Aaron J. Capron
Aaron Capron has a wide range of experience involving post-grant proceedings, patent litigation, and patent portfolio management. He has been co-lead counsel for several post-grant proceedings, including one of the first cases instituted under the America Invents Act (AIA). Using his experience before the U.S. Patent and Trademark Office (USPTO) and in all aspects of pre-trial litigation, Mr. Capron assists clients with making strategic decisions under these new proceedings.
With more than 14 years of patent law experience, Mr. Capron counsels clients of all sizes on prosecution, post-grant considerations, portfolio management, and pre-litigation strategies. He has drafted and overseen the drafting of hundreds of patent applications for electrical, electronics, telecommunications, and software-based technologies. Patent portfolios he manages protect a range of technologies, including network virtualization; web content optimization; data aggregation systems; mobile devices; and digital health technologies. Mr. Capron's patent experience includes working with technologies directed to wearables, robotics, digital rights management and data security, gambling devices, video games, virtual reality systems, medical devices, network infrastructure, business methods, Internet services, telecommunications, GPS systems, and semiconductors. He also provides opinions regarding infringement, validity, and product clearances.
Mr. Capron devotes time to pro bono matters. He has represented several military veterans before the U.S. Court of Appeals for Veterans Claims and the Federal Circuit.
- Square, Inc. v. Cooper (PTAB). Represented petitioner Square, Inc. in three IPR proceedings; argued and won decisions finding unpatentable all claims challenged by Square. The decisions were later upheld by the Federal Circuit.
- Provides strategic patent counseling to a multi-national company to expand patent portfolios directed to network infrastructure, network virtualization, and web content optimization.
- Provides strategic patent counseling to emerging technology companies to expand patent portfolios related to digital-health technologies, big data, and data aggregation.
- Representing a Bay Area mobile payments company in three inter partes review (IPR) proceedings, in which the Board found invalid each claim that had been asserted in a related district court litigation.
- CRS Advanced Technology, Inc. v. Patent of Frontline Technologies, Inc. (PTAB). Represented CRS in a covered business method (CBM) review, in which the Board cancelled each claim that had been pending in a related district court infringement litigation.
- Represented CRS Advanced Technology in requesting an ex parte reexamination, the granting of which resulted in a related litigation stay and the asserted claims being amended.
- Uniloc USA, Inc. v. Microsoft Corp. (Fed. Cir.). Represented Uniloc in an appeal that resulted in the reinstatement of a jury’s verdict that Microsoft infringed Uniloc's patent.
- Fenner Investments, Ltd. v. 3Com Corp. (E.D. Tex.). Defended Extreme Networks, D Link Systems, NETGEAR, and ZyXEL Communications in a patent litigation related to network switching technology.
- Served as a patent examiner at the USPTO, examining U.S. and international patent applications in gaming machine hardware and software, video game hardware and software, and electronic sports equipment, 2001-2004.
- Worked as a systems engineer at Lockheed Martin, assisting with systems integration and software development, testing ground control software for GPS satellites, and testing and rolling out new services and software on the network, 1999-2001.
- American Intellectual Property Law Association (Bay Area networking chair, New Lawyers Committee, 2010-present)
- Intellectual Property Association
- American Bar Association
- San Francisco Bay Area IP Inns of Court
- Silicon Valley Intellectual Property Association (SVIPLA) (co-chair, Program Committee, 2013-present)
- Serves as a co-managing editor for Finnegan's AIA blog on PTAB trials and AIA provisions.
- Coauthor. "Revisiting the Role of Preemption in Patent Eligibility," Law360, Dec. 19, 2016.
- Coauthor. "What You Should Know About the New PTAB Rules," Law360, April 5, 2016.
- Coauthor. "How Digital Health Startups Can Leverage Intellectual Property," HIT Consultant, Jan. 18, 2016.
- Coauthor. "The Advantages of a Patent Marking Policy," Corporate Counsel, Aug. 26, 2010.