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Biography

A.J. Sutton’s practice focuses on patent prosecution, client counseling, and contested proceedings before the Patent Trial and Appeal Board (PTAB). He manages and prosecutes patent portfolios for foreign and domestic clients, conducts invention disclosure interviews, prepares freedom to operate analyses, interviews examiners to facilitate prosecution, develops patent strategies, and drafts patent applications. A.J. has extensive experience with a broad array of technologies, including graphical user interfaces, machine learning, computer software and hardware, consumer electronics, semiconductors, and medical devices.

Before joining BoMc, A.J. was an associate at a multinational general practice law firm, where he conducted intellectual property litigation matters before the International Trade Commission, U.S. District Courts, the U.S. Patent Trial and Appeal Board, and the U.S. Court of Appeals for the Federal Circuit. A.J. also conducted IP due diligence, analyzed and prepared IP licensing agreements, and provided product counseling for a large multinational internet company. A.J. leverages his breadth of experience to provide his clients with comprehensive legal counsel.

During law school, A.J. externed for the Honorable Irene M. Keeley of the Northern District of West Virginia, where he worked extensively on several patent cases, including a Hatch-Waxman Paragraph IV ANDA litigation case being heard before the court. In addition, A.J. was the elected President of GW Law’s Student Bar Association, and served as a staff member of the AIPLA Quarterly Journal.

A.J. has an undergraduate degree in Mechanical Engineering, and his coursework covered a broad array of topics including C++ programming, organic chemistry, and robotics. In addition, A.J. served as a team lead on several engineering projects, including: the design of an ocean wave powered instrumental research buoy for use at the Scripps Institute of Oceanography; a solar panel design project for a learning facility in Kenya; and a robotics design and building competition where his team earned second place out of forty-eight teams.

Highlights

  • Represented clients in 20+ PTAB post-grant proceedings, both on Patent Owner and Petitioner Side.
  • Represented semiconductor equipment manufacturer in patent infringement case in E.D.N.Y. relating to chemical vapor deposition systems. Successfully obtained a preliminary injunction after two day bench trial.
  • Represented computer technology company. Analyzed H.264 standard essential patent portfolio as part of license negotiations.
  • Provided product counseling for multinational internet company concerning video game hardware and software products, including advising on intellectual property, regulatory, and consumer protection laws.
  • Successfully prosecuted two trademark applications on behalf of clients.
  • Provided over 1,250 pro bono hours since 2014.
  • Student speaker at the 2014 Law School Commencement at the George Washington University in Washington D.C.
  • Placed second out of 48 teams in an undergraduate robotics design competition

Bar Admissions

  • California
  • District of Columbia
  • U.S. Patent and Trademark Office
  • U.S. Supreme Court

Education

  • The George Washington University Law School, cum laude, May 2014
  • University of California, San Diego, B.S., Mechanical Engineering, June 2009

Professional Recognition

  • Capital Pro Bono High Honor Roll 2015–2018
  • GW Law APALSA Daniel K. Inouye Alumni Award, 2018.
  • ALI-ABA Scholarship and Leadership Award, 2014.
  • Marcus B. Finnegan Prize in IP Writing, 2013.
  • VABA-DC Outstanding Service And Dedication Award, 2013.

Publications

  • Author, “PTAB Discretionary Denials of Institution Set to Increase Following Denial of Institution in Apple v. Fintiv,” BoMc Blog, May 19, 2020.
  • Coauthor, “Congress Moves to Expand Patentable Subject Matter & Contract Functional Claim Scope,” Ropes & Gray Client Alert, 2019.
  • Coauthor, “Nearly One Year After TC Heartland, Federal Circuit Addresses Unanswered Venue Questions in a Trio of Decisions,” Ropes & Gray Client Alert, 2018.
  • Coauthor, “Shielded by Sovereignty: The Implications for Patentees of Covidien v. University of Florida Research Foundation and Its Progeny,” 45 AIPLA Quarterly Journal 593, 2017.
  • Coauthor, “U.S. Patent Trial and Appeal Board Designates Five New Post-Grant Review Decisions as ‘precedential’ and Thus Binding on the Board,” Ropes & Gray Client Alert, 2016.
  • Coauthor, “2015 Year-in-Review: Important U.S. Patent Law Developments,” Bloomberg BNA, 2016.
  • Coauthor, “Promega: Can Inducer And Infringer Be The Same Party Now?,” Law360.com, 2015.
  • Author, “Discovering Discovery Technology! A Model Order and Pilot Program For Implementing Predictive Coding and Other New Technologies in Document Review,” 42 AIPLA Quarterly Journal 451,2014.

Organizations

  • PTAB Bar Association, Chair, Diversity Committee, 2020-present
  • PTAB Bar Association, Vice-Chair, Diversity Committee, 2019-2020
  • PTAB Bar Association, Secretary, Diversity Committee, 2018-2019
  • Vietnamese-American Bar Association of The Greater Washington D.C. Area, Director, 2015-present
  • The George Washington University Law School Law Alumni Advisory Board, Board Member, 2013-present
  • American Pacific American Bar Association of Washington DC (APABA-DC), Vice President for Communications, 2018-2019
  • APABA-DC, Social Media Chair, 2015-2016
  • APABA-DC Education Fund (AEF), President, 2016-2018

Speaking Engagements