Jeffrey Paul Kitchen
Jeff Kitchen is an Intellectual Property attorney based in Houston, Texas. He has a broad range of experience in patent-related IP matters in the energy and technology industries, including pursuing and defending patent infringement in litigation, preparing and prosecuting patent applications, pursuing and defending patent invalidity in post-grant proceedings before the United States Patent and Trademark Office, preparing advisory opinions related to patent infringement and invalidity, and licensing patent and other IP rights.
While in law school, Jeff was an associate editor of the Texas Law Review and recipient of the Austin Intellectual Property Law Society's Louis T. Pirkey Prize for best student paper on an intellectual property law topic, which addressed recent legislation aimed at curbing abuses of non-practicing entities (so-called patent trolls).
2014 - JD, honors, University of Texas at Austin
2011 - BS, Mechanical Engineering, Brigham Young University
At the University of Texas at Austin, Jeff won the Austin Intellectual Property Law Association's 2013 Louis T. Pirkey Prize for the "best student paper on an intellectual property law topic." He was also a quarter finalist in the Thad T. Hutcheson Moot Court Competition, an associate editor of the Texas Law Review, and a member of the J. Reuben Clark Law Society.
- Assisted in representation of large oil field services company in patent infringement action (Southern District of Texas) and related post-grant patent challenge (Patent Trial and Appeal Board) relating to oil and gas well cementing technology.
- Assisted in representation of pharmaceutical company in patent infringement action against producer of a generic drug (Southern District of Texas).
- Assisted in post-grant validity challenge of five patents related to oil and gas well completion technology (Patent Trial and Appeal Board)
- Assisted in post-grant validity defense of two challenged patents related to semiconductor manufacturing clean room technology (Patent Trial and Appeal Board)
- Assisted in post-grant validity challenge of patent related to advanced ceramics technology (Patent Trial and Appeal Board)
- Prepared advisory opinion regarding infringement of downhole drilling technology.
- Prepared IP licensing agreement for large offshore drilling company related to deep water drilling equipment.
- Assisted in defense of large telecommunications company against patent infringement claim involving graphics chip technology (International Trade Commission).
- Assisted in defense of semiconductor manufacturer in appeal of patent infringement verdict related to electronic displays (Court of Appeals for the Federal Circuit).
- Drafted patent applications for large off-shore oil and gas well drilling company.
- Drafted patent applications for large medical device entity.
- Texas State Bar License
- US Patent & Trademark Attorney
- "PTAB confirms that estoppel does not bar subsequent petitions on non-instituted claims," Norton Rose Fulbright Patent Challenges Blog, June 25, 2015
- "PTAB institutes IPR based on prior art that was previously presented to the USPTO," Norton Rose Fulbright Patent Challenges Blog, August 14, 2015
- "Federal Circuit Rejects PTAB's Reliance on "Common Sense" to Supply Missing Claim Limitation," Norton Rose Fulbright Patent Challenges Blog, September 22, 2016
- "CAFC requires weighing diligence evidence as a whole and rejects "scouring" for gaps," Norton Rose Fulbright Patent Challenges Blog, June 15, 2017
- "Copyright Law & Registration", Houston Association of Legal Professionals - Nuts and Bolts of Intellectual Property, November 5, 2016
Memberships and activities
- Houston Bar Association, member
- Houston Intellectual Property Law Association, member
- Boy Scouts of America
- Eagle Scout (since 2005)
- Austin troop, assistant scoutmaster (2012 - 2014)
USPTO特許審判部(PTAB)は、Westlake Services, LLC 対 Credit Acceptance Corp事件に於いて35 U.S.C. § 325(e)(1)に基づく禁反言は審理開始が以前に否定されたクレームに対しては適用しないとして、特許権者によるビジネス方法特許審理を取り下げる申請を却下した。CBM2014-00176, Paper 28 (May 14, 2015)..
October 26, 2016
連邦巡回控訴裁判所は、Arendi S.A.R.I. 対 Apple Inc., et al. 事件に於いて、当事者系レビュー（IPR）で審理開始決定された全クレームにつき、先行技術及び「常識」に基づく自明性（obviousness）により無効としたUSPTO特許審判部(PTAB)決定を覆した。No. 2015-2073 (Fed. Cir. Aug. 10, 2016)..
October 12, 2016