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Kara E. Grogan

Associate

[email protected]

+1.617.348.3015

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Kara focuses her practice on Section 337 cases in the International Trade Commission, patent litigation, and assisting clients with licensing agreements. She has experience in drafting motions, discovery requests, and license arrangements. She works with clients in a broad range of industries, including consumer products and technology.

Kara was a Law Clerk at Mintz in 2018. While attending law school, she served as a law clerk in the Office of Unfair Import Investigations at the US International Trade Commission; a legal intern at a Massachusetts-based global athletic footwear and apparel company; and a judicial intern for the Hon. George A. O’Toole Jr., who is now a Senior US District Court Judge for the District of Massachusetts. In law school, she was a staff member and a publications editor for the Northeastern University Law Review.

Prior to attending law school, Kara was a paralegal at two intellectual property law firms: one based in Massachusetts and the other in Connecticut. In those roles, she conducted legal research, reviewed discovery, and drafted interrogatories for US patent litigation. She also helped prepare US patent and trademark applications and foreign filings. Earlier, she was an account executive at a sports and entertainment sponsorship and marketing agency in Connecticut and a seasonal partnership marketing employee with the National Hockey League.

Education

  • Northeastern University (JD)
  • Hobart and William Smith Colleges (BA)

Viewpoints

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Recent oral arguments at the Fed Circuit suggest that the U.S. may be taking steps which would enhance its attractiveness for SEP patent holders looking to resolve licensing disputes.  The Federal Circuit heard oral argument on Monday, July 6th, in Godo Kaisha IP Bridge I v. TCL Commc’n Tech. Holdings Ltd., No. 19-2215, that may pave an easier path for owners of standard essential patents (“SEPs”) to prove literal infringement of products that comply with that standard. 
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Federal Circuit Finds IPRs Can Circumvent Assignor Estoppel

April 27, 2020 | Blog | By Daniel Weinger, Vincent Ferraro, Kara E. Grogan

On Wednesday, the Federal Circuit held that while assignor estoppel is applicable in district court proceedings, petitions for inter partes review continue to not be subject to the equitable remedy.  Assignor estoppel is an equitable doctrine based on the principle of fair dealing that prevents a party who divests a patent from later challenging the validity of that patent.
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On Thursday, the Federal Circuit ruled that the Patent Trial and Appeal Board (“PTAB”) must give the parties proper notice if considering a sua sponte theory of unpatentability in relation to a motion to amend.
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On Tuesday, March 24, 2020, the Patent Trial and Appeal Board (“PTAB”) designated two inter partes review (“IPR”) decisions as precedential and one as informative. These decisions concern PTAB’s discretion to deny institution of an IPR under 35 U.S.C. § 325(d) and 314(a). 
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Mintz is recognized as among the top ten firms in ITC Section 337 litigation by Patexia in its inaugural "ITC Intelligence Report". We are pleased to be among the firms included in this publication and thrilled that it has come on the heels of a great year at the ITC for the Mintz team.
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On November 6, 2019, the bonds between the U.S. government and pharmaceutical companies were stretched when the U.S. Department of Health and Human Services (“HHS”) filed a patent infringement lawsuit against Gilead Sciences in Delaware federal court regarding Gilead’s popular HIV drugs, Truvada® and Descovy®.
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Nearly six years ago, the Supreme Court in Octane Fitness v. ICON Health & Fitness promulgated a “totality of the circumstances test” for awarding reasonable attorney fees to the prevailing party in exceptional cases under 35 U.S.C. §285.  As lower courts have applied this standard, it has become clear that the motivation and conduct of the losing party is a focal point of the exceptionality analysis.  However, two recent decisions emphasize that bad faith arguments and litigation tactics—by both parties and in all stages of litigation—are critical to the exceptionality analysis in Section 285 attorney fee awards. 
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A recent order from International Trade Commission Administrative Law Judge Elliott provides helpful guidance regarding a common ITC discovery dispute: whether a party may withhold from discovery as work product pre-suit test results and methods where those results and methods were relied upon in forming the pleaded allegations of the complaint or to support a party’s contentions.
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ITC Domestic Industry Products Do Not Need to Be Commercially Available

September 3, 2019 | Blog | By Aarti Shah, Kara E. Grogan

In a recent initial determination, Administrative Law Judge (“ALJ”) Cheney of the U.S. International Trade Commission (“ITC”) held that domestic industry products do not need to be commercially available to satisfy section 337’s domestic industry requirement. 
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In a recent initial determination, Administrative Law Judge (“ALJ”) Cheney of the U.S. International Trade Commission (“ITC”) provided useful guidance for patentees by reaffirming that there is no categorical rule that patent prosecution expenses cannot be included in the domestic industry analysis at the ITC, and also finding that complainants may rely upon expenses relating to FDA compliance to satisfy the domestic industry requirement.  
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