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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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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;

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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.

CAFC Affirms PTAB Decision Allowing Joined Party to Raise New Art

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/22-2036.OPINION.10-8-2024_2398426.pdf">AlexSam, Inc. v. Aetna, Inc., No. 2022-2036 (Oct. 8, 2024)</a>, reversing a district court’s dismissal of a patent infringement suit.



AlexSam sued Aetna alleging that Aetna’s Mastercard and VISA products infringed certain claims of U.S. Patent No. 6,000,608 directed to a “multifunction card system” capable of managing various transactions through a central processing hub. Aetna moved to dismiss arguing the claims pertaining to the Mastercard products were barred by the doctrine of prior license and the claims pertaining to the VISA products failed to state a plausible claim for relief. The district court granted the motion, and AlexSam appealed.



The Federal Circuit reversed. With respect to the claims pertaining to the Mastercard products, the Court held that the district court erred in resolving the licensing issues based upon the limited information in the complaint, its attachments, and the motion to dismiss briefing. The Court concluded that the scope of the license is narrower than the district court found it to be, and that there were open issues to be resolved before the impact of the license on the infringement claims could be fully assessed.



With respect to the claims pertaining to the VISA products, the Court held the district court erred in concluding the claims were insufficiently pled. The Court reiterated that to sufficiently plead a claim for patent infringement requires only a plausible short and plain statement of the claim showing the plaintiff is entitled to relief. The Court noted that, while the plausibility standard requires sufficient factual content to support the grounds for relief, specific facts are not necessary to support every allegation in the complaint. All that is required is sufficient detail to provide a defendant fair notice of the plaintiff’s claims. Noting it had not previously said whether it applied deferential or non-deferential review to a trial court’s categorization of a complaint’s allegations as “factual or legal, well-pled or merely conclusory,” the Court held that its review of such determinations is de novo. With that standard in mind, the Court held the district court erred in finding the allegations of AlexSam’s complaint to be merely conclusory or otherwise insufficient to state a plausible claim for relief.

Benjamin L. Dooley

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