Tom

Mr. Dao is a Shareholder of Alumen IP Law and practices exclusively in the field of patent and trademark law, which include strategic counseling in both domestic and foreign intellectual property matters, litigation support, licensing, clearance opinions, and trademark counseling. His clients include Fortune 500 companies, small to medium privately owned companies, individual inventors, and many foreign-based companies that demand strategic guidance when entering the U.S. market.

Mr. Dao has handled a wide variety of mechanical and electro-mechanical art, medical device technology, oil and gas equipment and machineries, green technology, and complex rotating equipment.

Prior to his legal career, Mr. Dao was a Power Engineer for Texaco Inc. and a Maintenance and Reliability Engineer for the Atlantic Richfield Co. (ARCO) where he specialized in heavy duty rotating equipment, pumps, compressors, turbines, system controls, hot tapping, dry and mechanical seals, and reliability maintenance, among others.

As a Patent Attorney, Mr. Dao has served domestic and foreign clients in procuring patents and clearance to use, sell, or make products in the U.S. He has provided litigation support before the Court of Appeals for the Federal Circuit, the U.S. District Courts, and has successfully appealed many rejections before the Patent Trial and Appeal Board (PTAB). Mr. Dao provides ongoing IP portfolio management and development to protect niche market/position.

Mr. Dao was formerly a Partner at Christie, Parker & Hale prior to joining Alumen IP Law.

Representative Cases
Bal Seal Engineering Company, Inc. v. Jay Q. Huang and Saint-Gobain Perf...ormance Plastics Corporation, 10-cv-0819 – CAB. Plaintiff asserted infringement of U.S. Patent Nos. 5,082,390; 5,545,842; 5,411,348; and 5,160,122 and theft of trade secrets lawsuit, among others. Argued and received favorable claim construction orders and successfully defended defense’s motion for summary judgment. The parties eventually settled their differences out of court.
Ex Parte Julie Clements, U.S. Patent Trial and Appeal Board, Appeal No. ...2013-003884: Appeal No. 2013-003884: Appealed the rejection of all pending claims as anticipated and rendered obvious under four different grounds by several prior art references. Following oral hearing, the Board reversed all the claims on all the challenged grounds.
Ex Parte BRADLEY P. ACTIS, U.S. Patent Trial and Appeal Board,... Appeal No. 2015-001869. Appealed the rejection of claims 14-24, 26-28, and 31-47 for obviousness under ten (10) different 35 U.S.C. § 103(a) grounds. Argued Appellant’s case before the PTAB and successfully secured a reversal on all appealed grounds.
Ex Parte Kevin Woehr, Helmut Freigang, Juergen Fuchs, Juergen Reuter, Kl...aus Siemon, Joerg Wende and Frank Hilberg, U.S. Board of Patent Appeals and Interferences, Appeal No. 2009-011020: Appealed the rejection of all pending claims for definiteness under §112, 2nd paragraph, and as anticipated under §102(b). Attended oral hearing and argued before the BPAI. The Appeals Board reversed the examiner’s rejection and all claims issued in U.S. Patent No. 8,048,036, entitled “Spring Launched Needle Safety Clip”.
Ex Parte Re-Examination No. 90/014,536,... which resulted in cancellation of all granted claims of U.S. Pat. No. 8,376,133.
Ex Parte Re-Examination No. 90/014,465,... which resulted in cancellation of all granted claims of U.S. Pat. No. 6,578,809.
Location

15615 Alton Parkway, Suite 450
Irvine, CA 92618
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Contact

Tel: (949) 368-2270
Email: [email protected]