Jackson Walker partner Nate St. Clair argued in front of a Federal Circuit panel in defense of a fracking plug patent owned by Jackson Walker’s client, Magnum Oil Tools International (“Magnum”). The defense was featured in a Law360 article titled, “USPTO Grilled over PTAB Ruling In Settled Patent Row,” (subscription required).
After Magnum accused McClinton Energy Group (“McClinton”) of infringing on their patent in district court, McClinton requested the Patent Trial and Appeal Board (PTAB) conduct an IPR review of the patent. The IPR proceedings at the patent office continued through Final Decision, despite the fact that Magnum reached a favorable settlement in the original District Court litigation.
Magnum then appealed the PTAB ruling to the Federal Circuit, and the U.S. Patent and Trademark Office (USPTO) stepped in to defend its appeals board decision that the patent was obvious in light of prior art, despite the fact that McClinton was no longer involved.
Mr. St. Clair, on rebuttal to testimony by the USPTO in-house attorney that the agency would enjoy “maximum discretion” if the case would be remanded back to the PTAB, said the IPR has “put us in a precarious position,” that was “not what Congress intended.”
Mr. St. Clair argued the PTAB improperly found the Magnum patent obvious, that the board made a “mental shortcut” in assembling the prior art to resemble Magnum’s fracking plug invention, and that the line of argument was never mentioned in McClinton’s initial petition.
Jackson Walker partners John Jackson and Christopher Rourk joined Mr. St. Clair in defending Magnum in the appeal to the Federal Circuit.
Nathaniel St. Clair counsels and represents clients in a wide range of intellectual property matters, with an emphasis on IP litigation, IP licensing and portfolio management, infringement and invalidity analyses, patentability studies, risk assessments, and general IP counseling, particularly in the electrical and mechanical arts. His experience also includes counseling clients regarding patent and trademark procurement before the U.S. Patent and Trademark Office and in providing strategic counsel to clients in the sports, entertainment, media, and publishing industries. Nate received his B.S. in Electrical Engineering from the University of Michigan, Ann Arbor, and his J.D. from Marquette University.
For more than 17 years, John Jackson has represented a wide variety of clients in intellectual property and cybersecurity/data privacy matters in federal and state courts throughout the country, and in the International Trade Commission. John earned certification as a Certified Information Privacy Professional through The International Association of Privacy Professionals. The CIPP credential, offered since 2004, gives privacy professionals the opportunity to demonstrate their knowledge of privacy laws and regulations and how to apply them. He received his B.B.A. degree from Davenport College and his J.D. degree from the University of Illinois College of Law.
Christopher J. Rourk has extensive experience with complex legal project management to help clients protect their intellectual property in diverse technology fields, including the semiconductor, software and telecom fields. He has handled large portfolio intake and management for trademark and patent prosecution matters in response to requests for proposals, has prepared and filed more than 600 patent applications, has prosecuted in excess of 300 patents to issuance, and manages client domestic and international patent and trademark portfolios. He has also assisted with numerous intellectual property transactional matters, including licensing, mergers and acquisitions, funding transactions, and joint ventures. Chris received his B.S.E.E. degree from the University of Florida, his M. Eng. Degree from Rensselaer Polytechnic Institute, and his J.D. degree from Georgetown University Law Center.