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Jonathan J. Engler

Member

[email protected]

+1.202.434.7446

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Jonathan is a seasoned intellectual property attorney who focuses his practice on representing clients in patent, trade secret, copyright and trademark litigation before the US International Trade Commission (ITC), and in appeals of those disputes at the Court of Appeals for the Federal Circuit. Drawing on his extensive experience as an ITC attorney in private practice and his tenure as an attorney with the ITC and in the US Department of Commerce, he successfully represents parties on both sides of ITC disputes, including representing them in relation to the enforcement of remedial orders through US Customs and Border Protection. Cases he has handled have been directed to semiconductors, batteries, LED lighting, cellular communications, networks, and consumer electronics, and have involved some of the most widely recognized electronics and consumer products companies.

Prior to joining Mintz, Jonathan was a partner at a law firm that specializes in ITC Section 337 litigation and international trade matters, where he represented US and international technology companies in all phases of ITC investigations and before the Federal Circuit. Before joining that firm, Jonathan spent seven years as an attorney for the Federal government focused on international trade. He was an attorney in the ITC’s Office of General Counsel, during which time he advised the agency on Section 337 matters and handled Federal Circuit appeals, and also served as an interim legal counsel to a Commissioner. Jonathan also served as a senior attorney in the Office of General Counsel at the US Department of Commerce, a role that involved representing the department in international trade litigation before the US Court of International Trade, the CAFC, North American Free Trade Agreement arbitration panels, and the World Trade Organization. He began his career as an associate with a large international firm, where he counseled clients in international trade matters and practiced in the firm's Washington, DC and Brussels, Belgium offices.

While in law school, Jonathan worked as a regional manager in Washington, DC for the Israel-U.S. Binational Research and Development Foundation and the government of Israel’s Ministry of Finance in a role that involved preparing financial packages for joint ventures between US and Israeli high-tech companies and planning conferences to help companies from those countries find strategic partners. He also interned in the Office of Japan and China at the Office of the United States Trade Representative and served as a summer associate at a large law firm in Tel Aviv, Israel, where he drafted documents for transactions in US securities markets.

Education

  • Georgetown University Law Center (JD, cum laude)
  • The Johns Hopkins University (BA, cum laude)

Involvement

  • Member, Federal Circuit Bar Association
  • Member, International Trademark Association (INTA)
  • Member, ITC Trial Lawyers Association

Languages

- French

- Hebrew

Viewpoints

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Rules for Complainant Success in ITC Trade Secret Litigation

May 16, 2022 | Blog | By Jonathan Engler, Michael Renaud

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The ITC Should Put Its Foot Down on Patent Hold-out and Hold-up

May 9, 2022 | Blog | By Jonathan Engler, Michael Renaud

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ITC Must Enforce Standard-Essential Patents At The Border

April 28, 2022 | | By Jonathan Engler, Michael Renaud

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Avoiding Unforced Tech DI Errors at the ITC

March 11, 2022 | Blog | By Jonathan Engler, Michael Renaud

The key to success as a Complainant in the ITC is careful preparation, long before the complaint is filed. Nowhere is this more important than in preparing and planning a Complainant’s domestic industry case. The so-called “technical prong” of the domestic industry requirement is a much more common point of failure for ITC complainants than the “economic prong.” The “technical prong” requirement is essentially the same as for infringement: an ITC complainant must “show that there is a domestic industry product that actually practices” at least one claim of the asserted patent. Microsoft, 731 F.3d 1354 at 1361.  (Fed. Cir. 2013). It is unfortunately not uncommon at the ITC for Complainants to prepare meticulous infringement proofs for the accused products but then to fail to show that the domestic industry products practice a claim of the asserted patents.
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While there have been some adverse decisions from individual administrative law judges at the US International Trade Commission in recent years, final decisions coming from the commission since January 2019 have largely affirmed that complainants have satisfied the domestic industry (DI) requirement.
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Domestic Industry Alive and Well at ITC; Important New Opinion Continues Trend

February 1, 2022 | Blog | By Jonathan Engler, Marguerite McConihe, Michael Renaud

The U.S. International Trade Commission (the “ITC”), in an important new opinion, recently extended a series of final determinations that complainants had satisfied the “economic prong” of Section 337’s domestic injury requirement.  This decision reinforces the Commission’s critical role in defending U.S. intellectual property rights and bodes well for patent owners.  In Certain Percussive Massage Devices, Inv. No. 337-TA-1206, the Commission found that complainant Hyperice Inc. proved it had “significant” domestic industry investments in labor, notwithstanding that all of the domestic industry devices were manufactured overseas.  Indeed, thus far in 2022, the Commission has found the economic prong of the domestic industry requirement satisfied in all four public final determinations.  In 2021 and 2022 combined, the Commission found the economic prong of the domestic industry requirement satisfied in 80% of all patent-based investigations that resolved on the merits, demonstrating that Complainants with well-organized, substantiated domestic industry cases continue to meet with success at the ITC.
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News & Press

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Law360 featured the arrival of seasoned U.S. International Trade Commission attorney Jonathan Engler as a Member of Mintz’s Intellectual Property Practice in Washington, D.C. The article included commentary from Mr. Engler on what attracted him to Mintz and areas of focus within his practice, and also included a quote from Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud.

Events

Panelist
May
5
2022
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