Craig is a successful trial attorney who helps clients protect and defend their inventions in complex intellectual property litigation. Technology companies of all sizes, from Fortune 50 companies to start-ups, have relied on him to take care of their most sensitive intellectual property matters. He has represented entities such as Foursquare Labs, MIT, Bose and Avid Technology in intellectual property litigation throughout the country and the world. Craig has handled matters before federal district courts and appellate courts, as well as the International Trade Commission (ITC). He also handles post-grant review proceedings before the U.S. Patent & Trademark Office, including inter partes review and reexaminations.
Craig’s litigation strategy and management have resulted in many pre-trial victories, helping to avoid expensive trials and, in one case, averting potential damages in excess of a billion dollars.
Successfully defended a biotechnology device manufacturer in patent litigation, obtaining summary judgment of no infringement, which was affirmed by the Court of Appeals for the Federal Circuit.
Successfully defended a global software company in patent litigation, obtaining summary judgment of no infringement.
Successfully defended a humidity measurement manufacturer in trade secret litigation, defeating motion for preliminary injunction.
Successfully defended a mobile application provider in patent litigation, winning motion to dismiss because the patents-in-suit claimed unpatentable subject matter.
When trial is necessary, Craig has achieved impressive results for his clients.
Successfully defended a chemical manufacturer in an ITC litigation investigation, obtaining final decision that the asserted patent was not infringed and invalid.
With only four days’ notice, prepared for and led trial team in patent infringement jury trial, which resulted in a mid-trial settlement.
Craig’s practice also focuses on advising clients on intellectual property matters, including acquisitions, strategic management of patent, trademark and copyright portfolios, due diligence, licensing, and pre-suit investigations. He has extensive licensing experience, including initiating programs to monetize patent and copyright portfolios. His client-focused approach to litigation and licensing puts a premium value on the client’s input and insight and ensures a close and mutually beneficial relationship.
Former Principal at Fish & Richardson, P.C.
“Jurisdiction Based on Internet Activity: An Update” Technology Law Alert, Vol. 27, No. 9/May 2001.
“Dichloromethane biodegradation under nitrate-reducing conditions,” 69 Water Environment Research 1 (Jan/Feb 1997).
“Menelaus Mining, Inc. v. Ilion Insurance Co., The Sudden and Accidental Exception to the Pollution Exclusion Clause in Standard Comprehensive General Liability Policies” 20 New York University School of Law Moot Court Casebook 4 (1996).
“Kinetics of Dichloromethane Biodegradation under Aerobic and Nitrate-Reducing Conditions” Water Environment Federation’s 67th Annual Conference, 1994.
Arendi U.S.A., Inc. and Arendi Holding Limited v. Microsoft Corp. – (D. R.I.) Successfully defended Microsoft in patent litigation involving Microsoft Office “smart tags” technology. Won jury verdict of non-infringement — the first ever for Microsoft — after a two week trial. Verdict selected by The National Law Journalas one of the top ten defense verdicts. Won summary affirmance of jury verdict by the Court of Appeals for the Federal Circuit.
HyperPhrase Technologies, LLC and HyperPhrase, Inc. v. Microsoft Corp. – (W.D. Wis.) Successfully defended Microsoft in patent litigation involving Microsoft Office XP. Plaintiffs alleged damages of over $2,000,000,000. Won case by obtaining summary judgment of non-infringement on the eve of trial.
Mobile Commerce Framework, Inc. v. Foursquare Labs, Inc. – (S.D. CA) Lead counsel for Foursquare in patent litigation involving a subscription based system for presenting merchant information to a mobile device. Case settled.
Silver State Intellectual Technologies, Inc. v. Foursquare Labs, Inc. – (D. NV) Lead counsel for Foursquare in patent litigation involving a method of providing contact information. Case settled.
Blue Calypso, Inc. v. Foursquare Labs, Inc. – (E.D. TX) Lead counsel for Foursquare in patent litigation involving peer-to-peer advertising.
Evolutionary Intelligence v. Foursquare Labs, Inc. – (E.D. TX) Lead counsel for Foursquare in patent litigation involving an apparatus for manipulating information on a computer system using containers. Won motion to dismiss because the patents-in-suit claimed unpatentable subject matter under 35 U.S.C. § 101.
Michael Sandborn & Mark Sandborn Partnership et al v. Avid Technology, Inc. – (D. Mass.) Lead counsel for Avid in patent litigation involving musical notation software. Case settled.
DataTern, Inc. v. Teradata Corporation – (D. Mass.) Lead counsel for Teradata in patent litigation involving object model mapping and runtime engine for employing relational database with object oriented software.
Abridge Technology v. Cashstar, Inc. et al. – (E.D. TX) Lead counsel for Cashstar in patent litigation relating to methods for conducting electronic commerce transactions using electronic tokens. Case settled.
Classco Inc. v. Personal Communication Devices, LLC et al. – (D. Mass.) Represented PCD in patent litigation relating to a calling party announcement apparatus. Case settled.
Hank Spacone v. Microsoft Corp. – (N.D. Cal.) Successfully defended Microsoft in patent litigation involving Microsoft Office XP and Office 2003. Won case by obtaining summary judgment of non-infringement and invalidity.
AllVoice Computing v. L&H Holdings USA – (D. Mass.) Defended L&H in patent litigation involving speech recognition software. Successfully defeated plaintiff’s motion for preliminary injunction, and obtained summary affirmance of decision by the Federal Circuit.
NetRatings, Inc. v. Unica Corporation and Sane Solutions, Inc. – (S.D. N.Y.) Defended Unica and Sane Solutions in patent litigation involving methods for tracking the use of network resources. Case settled.
Mallory Ventures v. Microsoft Corporation – (D. Mass.) Defended Microsoft in patent litigation involving accessing Internet websites. Case dismissed after limited discovery relating to prior art.
Ingenio, Inc. v. Acacia Patent Acquisition Corporation, Acacia Research Corporation and Credit Card Control Fraud Corporation; Card Control Fraud Corporation v. Pilgrim Telephone, Inc. – (N.D. Cal.) Lead counsel for Pilgrim Telephone in patent litigation involving methods for providing credit authorizations. Case settled.
NetRatings, Inc. v. WebTrends, Inc. – (D. Ore.) Defended WebTrends in patent litigation involving methods for tracking the use of network resources. Case settled.
Arendi Holding Limited v. Microsoft Corporation and Dell, Inc. – (D. Del.) Represented Microsoft and Dell in patent litigation involving “smart tags” technology. Won summary judgment of no provisional damages.
Netcraft Corporation v. AT&T Mobility LLC, Cellco Partnership and T-Mobile USA, Inc. – (D. Del.) Represented plaintiff Netcraft in patent litigation involving Internet billing methods. Case settled favorably.
Millipore Corporation et al. v. AllPure Technologies, Inc. – (D. Mass.) Lead counsel for AllPure in patent litigation involving device for introduction and withdrawal of a medium into and from a container. Won summary judgment of no infringement. Won affirmance of decision by the Court of Appeals for the Federal Circuit.
Animal Care Systems, Inc. v. Hydropac/Lab Products, Inc. – (D. Co.) Lead counsel for Animal Care Systems in patent litigation involving fluid delivery system for animal cages. Case settled.
Streamlight, Inc. v. Longhorn Tactical, LLC – (E.D. PA) Lead Counsel for Longhorn Tactical in patent litigation involving firearm mountable lights. Case settled.
Blastrac, N.A., Inc. v. Cooper Floor Services and Lisa Cooper – (Oklahoma) Lead counsel for Blastrac in contract dispute involving surface preparation equipment. Case settled.
Cricket Productions and DTR Far East Associates v. RSGA International – (D. Mass.) Lead counsel for RSGA in patent jury trial involving renewable energy flashlights. Case settled during trial, after evidence of patent invalidity was presented to the jury.
Velcro Industries B.V. and Velcro USA, Inc. v. Taiwan Paiho Limited – (D. N.H.) Represented Velcro in patent litigation involving hook and loop fasteners. Won key claim construction on all disputed claim terms. Case settled on the eve of trial.
Cricket Productions and DTR Far East Associates v. Viatek Consumer Products Group, Inc. – (D. Mass.) Lead counsel for Viatek in patent litigation involving renewable energy flashlights. Case settled.
ICC Innovative Concepts Corp. and Leh Chu Enterprise Co., Ltd., v. Viatek Consumer Products Group, Inc. and Lou Lentine – (D.CT) Lead counsel for defendants in patent and copyright litigation concerning flashlights. Case settled.
Insight Technology Inc. v. SureFire, LLC – (D. N.H.) Represented Insight in patent litigation involving slide-on lights for handguns. Case settled.
Insight Technology Inc. v. Glock Inc. and Glock Ges.m.b.H. – (D. N.H.) Represented Insight in patent litigation involving slide-on lights for handguns. Case settled.
Velcro Industries B.V. and Velcro USA, Inc. v. Taiwan Paiho Limited and Radio Shack Corporation – (D. Del.) Represented Velcro in patent litigation involving hook and loop fasteners. Case settled.
Baum Research and Development Company, Inc. v. University of Massachusetts at Lowell – (W.D. Mich.) Represented the University of Massachusetts in breach of contract and patent litigation involving baseball bat testing equipment.
3-D Matrix, Inc., 3-D Matrix, Ltd. and Massachusetts Institute of Technology v. Menicon Co., Ltd. and B-Bridge International, Inc. – (D. Mass.) Lead counsel for 3-D Matrix and MIT in patent litigation relating to self-assembling peptides.
OdorStar Technology, LLC and Star Brite Distributing, Inc. v. CLO2 Systems et al. – (S.D. FL) Lead counsel for CLO2 Systems in patent litigation involving a device for producing chlorine dioxide. Plaintiff dismissed all claims with prejudice.
In the Matter of Certain Sucralose, Sweeteners Containing Sucralose, and Related Intermediate Compounds Thereof – (International Trade Commission) Lead counsel for JK Sucralose in ITC investigation concerning intermediate compounds related to the manufacture of sucralose. Won decision of non-infringement and patent invalidity after seven day trial on the merits.
Tate & Lyle Sucralose Inc v. Hebei Sukerui Science and Technology Co., Ltd., Hebei Chemical Engineering and Industry Research Institute, Hebei Research Institute of Chemical Industry, Forbest International USA, LLC, Beijing Forbest Trade Co., Ltd., JSZ International, Inc., et al. – (C.D. Ill.) Successfully defended group of defendants in patent litigation involving a process for making sucralose. Plaintiff voluntarily dismissed its complaint after defendants filed motions to dismiss for lack of standing and lack of jurisdiction.
Tate & Lyle Technology Limited And Tate & Lyle Sucralose, Inc., v. Beijing Forbest Chemical Co., Ltd., Beijing Forbest Trade Co., Ltd., Forbest International USA, LLC, Hebei Research Institute of Chemical Industry, Hebei Sukerui Science and Technology, Co., Ltd., JSZ International, Inc., et al. – (C.D. Ill.) Lead counsel for group of defendants in patent litigation involving several patents relating to sucralose. Case dismissed.
Bose Corporation v. Able Planet, Inc. – (D. Mass.) Lead counsel to Bose in patent litigation involving headphones. Case settled.
Brica, Inc., et al. v. Monahan Products, LLC – (W.D.N.C) Lead counsel to Monahan Products in patent litigation involving covers for infant seats. Case dismissed with prejudice.
Control Resources v. Delta Electronics and LSI Logic Storage Systems – (D. Mass.) Defended Delta Electronics and LSI in patent litigation involving cooling fans for computers. Case dismissed with prejudice.
Harris Corp. v. Siemens AG – (E.D. Vir.) Defended Siemens in patent litigation involving 26 patents related to semiconductor memory technologies. Successfully obtained invalidity and non-infringement summary judgment rulings. Case settled.
ACT Manufacturing v. Alcatel – (D. Mass.) Defended Alcatel in adversary proceeding in bankruptcy court involving ADSL line card agreement. Case settled.
Represented Siemens in action to stop DRAM counterfeiters. Successfully obtained ex parte seizure order, temporary restraining order, and preliminary injunction.
Exergen Corporation v. Kidz-Med, Inc., American Scientific Resources, Inc. and Tecnimed, SRL – (D. Mass.) Represented Exergen in patent litigation involving thermometers.
The Gillette Company, Braun GmbH and Gillette Commercial Operations North America v. Skyvision Inc., Dane Robinson and Water Pik, Inc. – (D. Colo.) Represented Gillette and Braun in patent litigation involving oral care products. Case settled.
Sakharam Mahurkar and Tyco Healthcare Group L.P. v. Arrow International – (N. D. Ill.) Represented Tyco in patent litigation involving hemodialysis catheters. Case settled on the eve of trial.
ADE v. KLA-Tencor – (D. Del.) Represented ADE in patent litigation involving optical inspection systems for silicon wafers and software for displaying measurement data. Succeeded in having claims to two patents dismissed on summary judgment; at trial, jury held that remaining patent claims were invalid.
Evoqua Water Technologies LLC v. M.W. Watermark LLC, et at. (W.D. Michigan) Lead counsel for Evoqua Water Technologies in trade secret litigation.
Edgetech Instruments, Inc. v. Roscid Technologies, Inc., et al. (Mass. Superior Court) Lead counsel for Roscid and defendants in trade secret litigation. Successfully defeated motion for preliminary injunction. Plaintiff dismissed its complaint.
Velcro Industries B.V., Velcro Group Corporation and Velcro USA, Inc. v. Gerald Rocha, Creative Machine Designs and Taiwan Paiho Limited – (N. H. Superior Court) Represented Velcro in litigation involving claims of trade secrets misappropriation, unfair competition, breach of contract, breach of confidential relationship, breach of fiduciary duties, and tortious interference with contractual relations. Requested preliminary injunction to prevent shipment of equipment out of the country. Case settled.
GE Homeland Protection Inc. v. DSA Detection LLC et al. – (D. Mass.) Represented defendants in trade secrets and patent litigation relating to consumables for trace detection instruments, such as ion mobility spectrometers. Case settled.
Zachary Hallstrom v. Life Smart Labs Inc., etc., et al. – (E.D.CA) Lead counsel for Life Smart Labs in false patent marking qui tam action. Case settled.
Photographic Illustrators Corporation v. Orgill, Inc. and Farm & City Supply LLC – (D. Mass.) Represented Photographic Illustrators Corporation in litigation involving copyrighted images of consumer products.
Photographic Illustrators Corporation v. ExpressLightbulbs.com LLC – (D. Mass.) Represented Photographic Illustrators Corporation in litigation involving copyrighted images of consumer products.
Photographic Illustrators Corporation v. BulbAmerica.com – (D. Mass.) Represented Photographic Illustrators Corporation in litigation involving copyrighted images of consumer products. Case settled.
Photographic Illustrators Corporation v. Superior Lighting Group, Inc. – (D. Mass.) Represented Photographic Illustrators Corporation in litigation involving copyrighted images of consumer products. Case settled.
Diet Coffee, Inc. v. Viatek Consumer Products Group et al. – (S.D.N.Y.) Lead counsel for Viatek in breach of contract litigation involving Ionic light bulbs. Case settled.
Michael P. Strachan v. KONE Inc. et al. – (Mass.) Lead counsel for KONE in breach of contract dispute. Case settled.
Cricket Productions v. RSGA International et. al. – (D. Mass.) Lead counsel for RSGA in breach of contract dispute. Case settled.
R.T. v. Confab Holding Corp. – (N. D. Ill.) Defended Confab in patent litigation involving diapers. Case settled after limited discovery.
Talaria Co. and King Marine Imaging v. Larry Belkov and Belkov Yacht Carpentry Company, Inc. – (D. Md.) Represented Talaria in trade dress action related to yacht design. Case settled.
Millipore Corporation et al. v. AllPure Technologies, Inc. – (Federal Circuit) Lead counsel for AllPure in appeal of summary judgment of no infringement. Won affirmance of summary judgment of no literal infringement and no infringement under the doctrine of equivalents.
AllVoice Computing Plc v. Dragon Systems, Inc. – (Federal Circuit) Represented Dragon Systems in appeal of district court’s denial of AllVoice’s motion for preliminary injunction. Obtained summary affirmance of district court’s decision.
Arendi U.S.A., Inc. and Arendi Holding Limited v. Microsoft Corp. – (Federal Circuit) Represented Microsoft in appeal of jury verdict of no infringement and validity. Successfully obtained summary affirmance of district court’s decision.
Monitor Clipper Partners v. Larry Belkov and Belkov Yacht Carpentry Company, Inc. – (First Circuit) Represented Monitor Clipper Partners in appeal of district court’s denial of Belkov’s motion to compel compliance with a third-party subpoena. Case settled.
Hank Spacone v. Microsoft Corp. – (Federal Circuit) Represented Microsoft in appeal of district court’s decision that Microsoft did not infringe and that certain patent claims were invalid, and that Mr. Spacone had standing. Obtained Federal Circuit decision of no standing.


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An employee has a common law duty to serve her employer diligently and faithfully, to refrain from knowingly or willfully injuring the employer’s business, and to avoid any conflict between the employer’s interest and the employee’s self-interest. But what happens when the working relationship ends? The now-former employee’s duty of loyalty ends, too.
To pick up where the common law duty leaves off, an employer may ask the employee to sign a restrictive covenant also known as a noncompete, nonsolicitation, or confidentiality agreement. The ex-employee thereby promises not to engage in certain activities for a certain period of time that could damage the former employer. While some states have a well-developed body of law evaluating the enforceability of restrictive covenants, the District of Columbia does not. The few D.C. Court of Appeals decisions on the matter have looked to the Restatement (Second) of Contracts for guidance.
While some states have a well-developed body of law evaluating the enforceability of noncompetes, the District of Columbia does not.
The general rule that has emerged is that a D.C. court will enforce a restrictive covenant if it meets the following criteria: First, the covenant must be ancillary to the employment relationship. Second, it must be no wider in scope and duration than reasonably necessary to protect the employer’s business. Third, it must not impose undue hardship on the employee or disregard the public interest. And fourth, it must be supported by consideration.
In other words, D.C. courts will not simply rubber-stamp every non-compete contract as enforceable. D.C. employers and employees must take equal care before drafting or signing any such agreement. Instead, they should analyze the contract in four general areas: purpose, benefit, scope, and enforcement.
PURPOSE: Why does the employer want the employee to execute this agreement? More specifically, what are the employer’s interests, needs, and concerns regarding the employee’s post-separation activities, and are those interests, needs, and concerns legitimate?
BENEFIT: What benefit does the employee receive for signing? Depending on whether the contract is presented before, during, or at the end of the employment, the benefit may be a job offer, the promise of continued work, or severance pay.
SCOPE: What is the scope of the contract? Typically, various provisions will discuss the duration of the restrictive covenant; the requirement to keep sensitive information confidential; the obligation not to solicit and/or hire the company’s other employees; and descriptions of some combination of the following: the clients that the employee may not solicit (or attempt to solicit) during the term of the covenant, the clients with which the employee may not do business (or try to do business), the type of competitors for whom the employee may not work, and the type of work the employee may not perform.
ENFORCEMENT: Will a court deem the restrictive covenant reasonable as written? If not, does the jurisdiction have a blue pencil rule permitting the court to modify the contract, or will the court simply find an unduly severe covenant altogether unenforceable?
Let’s look at each of these in greater detail.
In crafting the restrictive covenant, the employer should first ask whether it is necessary at all. What is so special about the employee that her future activities could harm the company? Is she a salesperson or high-level executive who has (or will have) regular contact with customers and whose development of good will and personal relationships with those customers has driven the company’s success? Has the company expended (or will it expend) considerable resources providing specialized training and education to the employee? Or is she an unskilled, entry-level worker without client contact, who represents no competitive threat if and when she leaves?
Another factor to consider is the reason why the employment relationship ends. If the company thinks an employee is such a poor performer that it terminates him for good cause (which must be a defined term), is he really a threat to the company post-termination? On the other hand, if the covenant disappears for any worker terminated for cause, there is clearly incentive for the next worker to get himself fired on purpose, to avoid the restraints of the covenant.
Similarly, the “I don’t want him but you can’t have him” issue arises if a company seeks to enforce a covenant against an employee whom, through no fault of his own, the company can no longer employ (for example, if the company is going through a reorganization or is downsizing). The court may well ask whether it is fair to restrict that person’s job prospects.
While the company decides whether a restrictive covenant serves any good purpose, the employee must ask why she should sign.
An employee may be required to sign a restrictive covenant as a condition of employment. But if the company presents the covenant at the time of hiring, is it, in exchange, promising employment for a definite term or just promising that termination will only be for good cause? If the company asks an employee to sign after she has begun working, will the company promise to continue employing her for a definite and substantial period of time?
Attempts to include a restrictive covenant as part of a severance agreement are not unusual. The common practice is to offer to pay the departing worker her monthly wages-or some percentage thereof-for each month that she is under the covenant. But if the departing person is easily re-employable, she might well demand a premium, not a discount, on her former wages. Unless the employee will have trouble finding a job in her field anyway, intends to work in an unrelated field, intends not to work at all, or otherwise has no intent to do whatever the contract forbids her from doing, there is no reason why she should take a discount on her fair market value, allow her skill set to rust, permit her industry knowledge to fade, and watch her professional reputation and contacts atrophy from disuse.
The heart of most disputes over restrictive covenants is, of course, the covenant’s scope: What activities are covered and for how long?
The duration of the covenant should not be greater than reasonably necessary to protect the employer. Restrictions of three years and longer have been sustained by D.C. courts, although the cases upholding longer terms tend to be considerably older. See Erikson v. Hawley, 12 F.2d 491 (App. D.C. 1926) (yes to 10 years); Meyer v. Wineburgh, 110 F. Supp. 957 (D.D.C. 1953), approved, 221 F.2d 543 (1955) (yes to five years). But see Chemical Fireproofing Corp. v. Krouse, 155 F.2d 422 (D.C. Cir. 1946) (no to three years).
What happens if the company should close its doors or substantially change the nature of the business? It is hard to argue that a protectable interest would survive and that a covenant should remain valid.
Non-compete clauses must describe as accurately as possible the type of product or service the company provides so that it is easy to determine who is a competitor. Employers will want the description to be broad; employees will want it to be narrow. Non-compete clauses must also define “confidential information.” Besides trade secrets protected under the D.C. Uniform Trade Secrets Act, confidential information might include customer lists, business methods, marketing strategies, and pricing methods. Be clear as well about the duration of the confidentiality provision: Is it indefinite or until such time as the information becomes public (except if it becomes public through an unlawful disclosure)?
Provisions barring solicitation of company clients must carefully define who is a client. It is reasonable to include clients at the time of the employee’s departure, but not those who become clients afterward. What about clients with whom the employee had no contact? Listing them by name removes uncertainty but also clearly identifies them to an ex-employee intent on breaching or willing to dispute the enforceability of the covenant.
Prospective clients, a category that might literally encompass the world, should not be off-limits, unless the company has already made promising personal contacts or a deal is in the pipeline. But what about past clients with whom the company has not done business recently? Should the list go back one year or five? Drawing this line properly can determine whether the covenant will be enforceable.
Then there are pre-existing clients of the employee herself. By law, clients who are brought to the company become the company’s. Thus, the employee who wants to claim these clients after leaving needs to specifically identify and exclude them from the scope of the restrictive covenant.
There is an important distinction between forbidding the former employee to solicit the company’s clients and forbidding her to perform work for them. If the client approaches her, may the former employee accept its business? If the client is no longer getting that particular employee’s services, will the client continue to use the company at all, or will it go elsewhere-rendering the ex-employee’s exclusion unreasonable?
Similar concerns arise regarding the active solicitation of the company’s current workers versus the hiring of current workers who themselves initiated contact with the former employee. It is also hard to imagine what legitimate interest the company could have in barring a former employee from contacting other former employees. Yet despite questionable validity, such restrictions are commonly inserted.
What about geographic restrictions? If client solicitation is the only real concern, a geographic limit may prove unnecessary since the clients’ locations are irrelevant. Also, geographic limits may ill-serve high-tech businesses that are global in nature. Otherwise, it is appropriate to define a geographic area within which the ex-employee may not compete.
Finally, there are issues of enforcement. Begin with the question, “Is it worth enforcing?” A restrictive covenant should always provide for injunctive relief. It should also include a formula for calculating monetary damages. To avoid uncertainty later, spell it out now.
More broadly, to be enforceable in the D.C. courts, a restrictive covenant must define a legitimate business interest. General restraints of trade are void as against public policy, and the purpose of the covenant cannot be simply to restrain competition. Saul v. Thalis, 156 F. Supp. 408 (D.D.C. 1957). The company must be able to describe the extent to which the employee may unjustly enrich himself by appropriating an asset of the employer for which the employee has not paid and using it against the very employer. Deutsch v. Barsky, 795 A.2d 669 (D.C. 2002).
To avoid enforcement, the ex-employee must be prepared to demonstrate the nature of the undue hardship she faces. “Mere personal hardship” is not enough. Deutsch, 795 A.2d 669 (D.C. 2002). This can be much more difficult if the covenant contains, as many do, a clause whereby the employee expressly warranted that enforcement would not cause undue hardship.
If all else fails, the employee may be able to argue injury to the public if the covenant is enforced. But can she state how the public would be harmed? For instance, the people’s interest in going to the medical specialists of their choice might overcome a prohibition on an orthopedic surgeon’s activities.
In Steiner v. American Friends of Lubavitch (Chabad), 2018 WL 651174 (D.C. 2018), the District of Columbia Court of Appeals finally adopted the equitable reformation doctrine, or “blue pencil” rule, which provides the court with “greater flexibility to make reasonable modifications [to the restrictive covenant] when necessary.” But the Court of Appeals was careful to note that there is a judicial reluctance to rewrite contracts between parties and that it is aware of the argument that “partial enforcement rewards employers who have everything to gain from writing overbroad covenants.” So, while D.C. courts now have the authority to modify a facially overbroad noncompete clause, the Steiner court cautions that “a relevant consideration is whether modified enforcement is possible without injury to the public and without injustice to the parties themselves.” The wise employer will still draft mindfully rather than carelessly and will not expect the Court to fix what the drafter did wrong.

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Dow Chemical – Dow filed suit against Nova, and a jury found the asserted claims to be infringed and not invalid. The Circuit affirmed. The district court subsequently conducted a bench trial and awarded supplemental damages for the supplemental damages period from the time of trial through the expiration date of the patents. Nova appealed. Subsequently, the Supreme Court decided Nautilus v. Biosig, altering the standard for indefiniteness. In the present appeal, the panel rules that the intervening change in the law of indefiniteness causes it to change its decision and find the claims indefinite. This changed ruling resulting from a change in the law fits within an exception to the doctrines of claim preclusion and issue preclusion, so the panel reverses the award of supplemental damages.
Dome Patent – Dome owns a patent for making contact lens material. On reexamination, the PTO found that the claimed method at issue was obvious. Because the reexamination was filed prior to November 29, 1999, an appeal was permitted to any a district court. The District Court for the District of Columbia agreed with the PTO that the claimed method was unpatentable. On appeal, Dome challenged both the standard of review and the ultimate conclusion on obviousness, but the panel affirms as to both. This "preponderance of the evidence" standard and not the "clear and convincing standard" would presumably apply to all such appeals from the PTO to the Circuit.
Dow filed suit against NOVA, alleging infringement of claims directed to ethylene polymer compositions (a type of plastic) with improved modulus, yield strength, impact strength, and tear strength. These polymers can be made into films that can be made thinner without losing strength. The independent claims require "a slope of strain hardening coefficient greater than or equal to 1.3." NOVA argues that the patents are indefinite because they fail to teach a person having ordinary skill in the art how to measure the "slope of strain hardening," which is required to calculate the strain hardening coefficient.
A jury found that NOVA infringed the claims, that the patents were not invalid for indefiniteness, and awarded Dow $62 million. NOVA appealed, and in that appeal the Circuit held that the patents were not indefinite. In so holding, the Circuit applied the law as then established by pre- Nautilus precedent, including Exxon Research & Engineering Co. v. United States, 265 F.3d 1371 (Fed. Cir. 2001).
On remand, the district court held a bench trial on supplemental damages for the period between the date of the complaint and the expiration date of the patents, and granted $30 million of supplemental damages in the form of lost profits and reasonable royalties. NOVA appealed on April 23, 2014 and while its appeal was pending, the Supreme Court decided Nautilus where the Court abrogated our previous inquiry into whether the claims were "amenable to construction" or "insolubly ambiguous." Under the new standard, "a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention." On appeal, NOVA argues that (1) the supplemental damages award should be vacated because the patents-in-suit are invalid for indefiniteness after the Supreme Court's decision in Nautilus or (2) in the alternative, the supplemental damages award was not supported by the evidence.
Dow argues that we are bound by our decision in the previous appeal—an appeal from a final judgment under Fed. R. Civ. P. 54(b)—that the claims were not indefinite. While a judgment entered under Rule 54(b) is a final judgment, that final judgment cannot have any greater effect than any other final judgment. The earlier appeal was from the entry of judgment in the jury verdict for the period preceding the trial, while the current appeal is from the supplemental damages judgment for the period following the trial. An award of supplemental damages is designed to compensate the patentee "for periods of infringement not considered by the jury," and necessarily implicates patent validity. In order to prevail on a claim for supplemental damages, a patentee must establish infringement for the supplemental damages period. If "an act that would have been an infringement or an inducement to infringe pertains to a patent that is shown to be invalid, there is no patent to be infringed." Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920 (2015).
traditional notions of claim preclusion do not apply when a patentee accuses new acts of infringement, i.e., post-final judgment, in a second suit – even where the products are the same in both suits. Such claims are barred under general preclusion principles only to the extent they can be barred by issue preclusion, with its attendant limitations.
Brain Life, LLC v Elekta Inc., 746 F.3d 1045 (Fed. Cir. 2014). Here, the bulk of the supplemental damages accrued after the Rule 54(b) judgment, and it is clear that claim preclusion also does not apply to damages accruing after the filing of the complaint and not the subject of the first judgment. All supplemental damages here accrued after the filing of the complaint.
While claim preclusion does not apply, ordinarily issue preclusion (or law of the case) would bar relitigation in the supplemental damages period of issues (such as validity) that were resolved as to the earlier time periods. But both doctrines are subject to an exception—when governing law is changed by a later authoritative decision. With respect to law of the case, "perhaps the most obvious justifications for departing arise when there has been an intervening change of law outside the confines of the particular case." The exception applies even if the issue was resolved on appeal in an earlier stage of the proceeding. Indeed, the premise of the exception in the appellate context is that there was such an earlier resolution. But the exception of course does not apply if the proceeding has reached the stage of final judgment. Here, the supplemental damages proceeding had not been concluded at the time of Nautilus.
Similarly, issue preclusion does not apply where "a new determination is warranted in order to take account of an intervening change in the applicable legal context or otherwise to avoid inequitable administration of the laws." Restatement (Second) of Judgments § 28(2) (1982). Therefore, a court is not bound by a previous decision where there is a change in the controlling precedent.
The change in law exception applies whether the change in law occurs while the case is before the district court or while the case is on appeal. Three conditions must be satisfied to reopen a previous decision under the change of law exception for both law of the case and issue preclusion. First, the governing law must have been altered. Second, the decision sought to be reopened must have applied the old law. Third, the change in law must compel a different result under the facts of the particular case. Each of these requirements was satisfied here.
First, there can be no serious question that Nautilus changed the law of indefiniteness. Second, there is also no question that our original decision applied pre- Nautilus law. Third, as we now explain, our original decision would have been different under the new Nautilus standard.
The claim term at issue here provides for "a slope of strain hardening coefficient greater than or equal to 1.3." NOVA argues that the term "slope of strain hardening coefficient," is indefinite because the patent fails to teach with reasonable certainty where and how the "slope of strain hardening" should be measured.
Under Nautilus this is no longer sufficient. "[A] patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention." 134 S. Ct. at 2124. Here the required guidance is not provided by the claims, specification, and prosecution history.
Dr. Hsiao's chosen method was not even an established method but rather one developed for this particular case. As we held in Interval Licensing, a claim term is indefinite if it "leave[s] the skilled artisan to consult the 'unpredictable vagaries of any one person's opinion." 766 F.3d at 1374 (quoting Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005)). The claims here are invalid as indefinite, and the award of supplemental damages must be reversed.
Comment: My summary has focused on the claim preclusion and issue preclusion discussion and not so much on indefiniteness since that holding seemed to be pretty clear once the Nautilus standard was applied. But the most interesting aspect of the case is not even mentioned by the Circuit because it was not appealed by Nova. Nova did not question the earlier $62 million judgment on the damages, which was also based on the pre- Nautilus law. However, because the damages calculations were not complete, under the rationale of the ePLUS and Fresenius cases, it would have seemed that Dow might have been able to get the earlier judgment dismissed. In those cases, because the damages or injunction determinations were not completely final (despite the existence of final judgments in each case), the Circuit threw out an injunction, a contempt award and a damages award due to the PTO subsequently finding the patents-in-suit invalid. It would seem that Dow would have had at least as good of a shot of getting the $62 million thrown out due to a change in the law that clearly would have changed the result in the first appeal.
In December 1997, Dome filed suit against six makers of contact lenses for alleged infringement of the '042 patent. Shortly after, one defendant requested ex parte reexamination of the '042 patent. In June 1999, the PTO ordered reexamination and, as a result, the district court stayed litigation pending a final determination in the reexamination proceeding. The PTO confirmed the patentability of claims 2, 3, and 4 of the '042 patent, but it found claim 1 obvious under 35 U.S.C. § 103.
Dome then filed suit in September 2007 against the PTO in the District Court for the District of Columbia under 35 U.S.C. §§ 145 and 306, requesting that the district court enjoin the PTO from cancelling claim 1 of the '042 patent. Following a bench trial, the district court held claim 1 of the '042 patent invalid as obvious under 35 U.S.C. § 103 and entered judgment in favor of the PTO.
Before reaching Dome's appeal of the obviousness conclusion, we first address Dome's allegation that the district court erred by only requiring the PTO to show that claim 1 of the '042 patent is obvious by a preponderance of the evidence, rather than by clear and convincing evidence. We conclude that the district court correctly applied the preponderance of the evidence standard.
Dome's appeal arises from an ex parte reexamination. Ordinarily, the PTO in such a proceeding must establish by a preponderance of the evidence that the reexamined claims are not patentable. Rambus Inc. v. Rea, 731 F.3d 1248 (Fed. Cir. 2013). If an ex parte reexamination results in the claims being rejected as unpatentable, the decision can be appealed directly to this court. See 35 U.S.C. § 141. Alternatively, for ex parte reexaminations filed before November 29, 1999, a complaint can be filed in district court against the PTO. See 35 U.S.C. § 145. The thrust of such a complaint is that the decision of the board is erroneous on the facts, the law, or both. Indeed, the board's decision is the jurisdictional base for the suit. It is in essence a suit to set aside the final decision of the board.
Accordingly, if the PTO decides after an ex parte reexamination that a preponderance of the evidence establishes the claimed subject matter is not patentable, § 145 authorizes the district court to review whether that final decision is correct. The § 145 action in such a case does not concern the different question of whether, as part of a defense to an infringement action, clear and convincing evidence establishes that an issued and asserted patent should be held invalid.
Citing 35 U.S.C. § 282 and Microsoft Corp. v. i4i Ltd. Partnership, 131 S. Ct. 2238 (2011), Dome argues that the district court erred by refusing to hold the PTO to the clear and convincing evidence standard of proof. According to Dome, the presumption of validity in § 282 applies to its claimed invention because the district court action concerns a claim that the PTO previously allowed to be patented. Accordingly, Dome argues the Supreme Court's holding that "§ 282 requires an invalidity defense to be proved by clear and convincing evidence," 131 S. Ct. at 2242, also applies in Dome's § 145 action.
The § 145 action before the district court did not involve a defense to a charge of infringement of an issued patent. Section 282 therefore does not apply in this instance. The district court here was reviewing the PTO's reexamination of claimed subject matter, and its final determination that the subject matter is not patentable, to ascertain whether Dome was entitled to receive a patent. Only if the district court found in favor of Dome would the PTO be authorized to issue a patent. And only after the patent issued would it be entitled to the presumption of validity under § 282 and, consequently, could not be held invalid absent clear and convincing evidence.
The clear and convincing evidence standard in the litigation context stems from our suggestion that the party challenging a patent in court bears the added burden of overcoming the deference that is due to a qualified government agency presumed to have done its job. Sciele Pharma Inc. v. Lupin Ltd., 684 F.3d 1253 (Fed. Cir. 2012). But in reexamination proceedings, a preponderance of the evidence must show nonpatentability before the PTO may reject the claims of a patent application. This standard is substantially lower than in a civil case, and there is no presumption of validity. In re Swanson, 540 F.3d 1368 (Fed. Cir. 2008).
When the PTO institutes ex parte reexamination, it reopens prosecution to determine whether the claimed subject matter should have been allowed in the first place. At that point, there is no need to presume that the PTO had "done its job" in the previous examination. Accordingly, the presumption of validity is no longer applicable.
Our conclusion aligns with the purpose of the reexamination process, which includes allowing the PTO to take a second look at patents thought doubtful. In re Etter, 756 F.2d at 857. In a very real sense, the intent underlying reexamination is to start over in the PTO. We would hinder this intent if we required the district court here to presume that the reexamined claim is valid because of the PTO's previous determination and, consequently, to impose a burden to defend its own subsequent reexamination decision by clear and convincing evidence. Thus, the district court did not err by requiring the PTO to show by a preponderance of the evidence that the reexamined claim is obvious.
The Circuit then evaluated the district court's decision that the claims at issue would have been obvious to one with ordinary skill in the art, applying the preponderance of the evidence standard, and affirmed that decision.
Comment: This case was decided under 35 U.S.C. §145, which permitted appeals to any district court as to reexaminations filed prior to November 29, 1999. Now, pursuant to 35 U.S.C. §141, those appeals, and appeals of post grant and inter partes reviews, are directly to the Federal Circuit.