successfully deployed remote presence technologies to hold hearings (especially on temporary restraining orders and other matters not easily delayed), examine witnesses, and hold conferences. Balancing the need to avoid&nbsp;<a href="https://www.fbi.gov/contact-us/field-offices/boston/news/press-releases/fbi-warns-of-teleconferencing-and-online-classroom-hijacking-during-covid-19-pandemic">Zoom bombing</a>&nbsp;and interruptions to proceedings with the public’s right of access to court proceedings can be a difficult balance, especially while courts and attorneys are already grappling to deploy new technologies.



Special cases, like mediations and arbitrations, present their own challenges. These proceedings benefit from the neutral’s ability to separate the parties and discuss—frankly, if not brutally—the strengths and weaknesses of the respective arguments. But Zoom and other platforms also provide for the ability to “separate” the parties into&nbsp;<a href="https://support.zoom.us/hc/en-us/articles/206476313-Managing-Video-Breakout-Rooms">virtual breakout rooms</a>. The physical (and social) separation of the parties can dampen emotions as well, possibly providing an unexpected benefit driving quicker settlement.



<h2 class="wp-block-heading">The Future: Resumption of Trials</h2>



While remote technologies were adopted quickly in litigation before trial, how do courts handle jury trials before a vaccine is developed for Covid-19? The vast majority of district courts across the country have continued jury trials. But the Constitution mandates a right to a speedy trial. How to conduct a socially distanced jury trial remains largely unanswered.



Jury trials may present insurmountable issues, including how to effectively&nbsp;voir dire&nbsp;and empanel a jury, much less ensure that Juror No. 4 is not updating Facebook at home (or reading a New York Times article about the defendant) during cross examination. On the plus side, sequestration of juries in sensitive matters tried in districts under “stay at home” orders would prove somewhat easier.



Beyond the logistical concerns with seating a jury in the first instance, a trial will compound telepresence technology’s deficiencies. Trial litigators learn to read witnesses in person and, more importantly, the room and sculpt their examination in response to a jury’s visible reaction to the answers. Even high resolution video might conceal micro expressions, or excuse a momentary hesitation responding to questions as a lag caused by a slow connection.



New technologies, including virtual reality, might further bridge the gap, but pose their own dramatic limitations. If a video feed dampens the expressions and reactions of a witness, the technology to read, translate, and accurately reproduce a witnesses’ facial expressions in a virtual reality environment certainly do not exist yet—much less at a scale that would permit large scale, affordable deployment.



Some variation on social distancing might permit courts to resume trials, first criminal and then civil. Courts may err on the side of smaller jury panels where permitted by statute and rule, or excuse jurors with comorbidities, the elderly, or those with compromised immune systems. But whatever course courts adopt, it’s clear that resumption of jury trials will have dramatic, if not intractable, impacts on the process.



Courts around the country have bought the system time, protecting the health of judges, parties, and the public. But when operations begin to resume, as they must, new technologies will have become ingrained in the legal profession.



Travel for depositions may seem unnecessary, hearings conducted via Zoom (in a suit, of course) may be the norm. Covid-19 may not do away with dictaphones, but even attorneys fully set in their ways are sure to adopt the newest of these technologies and apply them after life resumes.



This column does not necessarily reflect the opinion of The Bureau of National Affairs, Inc. or its owners.



<h2 class="wp-block-heading">Author Information</h2>



<a href="https://www.merchantgould.com/Professionals/James-W-Beard">James W. Beard</a>&nbsp;is an IP litigation attorney and partner in Merchant &amp; Gould’s Denver office. His practice involves all facets of intellectual property law, working to tailor creative solutions to complex disputes for clients from a diverse range of industries.



<a href="https://www.merchantgould.com/Professionals/Heather-J-Kliebenstein">Heather J. Kliebenstein</a>&nbsp;is an IP litigation attorney, partner and chair of the firm’s litigation practice group in Merchant &amp; Gould’s Minneapolis office. With deep technology and IP experience, she is the go-to resource for companies requiring focused, strategic intellectual property insight.



The views of this article are those of the authors, and not the firm.



<figure class="wp-block-image"><img decoding="async" src="https://db0ip7zd23b50.cloudfront.net/dims4/default/7bc1f89/2147483647/legacy_thumbnail/80x80%3E/quality/90/?url=https%3A%2F%2Fbspot-prod.bna.com%2Forca%2Fapi%2Frendition%2Fpng%2Fim260491.png%3Fdigest%3D17e7455dce43cc4b4345bf18e1fc631a89e042bae3ed1dca7bf571313e6510d1" alt="James W.  Beard"/></figure>



<a href="/people/james-w-beard/">James W. Beard</a> &#8211; Merchant &amp; Gould P.C.



<figure class="wp-block-image"><img decoding="async" src="https://db0ip7zd23b50.cloudfront.net/dims4/default/c162fc0/2147483647/legacy_thumbnail/80x80%3E/quality/90/?url=https%3A%2F%2Fbspot-prod.bna.com%2Forca%2Fapi%2Frendition%2Fpng%2Fim260492.png%3Fdigest%3D3606c6112ecfbb172ac0f7ffb2d58aeb631d0acea2857ac3eafec55067bafccf" alt="Heather J.  Kliebenstein"/></figure>



<a href="/people/heather-j-kliebenstein/">Heather J. Kliebenstein</a> &#8211; Merchant &amp; Gould P.C.



Reproduced with permission. Published&nbsp;May 11, 2020. Copyright 2020&nbsp;The Bureau of National Affairs, Inc. 800-372- 1033. For further use, please visit&nbsp;<a href="https://protect-us.mimecast.com/s/l0MGCxklAnc1DRwWUvJki2?domain=bna.com" target="_blank" rel="noopener">http://www.bna.com/copyright-permission-request/</a>

INSIGHT: How Covid-19 Changed the Future of Litigation

Merchant &amp; Gould is pleased to announce that <a href="/people/james-w-beard/">James W. Beard</a>, a Denver partner, and <a href="/people/joseph-w-dubis/">Joe Dubis</a>, a Minneapolis associate, have been named Litigation Paralegal Co-Supervisors, effective Jan. 1, 2022. They replace <a href="/people/william-d-schultz/">Will Schultz</a> who served as Supervisor for more than five years. 



James and Joe will manage the firm’s Litigation Paralegals across Merchant &amp; Gould’s seven offices and oversee their work on depositions, witness preparation, exhibits, court preparation and research, as well as reviewing docketing and case file management procedures. &nbsp;They will also coordinate communication with and development of the group, helping the team as it implements new technologies.&nbsp; With more than 50 litigators and litigation support team members, the firm’s Litigation Practice Group has extensive IP trial and litigation experience.&nbsp;&nbsp;



“In their co-supervisor roles, James and Joe combine their litigation knowledge with their attention to detail and management skills to supervise this very important paralegal team with the Litigation Practice Group. Together, they bring their leadership and insight to the team,” said Christopher J. Leonard, Managing Director and CEO of Merchant &amp; Gould.



While his practice involves all facets of intellectual property law, James focuses on patent, copyright, and trademark and trade dress litigation for clients from a diverse range of industries. He works in all stages of litigation, from general advice and counseling to complex discovery, trials and appeals.



Joe practices all areas of intellectual property litigation proceedings including patent, copyright, and trademark litigation; appellate work; and post grant proceedings. Joseph’s motivation to become a lawyer was partly to help bridge the gap between inventors, scientists, and developers and the intellectual property protection they deserve. Since beginning as a litigation associate, Joe has developed extensive skills in the field of copyright disgorgement remedies.



Congratulations, James and Joe!

James Beard and Joe Dubis Named Litigation Paralegal Co-Supervisors

Recently, the U.S. Court of Appeals for the Federal Circuit issued a decision in <a href="https://cafc.uscourts.gov/opinions-orders/22-1493.OPINION.10-6-2023_2202155.pdf">Sisvel International S.A. v. Sierra Wireless, Inc., et al., Nos. 2022-1493, -1547 (Oct. 6, 2023). </a>



Sierra Wireless (“Sierra”) petitioned for inter partes review challenging several claims of Sisvel’s U.S. Patent No. 6,529,561 as unpatentable due to obviousness. Some claims were the subject of a single reference (Chen) challenge, while others were challenged based on the combination of Chen with other references. “The Board determined that Chen rendered claims 1-3 and 9 obvious, but upheld claims 4-8 and 10.” As to claim 5, the Board construed “means for detecting” as a means-plus-function limitation and found insufficient algorithmic structure identified in the specification. As such, the Board did not assess claims 5-8 and 10 against Chen alone because it was unable to conclude what structure is encompassed by the “means for detecting” limitation. The Board rejected the grounds based on Chen combined with other references due to insufficient motivation to combine. Both parties appealed.



&nbsp;On the issues appealed by Sisvel, the Federal Circuit affirmed. The Court held there was substantial evidence that the subject claims were invalid and rejected Sisvel’s argument that the prior art taught away from the claimed technique.&nbsp;The Court likewise rejected Sisvel’s assertion that the Board failed to adequately consider its arguments, noting that the Board explicitly acknowledged and adequately addressed them in a manner supported by substantial evidence.&nbsp;



&nbsp;On the issues appealed by Sierra, the Court reached a mixed result. Starting with Sierra’s challenge to the Board’s finding of no motivation to combine, the Court agreed with the Board that Sierra’s arguments were insufficiently specific, too generic, and inconsistent.&nbsp;The Court affirmed the Board’s rejection of what it characterized as Sierra’s “kitchen-sink of unclear and confusing motivation-to-combine arguments.”



&nbsp;On the means-plus-function issues, however, the Court vacated the Board’s decision. Specifically, the Court held that because the specification had some disclosure of structure, the Board should have considered offered expert testimony on the knowledge of a skilled artisan. The Court further held that if, on remand, the Board still concludes there is insufficient corresponding structure, it must either (1)&nbsp;determine whether the claim is indefinite or (2) resolve the prior art challenge despite potential indefiniteness, and must “clearly state that the final written decision does not include a determination of patentability of any claim that falls within the impossibility category.”

CAFC Partially Vacates Board’s IPR Decision Involving Means-Plus-Function Limitation

Recently, the U.S. Court of Appeals for the Federal Circuit issued a decision in Lite-Netics, LLC v. Nu Tsai Capital LLC et al, 2023-1146 (Feb. 17, 2023), reversing a preliminary injunction entered against the patentee enjoining communications about the lawsuit.



Lite-Netics, LLC owned two patents (Nos. 7,549,779 and 8,128,264) claiming inventions to magnetic holiday lights, which included a magnetic backing to permit attachments to metal surfaces.&nbsp; It sued Nu Tsai Capital LLC, d/b/a Holiday Bright Lights (HBL), for alleged patent infringement based on HBL’s sale of magnetic holiday string lights sold under the name “Magnetic Cord”.&nbsp; Lite-Netics sent two cease and desist letters to third parties, both before and after filing suit.



In its first cease and desist letter, sent to Lite-Netics’ customers (some of whom were also HBL customers) about allegedly infringement products, Lite-Netics did not mention HBL at all.&nbsp; Rather, it merely notified customers of “recent attempts by other companies to make and sell similar products” to those protected by the asserted patents.&nbsp; In its second cease and desist letter, sent after the lawsuit against HBL was filed, Lite-Netics noted the patent infringement lawsuit filed against HBL to “stop it from ‘making and selling infringing products’” and noted it was actively considering joining additional companies selling HBL products in the lawsuit.



Following the second letter, HBL filed a motion to dismiss and asserted various counterclaims arising under state law.&nbsp; It also filed a motion for a temporary restraining order and for a preliminary injunction prohibiting further statements by Lite-Netics accusing HBL of infringement or suggesting HBL customers might be subject to suit.&nbsp; The district court issued the TRO and, after an evidentiary hearing, granted the preliminary injunction. Lite-Netics appealed.



The Federal Circuit relied on previous authority for the proposition that federal patent law “preempts state-law tort liability for a patentholder’s good faith conduct in communications asserting infringement of its patent and warning about potential litigation,” and that such preemption only fails where “claims are based on a showing of ‘bad faith’ action in asserting infringement.”&nbsp; This requirement showing of bad faith rests, partly, on First Amendment principles.&nbsp; Turning to the patents and communications at issue, the Court engaged in a partial claim construction and doctrine of equivalents analysis and determined Lite-Netics’ patent claims were not objectively baseless.&nbsp; Accordingly, the Court vacated the district court’s order granting the preliminary injunction and remanded the case for further proceedings.

CAFC Vacates Preliminary Injunction Prohibiting Patent-Related Speech

Last week, the U.S. Court of Appeals for the Ninth Circuit issued an opinion in <a href="http://cdn.ca9.uscourts.gov/datastore/opinions/2020/09/08/17-16337.pdf" target="_blank" rel="noopener">Corbello v. Valli</a>, No. 17-16337 (Sept. 8, 2020), affirming the district court’s application of the copyright fair use doctrine.



Fans at the intersection of law and musicals have followed the case as it wound through the Courts.&nbsp; Corbello centered around allegations that the 2005 Jersey Boys musical infringed upon the copyright of the autobiography of Tommy DeVito (“the Work”). In 1988, DeVito worked with Rex Woodard to write the “whole story” of The Four Seasons.&nbsp; The resulting work, an autobiography of DeVito ghostwritten by Woodard, did not find a commercial outlet.&nbsp;



After Woodard’s widow learned that the authors of Jersey Boys had access to the Work while developing the production, she sued, naming fourteen defendants and twenty causes of action – including various copyright infringement claims.&nbsp; At trial, the jury found that Jersey Boys infringed the copyrighted Work, but the court granted judgment as a matter of law as to fair use. Corbello appealed.



The Ninth Circuit reviewed the judgment as a matter of law de novo.&nbsp; After consideration of the twelve alleged similarities between Jersey Boys and the Work, the Court affirmed. Addressing the first six alleged similarities, the Court applied the extrinsic test evaluating: (1) whether the plaintiff identified similarities between the copyrighted and accused works; (2) disregarding any similarities based on unprotectable material or authorized use; and (3) whether the remainder as a whole is entitled to a “thick” or “thin” scope of protection.&nbsp; The Court concluded each of the first six alleged similarities covered non-protectable elements and thus failed the extrinsic test.&nbsp;



For the remaining six asserted similarities, the Court adopted the doctrine of copyright estoppel.&nbsp; This doctrine holds that elements of a work presented as fact are treated as fact, even if an author later asserts infringement and contends the elements are, in fact, fictional works.&nbsp; The Court took issue with the characterization of this doctrine as a species of estoppel, given that detrimental reliance is not an element, and estoppel is “created solely by plaintiff’s affirmative action and representation that the work was factual.”&nbsp; Rebranding principle as the “asserted truths doctrine,” the Court held it applied because the Work was “expressly and repeatedly held out as a factual account” by its author. The Court further confirmed publication of the Work was not necessary for application of the “asserted truths doctrine.”

Ninth Circuit Upholds District Court’s Fair Use Decision in Jersey Boys Copyright Case

Last week, the U.S. Court of Appeals for the Eleventh Circuit issued an opinion in Royal Palm Properties LLC v. Pink Palm Properties LLC, Case No. 21-10872 (July 7, 2022), deciding as an issue of first impression that civil suits can end in a tie.



Royal Palm sued Pink Palm in 2017 for trademark infringement and Pink Palm countersued. The jury found that Pink Palm did not infringe Royal Palm’s trademark and that the trademark was not invalid. Pink Palm subsequently moved for judgment as a matter of law (JMOL), asking the district court to overrule the jury’s determination on trademark validity. The district court granted the motion and entered JMOL of invalidity in Pink Palm’s favor. Royal Palm appealed and the Eleventh Circuit reversed, reinstating the jury’s verdict. Back in the district court, Pink Palm sought costs and fees, arguing it was the prevailing party as it successfully defended against Royal Palm’s trademark infringement claim. The district court held that, in light of the jury’s split decision on the parties’ competing claims, “there was ‘no clear winner’ and, thus, no prevailing party.”



The Eleventh Circuit reviewed de novo (1) whether courts are required to name a prevailing party in every case and (2) whether the district court erred by failing to name Pink Palm the “prevailing party” in this case. On the first question, citing Supreme Court “prevailing party” precedent, the Eleventh Circuit held that “[w]hen the resolution of the parties’ legal dispute does not result in a material change in their legal relationship, there is . . . no prevailing party.” The Court further explained that the text of Rule 54(d) does not allow for multiple prevailing parties. In other words, “a district court may find (at most) one prevailing party, but it is not required to do so in every case.” On the second question, the Court reasoned that by re-instating the initial jury verdict, the district court had “restored the status quo ante” between the parties. The Court stated that the end result in this case was “precisely the kind of legal ‘tie’ where it would make no sense to force the district court to declare a prevailing party.” As neither party had “crossed the threshold to prevailing party status,” the Court affirmed the district court’s decision declining to award fees or costs to either party.



Coauthored by James Beard &amp; Emma Cohen

11th Circuit Holds There Is No Prevailing Party when a Dispute Ends in a “Tie”

Merchant &amp; Gould P.C., a national technology and trial law firm, is pleased to announce a crucial victory for our clients TYC Brother Co., Ltd. and Genera Corp. before the U.S. International Trade Commission (ITC). In a pair of investigations concerning design patents related to automotive lamps, the ITC found no violation of section 337 by TYC Brother and Genera based on Complainants Hyundai’s and Kia’s failure to satisfy the ITC’s domestic industry requirement.



Merchant and its co-counsel Holland Law LLP were retained to defend TYC Brother and Genera against twin complaints filed with the ITC by automotive manufacturers Hyundai and Kia. The complaints asserted a combined 41 design patents against TYC Brother and Genera’s replacement headlights and taillights and sought orders that would have stopped all imports and domestic sales of those products.



An early evidentiary hearing was ordered under the ITC&#8217;s early disposition pilot program to determine whether the complainants satisfied the ITC’s domestic industry requirement. These investigations are the only ones to date for which the pilot program has been used.



Merchant identified numerous flaws in the complainants’ domestic industry evidence and analysis and developed a comprehensive record supporting our clients&#8217; positions. Following the ALJ’s initial determination, Merchant obtained full review by the ITC and submitted extensive briefing.



After considerable deliberations, the ITC agreed with Merchant, concluding that the complainants failed to satisfy the domestic industry requirement as to all 41 asserted patents. As a result, the ITC terminated the investigations with findings of no violation by TYC Brother and Genera, enabling their accused lamps to remain available to U.S. consumers, securing their access to high-value replacement parts.



&#8220;We are thrilled with the ITC&#8217;s ruling in favor of our clients, TYC Brother Co., Ltd. and Genera Corp. From the outset, we were confident in our case and in the merits of our clients&#8217; position. This outcome underscores the importance of thorough domestic industry analysis in section 337 investigations. And it is a significant win, both for the Respondents and for U.S. consumers who will continue to have access to high-quality, affordable automotive parts,&#8221; said Josh Hartman, Lead Counsel at Merchant &amp; Gould.&nbsp;

ITC Rules in Favor of TYC Brother Co., Ltd., and Genera Corp., Represented by Merchant & Gould

Yesterday, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in <a href="https://cafc.uscourts.gov/opinions-orders/22-1827.OPINION.8-12-2024_2365402.pdf">Celanese Intl. Corp. v. Intl. Trade Comm’n, No. 22-01827 (August 12, 2024)</a>, which affirmed a finding of the International Trade Commission that the appellant’s asserted patent claims were invalid under the on-sale bar.&nbsp;



In the proceedings below, it was undisputed that Celanese’s patented process was in secret use in Europe before the critical date, and that Celanese had sold products made using the patented process in the United States before the critical date.&nbsp; While the patentee did not dispute that sales of products made using a secret process would preclude patentability, it argued that under the AIA the sales did not trigger the on-sale bar.



Celanese contended that when it enacted the AIA, Congress intended to alter the on-sale bar, based on changes in the text of Section 102 and other AIA sections, and selected portions of the legislative history.&nbsp; As its gating argument, the patentee argued that the use of the phrase “claimed invention” rather than the use of “invention” in the pre-AIA provision indicated a narrower scope to the on-sale bar.&nbsp; The Federal Circuit rejected the argument, finding instead that the addition of the word “claimed” did not support the foundational change advanced by Celanese and represented only a “clerical refinement of terminology.”&nbsp;



The Federal Circuit next rejected Celanese’s suggestion that the grace period for “disclosure” of the invention of Section 102(b)(1) limited Section 102(a) to sales of the patented invention itself, noting that the sales at issue did not fall under the grace period and declining to construe the additional language.&nbsp; Arguments directed to the specific species of infringement and defenses under Sections 271 and 273 were dismissed as presenting “scant merit.”



Celanese’s final argument—that the Senate’s intent to exclude private sales from the on-sale bar was demonstrated in a colloquy from the Senate’s discussion of the bill—fared no better.&nbsp; The Federal Circuit noted that individual legislators’ views do not establish congressional intent, and concluded that pre-AIA precedent left Celanese’s patents invalid based on sales of products made using the patented method.

CAFC Confirms Pre-AIA Precedent Applies to AIA: Patent on Secret Process Invalid Based On Sales of Product

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/23-1245.OPINION.3-5-2025_2476971.pdf">Lashify, Inc. v. International Trade Commission, No. 2023-1245 (Mar. 5, 2025)</a>, holding the Commission applied a legally incorrect understanding of the statutory test for the economic-prong of the domestic industry requirement of 19 U.S.C. § 1337.



In the underlying investigation, Lashify alleged numerous respondents infringed on three of Lashify’s patents related to eyelash extension systems. These patents included one utility patent (U.S. Patent No. 10,721,984) and two design patents. The Commission found no violation on two bases. First, it determined that Lashify failed to satisfy the technical prong as to one of the three patents at issue (the ’984 Patent). More substantively, it ruled that Lashify failed to meet the economic-prong requirement of the statutory test based on an insufficient showing of qualifying activities under Section 337 of the Tariff Act of 1930, which mandates a showing of a domestic industry related to the patented articles.&nbsp; &nbsp;&nbsp;



In its determination that there was no sufficient showing of domestic industry, the Commission concluded that the claimed expenses for warehousing, quality control, and distribution were properly excluded because there were “no additional steps required to make [the] product saleable” upon arrival into the United States. Costs in sales and marketing were excluded because the Commission concluded Lashify “did not meet its burden to establish significant qualifying expenses in other areas.” Lashify appealed.



The Federal Circuit concluded that the Commission’s exclusion of expenditures related to, inter alia, sales and marketing activities by the Complainant contradicted the plain language of the Commission’s authorizing statute. The statute requires, in the disjunctive, a showing of significant investments in (A) plants and equipment, (B)&nbsp;labor or capital, or (C) engineering, research, and development or licensing, and the Court determined the Commission improperly limited clause B (labor and capital). The Court held there was no statutory limitation on the types of labor or capital expended in exploitation of a patent, meaning the Commission’s exclusion of expenses for “sales and marketing” was improper. The Court separately affirmed the Commission’s finding that Lashify failed to establish domestic industry under the technical prong for the ’984 Patent. The Court vacated and remanded to the Commission to consider whether the investments in labor related to sales and marketing activities were significant as to the two design patents.

CAFC Issues Precedential Decision on Economic Prong for ITC Investigations

Litigation

Trade Secret

ITC Section 337 Investigations

Mari Muehl

Partner

Represented a distillery in a trademark opposition before the Trademark Trial and Appeal Board, including trial briefing and oral argument before the Board. The Board sustained the opposition in favor of the client, recognizing client&#8217;s rights in the mark.
Represented plaintiff and counter-defendant in litigation concerning trade secret misappropriation and multiple allegations of breach of contract. Litigated through discovery, securing an amicable settlement agreement.
Represented plaintiff and counter-defendant as lead counsel in multi-forum patent and trade dress dispute. Secured dismissals with prejudice of patent claims and six denials of institution of petitions for inter partes review, leading to an amicable settlement agreement.
Represented plaintiff and counter-defendant as lead counsel in multi-forum patent and trade dress dispute.  Secured dismissals with prejudice of patent claims, six denials of institution of petitions for inter partes review, and an amicable settlement agreement was reached dismissing all claims between the parties.
Represented an HVAC manufacturer in multi-patent dispute, that resulted in a final verdict of non-infringement in favor of the client and additional verdicts of invalidity for numerous asserted claims (representation at prior firm).
Represented a consumer products manufacturer in a multi-forum dispute spanning district court, the International Trade Commission, and the Court of International Trade, which resulted in an amicable resolution (representation at prior firm).
Represented a consumer products manufacturer in a patent dispute relating to the use of QR codes.  Secured a stipulation of dismissal with prejudice following filing of a motion to dismiss and exchange of invalidity positions (representation at prior firm).

James W. Beard

James Beard and Heather Kliebenstein, <a href="https://news.bloomberglaw.com/ip-law/insight-how-covid-19-changed-the-future-of-litigation">INSIGHT: How Covid-19 Changed the Future of Litigation</a>, Bloomberg Law (May 7, 2020)
James Beard and Heather Kliebenstein, <a href="https://www.law360.com/articles/1265709">Best Practices for Managing Litigation During Pandemic</a>, Law360 (April 23, 2020)
Chapter Editor, Annual Review of Intellectual Property Law Developments, American Bar Association, Intellectual Property Section (2011)
Karen Boyd and James Beard, Patent Marking: True AND False, 11th Annual Silicon Valley Advanced Patent Law Institute (2010)
James Beard, Note: A Better Carrot: Incentivizing Patent Reexamination, Hastings Science &amp; Technology Law Journal, Vol. 1, p. 169 (2009)
James Beard and Albert Halluin, An Analysis of CIGS Solar Cell Technology, Nanotechnology Law &amp; Business, Vol. 6, p. 19 (2009)
James Beard, The Limits of Licensing: Quanta v. LGE and the New Doctrine of Simultaneous Exhaustion, UCLA Journal of Law &amp; Technology, No. 3 (2008)
James Beard, Weeds in the Docket: Patent Continuation Reform and Its Effects on the Biotechnology Industry, Journal of the Patent &amp; Trademark Office Society, Vol. 90, p. 423 (2008)

James W. Beard

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