Prosecution History Estoppel in Patent Litigation: Avoiding the Presumption, Limitation of Doctrine of Equivalents

Dr. Noonan's practice involves all aspects of patent prosecution, interferences, and litigation. He represents pharmaceutical companies both large and small on a myriad of issues, as well as several universities in both patenting and licensing to outside investors. Dr. Noonan also has over 20 years of experience as a molecular biologist, and is a founding author of the Patent Docs weblog, which focuses on biotechnology and pharmaceutical patent law. He has also filed amicus briefs to district courts, the Federal Circuit and the Supreme Court involving patenting issues relevant to biotechnology.

As a Co-Chair of the firm’s Appellate Practice, Ms. Hughey is one of the firm’s appellate specialists. She is a former Federal Circuit law clerk, has handled dozens of appeals, and has argued before the Federal Circuit both as the appellant and the appellee. In addition, Ms. Hughey leverages her appellate experience by consulting on appellate cases throughout the firm, for other firms, and for her clients. As a thought leader, she writes extensively on current legal issues and is the author of a law review article on effective appellate advocacy before the Federal Circuit.

Mr. Jakes concentrates his practice on patent litigation and related counseling. He serves as lead counsel in federal district courts and the U.S. International Trade Commission (ITC), before arbitration panels, and on appeal to the U.S. Court of Appeals for the Federal Circuit. He deals mainly with computer, electronics, semiconductor, software, and medical device technologies. He has vast experience at the Federal Circuit, having argued more than 45 appeals and prepared and filed briefs in many more. He has served as both a special master and technical advisor to various U.S. district courts, assisting with claim construction and summary judgment motions on patents covering a wide variety of subjects.