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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

Viewpoint
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.
Viewpoint

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. 
Viewpoint
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.  
Viewpoint General
The PTAB’s Precedential Opinion Panel, colloquially referred to as “the POP,” ruled that the one-year window to file inter partes review (“IPR”) petitions begins once a complaint alleging infringement is served—even if the complaint is defective.
Viewpoint
On April 26, 2019, Administrative Law Judge (“ALJ”) Lord clearly stated in Certain Intraoral Scanner and Related Hardware and Software that the International Trade Commission’s (“ITC”) jurisdictional authority extends to accused infringers whose activities have “some nexus” to an element of section 337.  ALJ Lord found that involvement in training and supporting resellers, distributors and end users in the infringing goods in the United States was sufficient to put that respondent under the broad reach of section 337, even if they did not import or directly sell the products. 
Viewpoint
In her April 16, 2019 Public Interest Findings, Administrative Law Judge (“ALJ”) McNamara decisively stated that antitrust issues disguised as competitive conditions arguments are not a factor in the International Trade Commission (“ITC”) proceeding between Apple and Qualcomm.  See Mobile Electronic Devices II, Inv. No. 337-TA-1093, Analysis and Findings with Respect to the Public Interest, and Recommendation on Remedy and Bond, at 4 (April 16, 2019).
Viewpoint General

Expert’s Lump-sum Damage Calculation is Not Inadmissible Because it Accounts for Future Sales of Potentially Non-accused Products

March 28, 2019 | Blog | By Andrew DeVoogd, Daniel Weinger, Rithika Kulathila, Kara E. Grogan

A recent order from the District of Delaware in Evolved Wireless, LLC v. Apple Inc., No. 15-00542 (“Evolved Wireless”) provides interesting guidance regarding the use of future sales in calculating lump-sum damages.
Viewpoint General

RPX Requests en banc Review in Applications in Internet Time v. RPX

September 13, 2018 | Blog | By Peter Snell, Daniel Weinger, Kara E. Grogan

On September 7, 2018, RPX Corporation (“RPX”) requested a rehearing en banc of the Federal Circuit’s July 2018 Applications in Internet Time, LLC v. RPX Corp. decision, which held that the Patent Trial and Appeal Board (“PTAB”) must use a flexible approach when determining what entities constitute real parties in interest for the purpose of inter partes review (“IPR”).

International Trade Commission Clarifies the Intersection Between Litigation Funding Agreements and Standing

April 27, 2018 | Blog | By Andrew DeVoogd, Daniel Weinger, Kara E. Grogan

On April 18, 2018, the International Trade Commission (“Commission”) reversed an Administrative Law Judge’s (“ALJ”) finding that a litigation funding agreement destroyed standing for a complainant at the ITC.