New England IP Blog

Covering intellectual property developments in New England, and other developments that impact New England companies.

Alexander Roan

Alexander Roan

Associate

Alexander Roan is an associate in the Litigation Department and a member of the Firm’s Patent Law Group.

Alex works with a wide variety of clients, from startups to large corporations, in a broad range of intellectual property matters, including patent and trademark prosecution, patent infringement actions in U.S. District Court, Section 337 investigations before the U.S. International Trade Commission, and post-grant patent trials before the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board.

Alex has gained technical expertise in a variety of areas through both research and industry experience, including acoustics, combustion, materials science, electrochemistry, manufacturing and software. As a graduate student, he designed and operated prototype solid oxide electrolytic cells to study the feasibility of environmentally friendly manufacturing of solar-grade silicon. Prior to joining Proskauer, Alex was an engineer for Fresenius Medical Care, where he served as a software quality and validation subject matter expert on domestic and international software development and deployment teams. His first-hand experience at Fresenius in resolving complex FDA compliance concerns and in handling FDA enforcement actions has provided him with the ability to efficiently handle intellectual property matters that intersect with FDA regulatory issues.

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Subpoenas on Customers Blocked in MRI Patent Case

In a recent multi-district case involving patent infringement allegations relating to MRI imaging, Judge Stearns granted motions for protective orders directed to untimely-served subpoenas on third party customers. The case stems from an action filed by NeuroGrafix and others against Brainlab, Inc., Brainlab AG, and Brainlab Medzinische Computersysteme GmbH (collectively, “Brainlab”), among other defendants, alleging infringement of its U.S. … Continue Reading

Planned Motion to Dismiss Insufficient to Extend Rule 26(f) Deadlines

In an ongoing patent infringement case involving patents for floor-mounted electrical outlet housings, a federal court in Connecticut recently denied a Joint Motion for a Discovery Dispute Conference, signaling the court’s hesitation to delay the initiation of discovery pursuant to Rule 26(f) merely because a defendant represents that it intends to move to dismiss a … Continue Reading

Supreme Court Limits Foreign Reach of the U.S. Patent Act

The supply from the United States of a single component of an invention, for assembly of the invention abroad, is not patent infringement under Section 271(f)(1) of the Patent Act. This is according to a unanimous ruling yesterday by the United States Supreme Court. The court found significant limitations on the reach of Section 271(f)(1), a law … Continue Reading

Federal Circuit Turns up the Heat on PTAB on Motions to Amend

The U.S. Court of Appeals for the Federal Circuit is increasingly scrutinizing the handling of Motions to Amend in Inter Partes Review (IPR) proceedings at the Patent Trial and Appeal Board (“PTAB,” or the “Board”). One case on this issue, In re Aqua Products, Inc., is currently pending before the full Federal Circuit. The court recently … Continue Reading

In Autoimmune Disorder Diagnosis Patent Case, Section 101 Motion to Dismiss Denied

In a recent decision from the District of Massachusetts, Judge Indira Talwani denied a motion to dismiss a patent suit under Rule 12(b)(6) for failure to state a claim due to patent ineligibility under 35 U.S.C. § 101 . In their motion, defendants Mayo Collaborative Services LLC and Mayo Clinic (collectively “Defendants”) argued that the … Continue Reading
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