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Christopher G. Duerden

Associate

[email protected]

+1.617.348.3031

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Chris is a patent attorney whose practice focuses on IP litigation. He has worked on a variety of International Trade Commission cases involving mechanical, electrical, software, and computer engineering technology.

Prior to joining Mintz, Chris was a project attorney in the Boston office of a national, multi-practice law firm. Working with the patent prosecution team, he drafted responses to USPTO Office Actions involving telecommunications.

Earlier Chris founded and ran a company that developed and sold kits for a Linux-powered gaming system. He later sold the company to an established gaming hardware company, which still produces his kits. He also worked for United Electric Controls — first as a manufacturing engineer and later as the prototype and development department manager — and as an engineer at Goodyear Dunlop Tires.

His law school program included an IP concentration with a focus on patent law.

Education

  • Suffolk University (JD, with distinction)
  • Syracuse University (BS, Mechanical Engineering)

Viewpoints

Viewpoint General
A recent order from the Northern District of California in AU Optronics Corporation America v. Vista Peak Ventures, LLC, 4:18-cv-04638 (CAND 2019-02-19) (“AU Optronics”),  provides further guidance for patent venue analysis post-TC Heartland.  Specifically, the order teaches that bringing a patent suit against only a foreign parent company while omitting its domestic subsidiary will likely not run afoul of TC Heartland’s seminal venue holding. 
Viewpoint General
A recent opinion from the Northern District of Texas is a reminder to all patent practitioners to heed pleading standards when drafting a complaint for patent infringement.  In Lexington Luminance LLC v. Service Lighting and Electrical Supplies, Inc. d/b/a 1000bulbs.com, 3-18-cv-01074 (TXND October 9, 2018, Order), the court denied the defendant, Service Lighting and Electrical Supplies, Inc. d/b/a 1000bulbs.com’s (“1000bulbs”) request to dismiss the case for failure to meet the pleading standard, but granted its alternative request for a more definite statement. The plaintiff, Lexington Luminance LLC (“Lexington Luminance”), is now required to provide a more detailed complaint. 
Viewpoint General

ALJ Cheney Holds that IPR Estoppel Does Not Apply to ITC Investigative Staff

October 18, 2018 | Blog | By Aarti Shah, Andrew DeVoogd, Daniel Weinger, Chris Duerden

In an Initial Determination finding that Fujifilm violated Section 337 by infringing two patents held by Sony, ALJ Cheney found another patent invalid after ruling that inter partes review (“IPR”) estoppel does not apply to the International Trade Commission’s (“ITC”) Office of Unfair Imports Investigations (“OUII”) Staff.  In Magnetic Tape Cartridges and Components Thereof, Investigation 337-TA-1058, ALJ Cheney remarked that even if IPR estoppel prevents a respondent from raising certain references during an investigation before the ITC, IPR estoppel does not prevent Staff from raising those same references to invalidate a patent where Staff was not a party to the IPR.  Id. at 106-07.
Viewpoint General

PTAB Finds Recycled Art and Advanced State of Parallel District Proceeding Warrant Denial of IPR Trial

September 17, 2018 | Blog | By Peter Snell, Daniel Weinger, Vincent Ferraro, Chris Duerden

Last week the Patent Trial and Appeal Board (“PTAB”) provided yet another arrow in the patent owner’s quiver for defending against institution of IPRs.  In NHK International Corp. v. Intri-Plex Technologies, Inc., IPR2018-00752, the PTAB exercised its discretion under 35 U.S.C. § 325(d) and denied institution because the asserted art was already considered during the original examination of the patent.  The PTAB also found that denial was warranted under 35 U.S.C. § 314(a) in light of the additional factor that a district court trial on the same patent was imminent. 

Evidence of Bad Faith Patent Prosecution Can Support an Award of Attorney Fees

June 5, 2018 | Blog | By Andrew DeVoogd, Chris Duerden

A recent opinion from the District of New Jersey is a cautionary tale for patent practitioners regarding conduct during patent prosecution that can be framed as bad faith. This can become an expensive misstep during subsequent litigation. 

Insincere Licensing Discussions Can Support a Willful Infringement Claim

June 4, 2018 | Blog | By Andrew DeVoogd, Chris Duerden

A recent order from the Northern District of California provides patent practitioners interesting guidance regarding conduct during licensing discussions—and may be a cautionary tale to potential licensors engaged in efficient infringement.
The Federal Circuit recently overturned a decision estopping the plaintiff from pursuing its infringement claims in the United States District Court for the Eastern District of Arkansas, and clarified the effect of reexamination on equitable estoppel and laches.

Two Supreme Court Patent Opinions and a Memo from the PTO

April 27, 2018 | Blog | By Michael Renaud, James Wodarski, Sandra Badin, Chris Duerden, Anthony Faillaci

On Tuesday, the U.S. Supreme Court issued two important patent law opinions that relate to the inter partes review procedure introduced by the America Invents Act: Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, which upholds the constitutionality of inter partes review, and SAS Institute, Inc. v. Iancu, which requires the Patent Trial and Appeal Board to adjudicate the validity all patent claims challenged in a petition for inter partes review if the Board decides to adjudicate the validity of any claim challenged in that petition.

Improper Reliance on Informal “Opinion of Counsel” Part of Basis for Exceptional Case Award

February 5, 2018 | Blog | By Andrew DeVoogd, Anthony Faillaci, Chris Duerden

In Drop Stop LLC v. Jian Qing Zhu et al, 2-16-cv-07916 (CACD January 22, 2018), the Central District of California granted Plaintiff’s motion to award attorney fees due to Defendants’ exceptional litigation tactics under 35 U.S.C. § 285.

Supreme Court Hears Oral Arguments in Oil States Regarding Constitutional Challenge to Inter Partes Review

December 8, 2017 | Blog | By Michael Renaud, Andrew DeVoogd, Chris Duerden

We first covered the Supreme Court’s grant of certiorari in Oil States Energy Servs., LLC v. Greene's Energy Grp., LLC, 137 S. Ct. 2239 (2017), a case with the potential to substantially alter the patent litigation landscape, back in June. On Monday, November 27, 2017 the Court heard oral arguments on whether inter partes review – an adversarial process used by the Patent and Trademark Office (PTO) since September 16, 2012 to analyze the validity of existing patents – violates the Constitution by extinguishing private property rights through a non-Article III forum and without a jury.