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Home - Merchant & Gould P.C.

Peter Gergely is the Managing Partner of Merchant &amp; Gould's New York City office.

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He is a trial attorney who leads teams in patent, trademark, copyright, trade secret, and commercial litigation in federal and state courts throughout the United States and in inter partes review (IPR) trials before the Patent and Trial Appeal Board. Peter also advises clients in licensing matters, including managing their enforcement and licensing programs and defending them from non-practicing entities.

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Peter Gergely has experience successfully representing clients from a range of industries:

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Peter is the firm’s Assistant General Counsel and performs&nbsp;pro bono trademark and litigation work for nonprofit organizations. He enjoys traveling, outdoor activities, skiing, and spending time with his family.

University of Denver College of Law, J.D., 1994, 

Bowdoin College, A.B. Biochemistry and Environmental Studies (Coordinate Major), 1989

Peter Gergely, Intellectual Property Attorney

Electronics

Computer Technology

Software & Information Technology

Media & Entertainment

Telecommunications

Semiconductors

Consumer Products

Manufacturing

Medical Devices

Pharmaceuticals

Food & Beverage

Industrial Chemistry

Alternative Energy

Automotive & Powersports

New York

Denver

Merchant &amp; Gould, a national intellectual property (IP) law firm, is pleased to announce that the following&nbsp;attorneys&nbsp;have been included in&nbsp;The Best Lawyers in America® 2013.&nbsp;



<h3 class="wp-block-heading">Merchant &amp; Gould Best Lawyers</h3>



<ul>
<li>Jack Clifford for Intellectual Property Litigation</li>



<li>Andrew Ehard for Intellectual Property Litigation</li>



<li>Peter A. Gergely for Intellectual Property Litigation and Patent Litigation</li>



<li>Charles Golla for Copyright Law</li>



<li>Allen W. Hinderaker for Intellectual Property Litigation and Patent Litigation</li>



<li>Scott W. Johnston for Intellectual Property Litigation</li>



<li>Daniel W. McDonald for Intellectual Property Litigation and Patent Litigation</li>



<li>Christopher Schulte for Intellectual Property Litigation and Patent Litigation</li>



<li>Christopher J. Sorenson for Patent Litigation</li>



<li>Anthony R. Zeuli for Copyright Law, Intellectual Property Litigation, Patent Litigation, Patent Law and Trademark Law</li>
</ul>



“It is with great pride that we recognize the extraordinary work being done by these individuals,” said Brian H. Batzli, CEO and Managing Director of Merchant &amp; Gould.



Best Lawyers is based on an exhaustive peer-review survey in which thousands of leading attorneys throughout the country cast more than 3.1 million votes on the legal abilities of other lawyers in their specialties. Because of the rigorous and transparent methodology used by Best Lawyers, and because lawyers are not required or allowed to pay a fee to be listed, inclusion in Best Lawyers is considered a singular honor.

Merchant & Gould Attorneys Named 2013 Best Lawyers in America®

Firm Also Recognizes Nine Rising Stars



<hr class="wp-block-separator has-alpha-channel-opacity"/>



Merchant &amp; Gould, an intellectual property law firm, today announced that 16 of the firm&#8217;s attorneys are named Super Lawyers in 2011. The attorneys are recognized for excellence in intellectual property law and IP litigation. Each year, no more than five percent of lawyers are selected in each state.



The rigorous selection process includes a statewide survey of lawyers, independent evaluation of candidates by the attorney-led research staff, a peer review of candidates by practice area and a good-standing and disciplinary check. In addition, Merchant &amp; Gould also announced that nine of the firm&#8217;s attorneys were recognized as Rising Stars by their peers according to the Super Lawyers® organization.



Rising Stars are attorneys 40 and under who have been practicing law for 10 years or less. They are selected annually based on nominations from other attorneys and an independent review board. No more than 2.5 percent of attorneys are selected for this prestigious honor in any state.



&#8220;We take great pride in congratulating the attorneys who have been selected for these considerable honors,&#8221; said Brian H. Batzli, CEO and managing director of Merchant &amp; Gould. &#8220;The firm is lucky to have them as part of our team.&#8221;



The following Merchant &amp; Gould attorneys have been named Super Lawyers and Rising Stars in 2011:



Denver



<ul>
<li>Gregg I. Anderson</li>



<li>Peter A. Gergely</li>
</ul>



Knoxville



<ul>
<li>John T. Winemiller</li>
</ul>



Minneapolis



<ul>
<li>Brian H. Batzli</li>



<li>Steven C. Bruess</li>



<li>John A. Clifford</li>



<li>Karen A. Fitzsimmons</li>



<li>Allen W. Hinderaker</li>



<li>Gregory C. Golla</li>



<li>Rachel C. Hughey (RS)</li>



<li>Scott W. Johnston</li>



<li>Robert A. Kalinsky (RS)</li>



<li>Alan W. Kowalchyk</li>



<li>Thomas J. Leach (RS)</li>



<li>Daniel W. McDonald</li>



<li>Brent E. Routman</li>



<li>David G. Schmaltz</li>



<li>William D. Schultz (RS)</li>



<li>Anthony R. Zeuli</li>



<li>Rachel K. Zimmerman (RS)</li>
</ul>



Super Lawyers is a service of the Thomson Reuters Legal Division based in Eagan, Minn. Due to the rigorous and transparent methodology used by Super Lawyers, and because lawyers are not required or allowed to pay a fee to be listed, inclusion in Super Lawyers is considered a singular honor.

16 Merchant & Gould Attorneys Named 2011 Super Lawyers

Merchant &amp; Gould, a national intellectual property (IP) law firm, is pleased to announce that the following&nbsp;attorneys&nbsp;have been included in&nbsp;The Best Lawyers in America® 2013.&nbsp;



Best Lawyers&nbsp;compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their colleagues.&nbsp; Since lawyers are not permitted to purchase their rankings or pay a fee to participate, a&nbsp;Best Lawyers&nbsp;listing is considered an unbiased honor.



DENVER, CO



<ul>
<li>Peter A. Gergely &#8211; Litigation (Intellectual Property), Litigation (Patent)</li>
</ul>



MINNEAPOLIS, MN



<ul>
<li>John A. Clifford &#8211; Litigation (Intellectual Property), Patent Law, Trademark Law</li>



<li>Charles E. Golla &#8211; Copyright Law</li>



<li>Allen W. Hinderaker &#8211; Litigation (Intellectual Property), Litigation (Patent)</li>



<li>Scott W. Johnston &#8211; Litigation (Intellectual Property), Trademark Law</li>



<li>Daniel W. McDonald &#8211; Litigation (Intellectual Property), Litigation (Patent), Trademark Law</li>



<li>Christopher J. Schulte &#8211; Litigation (Intellectual Property), Litigation (Patent)</li>



<li>Anthony R. Zeuli &#8211; Copyright Law, Litigation (Intellectual Property), Litigation (Patent), Patent Law, Trademark Law</li>



<li>Rachel Zimmerman Scobie &#8211; Litigation (Intellectual Property)</li>
</ul>



<a href="http://www.bestlawyers.com/" target="_blank" rel="noopener">www.bestlawyers.com</a>

Merchant & Gould Attorneys Included in The Best Lawyers in America © 2016

<div class="details_summary_text">
Merchant &amp; Gould is pleased to announce that the following attorneys have been included in The Best Lawyers in America® 2017. Best Lawyers compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their colleagues. Since lawyers are not permitted to purchase their rankings or pay a fee to participate, a Best Lawyers listing is considered an unbiased honor.
DENVER, CO
<ul>
<li>Peter A. Gergely – Litigation &#8211; Intellectual Property, Litigation &#8211; Patent</li>
</ul>
MINNEAPOLIS, MN
<ul>
<li>John A. Clifford – Litigation &#8211; Intellectual Property, Patent Law, Trademark Law</li>
<li>Charles E. Golla – Copyright Law</li>
<li>Allen W. Hinderaker – Litigation &#8211; Intellectual Property, Litigation &#8211; Patent</li>
<li>Scott W. Johnston – Litigation &#8211; Intellectual Property, Trademark Law</li>
<li>Daniel W. McDonald – Litigation &#8211; Intellectual Property, Litigation &#8211; Patent, Trademark Law</li>
<li>Christopher J. Schulte – Litigation &#8211; Intellectual Property, Litigation &#8211; Patent</li>
<li>Rachel Zimmerman Scobie – Litigation &#8211; Intellectual Property</li>
<li>Anthony R. Zeuli – Copyright Law, Litigation &#8211; Intellectual Property, Litigation &#8211; Patent, Patent Law, Trademark Law</li>
</ul>
<a href="http://www.bestlawyers.com/" target="_blank" rel="noopener">www.bestlawyers.com</a>
</div>

Merchant & Gould Attorneys Named 2017 Best Lawyers®

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in The Best Lawyers in America® 2018.



Best Lawyers compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their colleagues. Since lawyers are not permitted to purchase their rankings or pay a fee to participate, a Best Lawyers listing is considered an unbiased honor.



DENVER, CO



<ul>
<li> Peter A. Gergely – Litigation &#8211; Intellectual Property, Litigation &#8211; Patent</li>
</ul>



MINNEAPOLIS, MN



<ul>
<li> John A. Clifford – Litigation &#8211; Intellectual Property, Patent Law, Trademark Law</li>



<li> Charles E. Golla – Copyright Law</li>



<li> Andrew S. Ehard – Litigation &#8211; Intellectual Property, Trademark Law*</li>



<li> Allen W. Hinderaker – Litigation &#8211; Intellectual Property, Litigation – Patent</li>



<li> Rachel C. Hughey – Litigation &#8211; Intellectual Property**</li>



<li> Scott W. Johnston – Litigation &#8211; Intellectual Property, Trademark Law</li>



<li> Daniel W. McDonald – Litigation &#8211; Intellectual Property, Litigation &#8211; Patent, Trademark Law</li>



<li> Christopher J. Schulte – Litigation &#8211; Intellectual Property, Litigation &#8211; Patent</li>



<li> Christopher J. Sorenson – Litigation – Patent</li>



<li> Rachel Zimmerman Scobie – Litigation &#8211; Intellectual Property</li>



<li> Anthony R. Zeuli – Copyright Law, Litigation &#8211; Intellectual Property, Litigation &#8211; Patent, Patent Law, Trademark Law</li>
</ul>



* Andrew Ehard recognized by Best Lawyers in Trademark Law for the first time this year



** Rachel Hughey recognized by Best Lawyers in Litigation &#8211; Intellectual Property for the first time this year. Also listed in Best Lawyers for the first time this year (2018).



<a href="https://www.bestlawyers.com/" target="_blank" rel="noopener">www.bestlawyers.com</a>

Merchant & Gould Attorneys Named Best Lawyers® 2018

Merchant &amp; Gould, a national intellectual property (IP) law firm, is pleased to announce that the following&nbsp;attorneys&nbsp;have been included in The Best Lawyers in America® 2019.&nbsp;



Peter Gergely, the managing partner of the New York office, received Best Lawyers®&nbsp;2019 Patent Law &#8220;Lawyer of the Year&#8221; Award in Denver.



Best Lawyers compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their colleagues.&nbsp; Since lawyers are not permitted to purchase their rankings or pay a fee to participate, a Best Lawyers listing is considered an unbiased honor.



Atlanta



<ul>
<li>Jeff Blake (*) &#8212; Patent Law</li>
</ul>



Denver



<ul>
<li>Peter A. Gergely (2010) [10 &#8212; Litigation &#8211; Intellectual Property, Litigation &#8211; Patent</li>
</ul>



Minneapolis



<ul>
<li>John A. Clifford (2013) [5] &#8212; Litigation &#8211; Intellectual Property, Patent Law, Trademark Law</li>



<li>Andrew S. Ehard (2013) [5] &#8212; Litigation &#8211; Intellectual Property</li>



<li>Charles E. Golla (2013) [5] &#8212; Copyright Law</li>



<li>Allen W. Hinderaker (2010) [10] &#8212; Litigation &#8211; Intellectual Property, Litigation &#8211; Patent</li>



<li>Rachel C. Hughey (2018) &#8212; Litigation &#8211; Intellectual Property</li>



<li>Scott W. Johnston (2010) [10] &#8212; Litigation &#8211; Intellectual Property, Trademark Law</li>



<li>Daniel W. McDonald (2013) [5] &#8212; Litigation &#8211; Intellectual Property, Litigation – Patent, Trademark Law</li>



<li>Christopher J. Schulte (2013) [5] &#8212; Litigation &#8211; Intellectual Property, Litigation &#8211; Patent</li>



<li>William D. Schultz (*) &#8212; Litigation &#8211; Intellectual Property</li>



<li>Rachel Zimmerman Scobie (2014) [5] &#8212; Litigation &#8211; Intellectual Property</li>



<li>Christopher J. Sorenson (2013) [5] &#8212; Litigation &#8211; Patent</li>



<li>Anthony R. Zeuli (2007) [10] &#8212; Copyright Law, Litigation &#8211; Intellectual Property, Litigation – Patent, Patent Law, Trademark Law</li>
</ul>



(Year) First year the lawyer was listed in any practice area. (*) Lawyers who are listed for the first time in Best Lawyers. [#] Anniversary plaque for which lawyer is eligible (5, 10, 15, 20, 25, or 30 years).



About Best Lawyers®&nbsp;



Since it was first published in 1983,&nbsp;Best Lawyers®&nbsp;has become universally regarded as the definitive guide to legal excellence.&nbsp;Best Lawyers&nbsp;lists are compiled based on an exhaustive peer-review evaluation. 83,000 industry leading lawyers are eligible to vote (from around the world), and we have received almost 10 million evaluations on the legal abilities of other lawyers based on their specific practice areas around the world. For the 2018 Edition of&nbsp;The Best Lawyers in America©, 7.4 million votes were analyzed, which resulted in more than 58,000 leading lawyers being included in the new edition. Lawyers are not required or allowed to pay a fee to be listed; therefore inclusion in&nbsp;Best Lawyers&nbsp;is considered a singular honor.&nbsp;Corporate Counsel&nbsp;magazine has called&nbsp;Best Lawyers&nbsp;&#8220;the most respected referral list of attorneys in practice.&#8221;&nbsp; <a href="http://www.bestlawyers.com">www.bestlawyers.com</a>

Merchant & Gould Attorneys included in The Best Lawyers in America® 2019

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in&nbsp;The Best Lawyers in America©&nbsp;2020.



Best Lawyers&nbsp;compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their colleagues. Since lawyers are not permitted to purchase their rankings or pay a fee to participate, a&nbsp;Best Lawyers&nbsp;listing is considered an unbiased honor.



<h2 class="wp-block-heading">ATLANTA, GA</h2>



Jeff Blake&nbsp;&#8211; Patent Law



<h2 class="wp-block-heading">DENVER, CO</h2>



Peter A. Gergely&nbsp;– Litigation &#8211; Intellectual Property, Litigation &#8211; Patent



<h2 class="wp-block-heading">MINNEAPOLIS, MN</h2>



John A. Clifford&nbsp;– Litigation &#8211; Intellectual Property, Patent Law, Trademark Law Charles E. Golla&nbsp;– Copyright Law Andrew S. Ehard&nbsp;– Litigation &#8211; Intellectual Property, Trademark Law Allen W. Hinderaker&nbsp;– Litigation &#8211; Intellectual Property, Litigation – Patent Rachel C. Hughey&nbsp;– Litigation &#8211; Intellectual Property Scott W. Johnston&nbsp;– Litigation &#8211; Intellectual Property, Trademark Law Daniel W. McDonald&nbsp;– Litigation &#8211; Intellectual Property, Litigation &#8211; Patent, Trademark Law Christopher J. Schulte&nbsp;– Litigation &#8211; Intellectual Property, Litigation &#8211; Patent Christopher J. Sorenson&nbsp;– Litigation – Patent Rachel Zimmerman Scobie&nbsp;– Litigation &#8211; Intellectual Property Anthony R. Zeuli&nbsp;– Copyright Law, Litigation &#8211; Intellectual Property, Litigation &#8211; Patent, Patent Law, Trademark Law

Merchant & Gould Attorneys Named Best Lawyers© 2020

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in&nbsp;The Best Lawyers in America©&nbsp;2021.



Best Lawyers&nbsp;compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their colleagues. Since lawyers are not permitted to purchase their rankings or pay a fee to participate, a&nbsp;Best Lawyers&nbsp;listing is considered an unbiased honor.



ATLANTA, GA Jeff Blake&nbsp;&#8211; Patent Law



DENVER, CO Peter A. Gergely&nbsp;– Litigation &#8211; Intellectual Property, Litigation &#8211; Patent



MINNEAPOLIS, MN John A. Clifford&nbsp;– Litigation &#8211; Intellectual Property, Patent Law, Trademark Law Andrew S. Ehard&nbsp;– Litigation &#8211; Intellectual Property, Trademark Law Allen W. Hinderaker&nbsp;– Litigation &#8211; Intellectual Property, Litigation – Patent Rachel C. Hughey&nbsp;– Litigation &#8211; Intellectual Property Scott W. Johnston&nbsp;– Litigation &#8211; Intellectual Property, Trademark Law Heather J. Kliebenstein&nbsp;–&nbsp;Litigation &#8211; Intellectual Property Thomas J. Leach&nbsp;–&nbsp;Litigation &#8211; Intellectual Property Daniel W. McDonald&nbsp;– Litigation &#8211; Intellectual Property, Litigation &#8211; Patent, Trademark Law Christopher J. Schulte&nbsp;– Litigation &#8211; Intellectual Property, Litigation &#8211; Patent William D. Schultz &#8211; Litigation &#8211; Intellectual Property Christopher J. Sorenson&nbsp;– Litigation – Patent Rachel Zimmerman Scobie&nbsp;– Litigation &#8211; Intellectual Property Anthony R. Zeuli&nbsp;– Copyright Law, Litigation &#8211; Intellectual Property, Litigation &#8211; Patent, Patent Law, Trademark Law

MERCHANT & GOULD ATTORNEYS NAMED BEST LAWYERS 2021

New York Office Grows Local Leadership



Merchant &amp; Gould is pleased to announce the promotion of <a href="/people/luciano-a-ricondo/">Luciano A. Ricondo</a> to partner in its <a href="/offices/new-york/">New York office</a>, effective Jan. 1, 2022.  



Luciano helps his clients to strategically grow their patent portfolios and obtain comprehensive intellectual property protection for new products and businesses. &nbsp;He drafts and prosecutes domestic and foreign patent applications in the mechanical, electrical, computer, and software-related arts. Luciano also prepares and prosecutes domestic and foreign industrial designs. &nbsp;While his practice expands across multiple industries, Luciano’s practice primarily focuses on medical devices and software including healthcare communications connecting healthcare professionals with patients. In addition to patent prosecution, he provides litigation support in a variety of areas, including drafting opinion letters regarding patentability, freedom to operate, and patent infringement.



“We are excited to expand our leadership and promote Luciano, who exemplifies the professionalism and experience that help our firm to grow and be successful, especially when our clients need us most,” said <a href="/people/peter-a-gergely/">Peter Gergely</a>, managing partner of Merchant &amp; Gould’s New York office. “His promotion brings greater depth to our Mechanical, Electrical and Software Practice Groups in some of the most inventive industries in New York and across the country.”

Merchant & Gould Promotes Luciano A. Ricondo to Partner

Merchant &amp; Gould’s Pro Bono Committee announced the firm’s 2022 Pro Bono Awards to attorneys who have dedicated their time to helping their communities through pro bono legal services and their deep commitment.



A special congratulations goes to Bill Hughet (D.C.) who performed a total of 97 pro bono hours in 2022, spread out over multiple clients.&nbsp;He is the recipient of Merchant &amp; Gould’s 2022 Pro Bono Award.



In addition, Merchant &amp; Gould recognizes a few other people who went above and beyond in pro bono this year. Tom Johnson (Minneapolis) and Michael Erbele (Minneapolis) both recorded over 80 pro bono hours in 2022; and several other professionals recorded more than 40 pro bono hours, including Joe Gess (D.C.), Samuel Scholz (Minneapolis), Peter Gergely (New York), Rob Lyksett (Minneapolis), and Rachel Scobie (Minneapolis). In total, M&amp;G professionals recorded more than 1,100 pro bono hours last year, making an immense impact in several states around the country.



Congratulations to Bill and all the attorneys who continue to make our communities even better by providing pro bono legal services!

Merchant & Gould Congratulates Bill Hughet as the Firm’s 2022 Pro Bono Award Winner

Decision holds certain patents invalid for claiming unpatentable subject matter.



Merchant &amp; Gould is pleased to announce that its client Patch My PC, LLC, a fast-growing patch management software company, won an important decision in a patent case on April 13 against Ivanti, Inc. &nbsp;



Ivanti sued Patch My PC, alleging that it infringed three Ivanti patents. The patented technology is related to methods and systems for discovering software updates and then updating computers with the software as needed, across a network.



Patch My PC moved to dismiss the complaint, asserting that all three patents were invalid as unpatentable under 35 USC 101. The federal district court in Colorado granted the motion.



&nbsp;In finding the claims invalid under 35 USC 101, the court found the claims were directed at the abstract idea of “adding automation to a well-established manual process of identifying and fixing software bugs on computers.” The court also found that each representative claim of each patent “simply utilizes known components . . . in understood and conventional ways.” Ivanti has until April 20, 2023, to show cause why the case should not be dismissed in its entirety.



This decision is important to enterprises that manage networks. Automated systems for updating PCs and other computers are widespread to ensure network security and proper operation. Ivanti’s portfolio may have presented a threat to other patch system providers in the industry, and to customers who need to make sure their network of computers has updated software. If the patents are invalid, as the court found, the patents cannot be asserted against anyone else.



According to Patch My PC CEO Justin Chalfant, “We are very pleased by the result.&nbsp;We had clearly communicated to Ivanti our belief that the case was without merit even before Ivanti brought suit, and again before we filed our motion to dismiss. This result allows Patch My PC to keep its focus on taking care of its customers, which has always been its strength.”



Merchant &amp; Gould represented Patch My PC, and its litigation team crossed the firm’s Minneapolis, Denver, New York, and D.C.-area offices, including the following attorneys: Daniel W. McDonald, Peter A. Gergely, Ryan J. Fletcher, Kristen M. Souther, Peter S. Selness, and Paige S. Stradley, and technical advisor Yidi Wu.

Merchant & Gould Successfully Represents Patch My PC in Winning Patent Case with a Motion to Dismiss

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/22-1269.OPINION.6-12-2023_2140695.pdf">Parus Holdings, Inc. v. Google LLC, Nos. 2022-1269, -1270 (June 12, 2023)</a>, affirming two final written decisions of the Patent Trial and Appeal Board.



Parus owned patents directed to an interactive voice system that allows a user to request information from a voice web browser. Google, and others, petitioned for inter partes review asserting that the challenged claims of the Parus patents would have been obvious based on a number of prior art references, including a PCT publication (“Kovatch”) and a U.S. patent application publication (“Kurganov-262”). The Board instituted the IPR and issued a final written decision holding that both Kurganov-262 and Kovatch qualified as prior art and rendered the challenged claims unpatentable as obvious. Parus appealed.



The Federal Circuit affirmed. The Court first addressed Parus’s argument that the Board erred in holding that Kovatch qualified as prior art because it improperly declined to consider Parus’s arguments and evidence that the challenged patents were conceived and reduced to practice prior to Kovatch’s priority date. The Court held that Parus had failed to meet its burden of production on that issue because it simply presented a large volume of evidence to the Board without explanation or identification of the relevant portions. Meeting the burden of production on antedating, the Court explained, requires both specific citation to the relevant record evidence and an explanation of the significance of that evidence in briefs. Parus’s incorporation by reference of a lengthy claim chart allegedly evidencing conception of the challenged claims did not meet this standard.



The Court next addressed Parus’s argument that the Board lacked statutory authority to address a written description challenge, and that it erred in holding the challenged claims lacked written description support and were, therefore, not entitled to an earlier asserted priority date that would have disqualified Kurganov-262 as prior art. The Court held that the Board does have the authority to address written description arguments for purposes of determining whether a reference qualifies as prior art. The Court further held that the Board’s conclusion on lack of written description in the earlier application was supported by substantial evidence.



Having rejected Parus’s arguments that Kovatch and Kurganov-262 did not qualify as prior art, and finding Parus’s remaining arguments unpersuasive, the Court affirmed the decision of the Board.



Coauthored by Peter Gergely &amp; Sherry Li.

CAFC Affirms PTAB Decision of Unpatentability

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2015.OPINION.8-28-2020_1644541.pdf">Egenera, Inc. v. Cisco Systems, Inc.</a>, Case Nos. 2019-2015, 2019-2387 (Fed. Cir. Aug. 28, 2020), addressing 1) whether a claim that lacks “means” language can be interpreted as a means-plus-function claim; and 2) whether judicial estoppel arose from a petition to correct inventorship.



The Court analyzed the claim term “logic to modify,” which did not employ “means” language, to determine whether means-plus-function interpretation would be merited under 35 U.S.C. § 112(f). The absence of “means” language creates a rebuttable presumption that means-plus-function claiming does not apply. Upon a challenge that a claim term either fails to “recite sufficiently definite structure” or recites “function without reciting sufficient structure for performing that function,” the presumption may be rebutted. The Court observed that Egenera did not explain how its “logic”—even assuming it connotes some possible structure in the general sense of software, firmware, or circuitry—amounts to “sufficient structure for performing [the modification] function.” Accordingly, the Court held that “logic to modify” was properly construed by the district court as a means-plus-function claim.



The judicial estoppel issue arose after Egenera filed a petition to correct inventorship with the PTO seeking to remove a named inventor from the patent-in-suit. Following the district court’s claim construction, Egenera asked the district court to add the removed inventor back to the patent. The district court determined that judicial estoppel prevented Egenera from relisting the inventor and held the patent invalid for failing to name all inventors. The Federal Circuit reversed. The test for judicial estoppel examines (1) whether a party’s earlier and later positions are “clearly inconsistent”—that is, “mutually exclusive”; (2) whether the party “succeeded in persuading a court to accept” the earlier position; and (3) whether the party would “derive an unfair advantage or impose an unfair detriment” on the other side if not estopped. The Court held Egenera’s positions were not clearly inconsistent because the district court’s intervening claim construction decision merited Egenera’s request to add back an inventor to the patent. The Court also held that a successful petition to correct inventorship brought before the PTO, without more, does not qualify as a “persuading a court” to accept a position. Finally, after considering the arguments of the parties, the Court found no unfair advantage or unfair detriment in the absence of estoppel.



&nbsp;

CAFC Issues Decision Addressing Means-Plus-Function Claiming and Judicial Estoppel

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Niazi Licensing Corp. v. St. Jude Medical S.C., Inc., No. 21-1864 (Apr. 11, 2022), reversing a holding that certain patent claims were indefinite, but affirming rulings of no induced infringement, discovery sanctions excluding technical and damages experts based on their reliance on undisclosed facts, and the exclusion of Niazi’s damages expert’s opinion under Daubert.



Niazi sued St. Jude for infringement of a patent directed to a double catheter and method for using the same for the treatment of heart failure. During claim construction, the terms “resilient” and “pliable” were held indefinite. Summary judgment of no induced infringement of method claim 11 was granted based on St. Jude performing the accused steps of claim 11 in a different order than claimed. Rule 37 sanctions were entered because Niazi’s experts relied on facts not disclosed during discovery. Finally, Niazi’s damages expert’s opinions were excluded because of failure to apportion damages between infringing and non-infringing uses and improperly including leads in the royalty base. Niazi appealed.



The Federal Circuit reversed the indefiniteness ruling, holding that the terms “resilient” and “pliable” were definite because the intrinsic and extrinsic evidence provided “objective boundaries for those of skill in the art” and “inform[ed] a skilled artisan, with reasonable certainty” of their meaning. The Court noted that the dependent claims and the written description provided examples of “resilient” materials that would be understood by a person of ordinary skill in the art. The written description also provided numerous examples of “pliable” materials. Extrinsic evidence of dictionary definitions confirmed that “resilient” and “pliable” would have broad but understood meanings to a skilled artisan.



The Court affirmed the ruling of no induced infringement, holding that no reasonable juror could find direct infringement of method claim 11 because St. Jude’s instructions for use did not describe performing the accused steps in the order claimed. Regarding experts, the Court held it was not an abuse of discretion to 1) exclude them based on their reliance on facts not disclosed in fact discovery; and 2) exclude Niazi’s damages expert’s opinion as unreliable for failure to properly apportion damages between infringing and non-infringing uses and for improperly including leads in the royalty base.

CAFC Issues Partial Reversal Due to Error in Indefiniteness Determination

Last week, the U.S. Court of Appeals for the Federal Circuit issued an order in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1543.OPINION.8-12-2021_1818061.pdf" target="_blank" rel="noopener">PersonalWeb Technologies LLC v. Google LLC</a>, No. 20-1543 (Aug. 12, 2021), affirming a district court decision that certain claims of three patents were ineligible for patenting, and therefore invalid, under 35 U.S.C. § 101.



PersonalWeb’s patents concern data-processing systems for receiving a request containing a content-based identifier for a data item, comparing the content-based identifier to a plurality of values, and granting or disallowing access to the data item based on the comparison.&nbsp;



PersonalWeb sued multiple companies for patent infringement. The cases were stayed pending several IPRs that ultimately found all challenged claims invalid over the prior art. After the stay was lifted, the defendants in the patent lawsuits moved for judgment on the pleadings that the remaining asserted claims were ineligible under 35 U.S.C. § 101, which motion was granted.



On appeal, the Federal Circuit noted that under 35 U.S.C. § 101 patent-eligible subject matter is defined as “any new and useful process, machine, manufacture, or composition of matter, or any new or useful improvement thereof” and that Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014), held that this provision excepted laws of nature, natural phenomena, and abstract ideas. In reviewing patent eligibility, the Court applied the Alice two-step analysis to evaluate: 1) whether the claims at issue are directed to a patent-ineligible concept, such as an abstract idea; and 2) whether, considering the elements of each claim both individually and as an ordered combination, any additional elements transform the nature of the claim into a patent-eligible application. At step one, the Court found that the data-management functions at issue “can be performed in the human mind” or “using a pencil and paper,” and therefore the claims were directed to an abstract idea. The Court cited prior cases finding that content-based identifiers were abstract. The Court applied this analysis to each of the primary claim elements. At step two, the Court rejected PersonalWeb’s argument that the use of cryptographic hashes set forth an inventive concept, holding that “merely adding computer functionality to increase the speed or efficiency of the process does not confer patent eligibility on an otherwise abstract idea.”

CAFC Affirms Summary Judgment of Invalidity Under 35 U.S.C. § 101

In In re: Apple Inc., No. 22-162 (Nov. 8, 2022), the CAFC granted Apple’s petition for a writ of mandamus and ordered the United States District Court for the Western District of Texas (WDTX) to vacate its scheduling order and postpone fact discovery until the resolution of Apple’s motion to transfer. The CAFC held that the district court abused its discretion by requiring the parties to litigate the substantive merits of the case pending a decision on Apple’s motion.



Apple was sued in the WDTX for patent infringement. It moved to transfer to the United States District Court for the Northern District of California on grounds of convenience of the parties and witnesses under 28 U.S.C. § 1404(a). Apple submitted an employee declaration in support of the motion. Before the close of venue discovery, Apple moved for leave to supplement its motion with additional employee declarations, stating that the plaintiff did not oppose a “reasonable continuance” of the transfer proceedings. The WDTX district court granted the motion for leave, but sua sponte ordered the parties to complete fact discovery on the substantive merits of the case and then re-brief the motion to transfer. Apple filed a petition for writ of mandamus requesting that the CAFC order the district court to vacate its scheduling order, promptly rule on Apple’s pending transfer motion, and stay all proceedings on the merits until transfer was resolved.



The CAFC granted Apple’s petition. It first noted that “[a]lthough a district court has discretion in managing its own docket . . . an appellate court may grant mandamus to correct a clearly arbitrary refusal to act on a longstanding pending transfer motion.” The Court held that “it is a clear abuse of discretion to require the parties to expend additional party and court resources litigating the substantive matters of the case while Apple’s motion to transfer unnecessarily lingers on the docket.” The Court did not decide whether merits discovery may ever proceed pending a transfer motion, “only that decision of a transfer motion must proceed expeditiously as the first order of business and that venue discovery must proceed immediately to enable such a prompt decision of the transfer motion.”&nbsp;



Accordingly, the CAFC ordered the district court to vacate its amended scheduling order and postpone fact discovery and other substantive proceedings until after consideration of Apple’s motion for transfer. &nbsp;

CAFC Holds Delay in Deciding Transfer Motion is an Abuse of Discretion

CAFC Designates Informational Matter Doctrine Decision Precedential

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in&nbsp;The Best Lawyers in America©&nbsp;2025.



Best Lawyers compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their colleagues. Since lawyers are not permitted to purchase their rankings or pay a fee to participate, a Best Lawyers listing is considered an unbiased honor.



Atlanta, GA



<ul>
<li>Jeffrey D. Blake 
<ul>
<li>Patent Law</li>
</ul>
</li>
</ul>



Minneapolis, MN



<ul>
<li>John A. Clifford 
<ul>
<li>Advertising Law</li>



<li>Litigation &#8211; Intellectual Property</li>



<li>Patent Law</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Andrew S. Ehard 
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Thomas R. Johnson 
<ul>
<li>Advertising Law</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>Scott W. Johnston 
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Heather J. Kliebenstein 
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Thomas J. Leach 
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Brent E. Routman 
<ul>
<li>Advertising Law</li>
</ul>
</li>



<li>Christopher J. Schulte 
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>William D. Schultz 
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Christopher J. Sorenson 
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>Anthony R. Zeuli 
<ul>
<li>Copyright Law</li>



<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>



<li>Patent Law</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Rachel Zimmerman Scobie 
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>
</ul>



New York, NY



<ul>
<li>Peter A. Gergely 
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>
</ul>



Alexandria, VA



<ul>
<li>John S. Kern 
<ul>
<li>Litigation &#8211; Patent</li>



<li>Patent Law</li>
</ul>
</li>



<li>Daniel J. Pereira 
<ul>
<li>Biotechnology and Life Sciences Practice</li>



<li>Patent Law</li>
</ul>
</li>



<li>Eric W. Schweibenz 
<ul>
<li>Patent Law</li>
</ul>
</li>
</ul>

Merchant & Gould Attorneys Recognized by Best Lawyers® in 2025 in America.

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in&nbsp;The Best Lawyers in America©&nbsp;2022.



Best Lawyers&nbsp;compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their colleagues. Since lawyers are not permitted to purchase their rankings or pay a fee to participate, a&nbsp;Best Lawyers&nbsp;listing is considered an unbiased honor.



Atlanta, GA



<ul>
<li>Jeffery D. Blake
<ul>
<li>Patent Law</li>
</ul>
</li>
</ul>



Minneapolis, MN



<ul>
<li>John A. Clifford
<ul>
<li>Litigation- Intellectual Property</li>



<li>Patent Law</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Andrew S. Ehard
<ul>
<li>Litigation- Intellectual Property</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Scott W. Johnston


<ul>
<li>Litigation- Intellectual Property, </li>
</ul>



<ul>
<li>Trademark Law</li>
</ul>
</li>



<li>Heather J Kliebenstein
<ul>
<li>Litigation- Intellectual Property </li>
</ul>
</li>



<li>Thomas J. Leach
<ul>
<li>Litigation- Intellectual Property</li>
</ul>
</li>



<li>Brent E. Routman
<ul>
<li>Advertising Law</li>
</ul>
</li>



<li>Christopher J. Schulte
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>William D. Schultz
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Christopher J. Sorenson
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>Anthony R. Zeuli
<ul>
<li>Copyright Law</li>



<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>



<li>Patent Law</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Rachel Zimmerman Scobie
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>
</ul>



New York, NY



<ul>
<li>Peter A. Gergely
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>
</ul>

Merchant & Gould Attorneys Recognized by Best Lawyers® in 2022 in America.

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in The Best Lawyers in America© 2023.



Best Lawyers&nbsp;compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their colleagues. Since lawyers are not permitted to purchase their rankings or pay a fee to participate, a&nbsp;Best Lawyers&nbsp;listing is considered an unbiased honor.



Atlanta, GA



<ul>
<li>Jeffery D. Blake
<ul>
<li>Patent Law</li>
</ul>
</li>
</ul>



Minneapolis, MN



<ul>
<li>John A. Clifford
<ul>
<li>Litigation- Intellectual Property</li>



<li>Patent Law</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Andrew S. Ehard
<ul>
<li>Litigation- Intellectual Property</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Scott W. Johnston




<ul>
<li>Litigation- Intellectual Property, </li>
</ul>



<ul>
<li>Trademark Law</li>
</ul>
</li>



<li>Heather J Kliebenstein
<ul>
<li>Litigation- Intellectual Property </li>
</ul>
</li>



<li>Thomas J. Leach
<ul>
<li>Litigation- Intellectual Property</li>
</ul>
</li>



<li>Brent E. Routman
<ul>
<li>Advertising Law</li>
</ul>
</li>



<li>Christopher J. Schulte
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>William D. Schultz
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Christopher J. Sorenson
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>Anthony R. Zeuli
<ul>
<li>Copyright Law</li>



<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>



<li>Patent Law</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Rachel Zimmerman Scobie
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>
</ul>



New York, NY



<ul>
<li>Peter A. Gergely
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>
</ul>

Merchant & Gould Attorneys Recognized by Best Lawyers® in 2023 in America.

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in&nbsp;The Best Lawyers in America©&nbsp;2024.



Best Lawyers&nbsp;compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their colleagues. Since lawyers are not permitted to purchase their rankings or pay a fee to participate, a&nbsp;Best Lawyers&nbsp;listing is considered an unbiased honor.



Atlanta, GA



<ul>
<li>Jeffery D. Blake
<ul>
<li>Patent Law</li>
</ul>
</li>
</ul>



Minneapolis, MN



<ul>
<li>John A. Clifford
<ul>
<li>Litigation- Intellectual Property</li>



<li>Patent Law</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Andrew S. Ehard
<ul>
<li>Litigation- Intellectual Property</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Scott W. Johnston






<ul>
<li>Litigation- Intellectual Property, </li>
</ul>



<ul>
<li>Trademark Law</li>
</ul>
</li>



<li>Thomas R. Johnson
<ul>
<li>Advertising Law</li>
</ul>
</li>



<li>Heather J Kliebenstein
<ul>
<li>Litigation- Intellectual Property </li>
</ul>
</li>



<li>Thomas J. Leach
<ul>
<li>Litigation- Intellectual Property</li>
</ul>
</li>



<li>Brent E. Routman
<ul>
<li>Advertising Law</li>
</ul>
</li>



<li>Christopher J. Schulte
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>William D. Schultz
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Christopher J. Sorenson
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>Anthony R. Zeuli
<ul>
<li>Copyright Law</li>



<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>



<li>Patent Law</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Rachel Zimmerman Scobie
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>
</ul>



New York, NY



<ul>
<li>Peter A. Gergely
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>
</ul>

Merchant & Gould Attorneys Recognized by Best Lawyers® in 2024 in America.

Litigation

Licensing

Electrical & Software

Chemical & Life Sciences

Mechanical

Appellate

Trade Secret

Wanda V. Welcome

Partner

<h3>Patent</h3>
Currently defending outdoor clothing retailer from patent infringement claims asserted against breathable material products.  All asserted claims held unpatentable in IPR and upheld on appeal.
Led trial team in three consolidated IPR proceedings resulting in invalidation of the two listed Orange Book patents at issue for FDA-approved antifungal drug.
Successfully defended brewer and beverage can manufacturer from patent infringement claims asserted against beer cans.
Defended medical device manufacturer from patent infringement claims asserted by competitor against stent-grafts. Patent held not infringed. Affirmed on appeal.
Defended manufacturer of radio-frequency (RF) networked devices from 48 asserted patent infringement claims.  Case dismissed.
Enforced patent and trademark infringement claims involving shoe design and logo against distributor and celebrity promoter.
Defended manufacturer of industrial dust control systems from patent infringement claims. Patents held not infringed, invalid, and procured by inequitable conduct.
Defended software company from patent infringement and breach of license agreement claims involving database software.
Defended manufacturer from patent infringement claims involving oxygen scavenging polymers for use in beverage containers.
Represented semiconductor company in large case involving numerous patents directed to semiconductor circuitry and processing.
<h3>Trademark</h3>
Represented mortgage company in several trademark litigation enforcement cases.
Defended recreational vehicle component manufacturer from trade dress infringement claims.
Defended importer of casual footwear from patent infringement and trade dress claims in district court and International Trade Commission (ITC) cases.
Enforced trademark and copyright infringement claims against competitor in aftermarket automotive products.
<h3>Copyright</h3>
Defended wildlife artist from copyright infringement claims. Case dismissed on summary judgment.
<h3>Trade Secret</h3>
Successfully defended window hardware manufacturer in two-week trial. Plaintiffs claimed $72 million in damages, plus punitive damages. Judgment entered in favor of client on all claims.
Represented software developer in three trade secret cases involving customized Microsoft software.  Defeated motion for temporary restraining order.
Defended biotechnology company from misappropriation of trade secret claims directed to biomarker for ischemia. Defeated motion for preliminary injunction after week-long trial.
<h3>Commercial</h3>
Successfully defended healthcare automation company from breach of warranty claims seeking $115 million in damages.  Obtained defense verdict after five week jury trial by Zoom.
Defended auditor from False Claims Act allegations that it should have detected alleged underreporting of gas royalties to federal government.  Case dismissed.
Currently defending successful bidder on airport concessions contract from antitrust and related claims brought by competitor.
Prosecuted and defended claims arising from ERP software implementation project.
<h3>Criminal</h3>
Obtained jury verdict acquittal of individual charged with felony carrying mandatory five year prison term, notwithstanding 89% conviction rate of United States Attorney’s Office in similar cases and alleged written and verbal confessions of defendant.

Peter A. Gergely

The Best Lawyers in America© for Litigation – Patent, and Litigation – Intellectual Property, 2010 &#8211; 2025 
The Best Lawyers in America, Lawyer of the Year, Litigation – Patent, Denver, 2014 &amp; 2019 
Super Lawyers, 2011-present

Peter A. Gergely

Practices

Industries

Representative Cases

Patent

Education

Admissions

Awards & Recognition