Bryan C. Nese

A registered patent attorney and mechanical engineer by training, Bryan is well versed in handling the technical aspects of patent litigation. His engineering experience extends to a broad range of technologies, including computer products and peripherals, image sensors, automotive technology, medical devices, electromechanical devices, and consumer products. During his engineering graduate studies, Bryan conducted combustion research at Penn State's Propulsion Engineering Research Center. His research focused on the simulation of homogeneous-charge compression-ignition (HCCI) combustion processes and hydrogen fuel blends in automotive vehicles. As an undergraduate engineering student, Bryan led multi-disciplinary teams to design and construct devices such as fuel cells, underwater remotely operated vehicles, and guitar effects pedals.

Having participated in nearly a dozen patent trials, Bryan has played pivotal roles on trial teams before juries and at the ITC and has assisted in all aspects of discovery, trial preparation, and post-trial filings.

ITC Patent Litigation: Bryan has successfully litigated cases for clients at the ITC—from responding to the complaint, through the evidentiary hearing, to briefing before the Commission. He has substantial experience managing the lightning-fast schedules inherent in Section 337 ITC cases, often with numerous asserted patents. From taking and defending expert depositions to preparing pre- and post-trial briefs, Bryan understands and advises clients on the unique strategies and challenges of this specialized forum.

District Court Patent Litigation: Bryan has experience that extends beyond drafting motions, briefs, and expert reports, and includes taking and defending expert and fact depositions, preparing expert and fact witnesses for trial testimony, and questioning witnesses at trial. Bryan's cases have spanned relatively simple mechanical technologies and highly complex semiconductor devices. Bryan's hands-on engineering experience allows him to master technologies ranging from fluid mechanics to electronics, which translates to more in-depth infringement and invalidity theories for his clients.

Bryan's clients include Maxell, Ltd. and Mitsubishi Electric Corp.

• Jury verdict of no infringement for market leader in linear actuator technology; successfully defeated two motions for summary judgment of infringement and won summary judgment of no willful infringement leading up to trial.
• Summary judgment ruling of no infringement for one of the world's largest technology companies in patent case involving CMOS image sensors; crafted claim construction briefs that led to favorable constructions and the patentee's withdrawal of over half of the asserted claims; and invalidated all asserted patent claims on successful JMOL ruling following jury trial.

Represented:

• Leading electronics manufacturer in patent infringement suit involving five patents related to flash memory technology. Drafted briefing that resulted in successful transfer to the Northern District of California.
• Patent holder in eight-patent case related to cellular devices.
• Maxell, Ltd. v. Apple Inc. (E.D. Tex. 2021) – Settled case on favorable terms for patentee Maxell just after selecting jury for two-week trial involving multiple patents related to image processing, GPS, and battery-saver technologies.
• Northwestern University v. Mitsubishi Electric Corp., et al. (N.D. Ill. 2021) – Negotiated highly favorable settlement, which resolved multi-patent case for robotics technology shortly after filing.

Persuaded:

• The Board not to institute review on seven separate petitions for inter partes review of patents asserted by client in pending district court litigation.

Dismissed:

• Thirteen of the plaintiff's 14 claims under Rule 12(b)(6), resulting in dismissal of one defendant from the case entirely and which led to favorable settlement.

Representative ITC Experience:

Resolved:

• Five-patent case involving processes for producing the artificial sweetener acesulfame potassium on rare summary determination victory of invalidity/no technical prong of the domestic industry.

Organized:

• Team on five-patent case against Apple, covering a range of smartphone and laptop technologies.

Led:

• Team to trial in dual-patent case involving foldable rocking chairs.

Served:

• As technical lead for 10 Respondents in six-patent case brought by Brother

Advised:

• Clients on redesigned products and successfully obtained clearance of those redesigns by patentee
• As technical lead for several respondents in seven-patent investigation related to printer cartridges

Obtained:

• Summary determination of no infringement based on favorable claim construction, which was upheld on appeal at the Federal Circuit in May 2020.
• Certain Human Milk Oligosaccharides and Methods for Producing the Same (ITC 2018) – Second-chaired trial team in dual-patent case related to production of 2'-fucosyllactose used for synthetic breast milk; persuaded the Commission to reverse ALJ on issue of redesigned process, which clarified key ITC precedent regarding redesigns.
• Certain Powered Cover Plates (ITC 2018) – Acted as technical lead for multi-patent cases involving cover plates for electrical wall sockets.
• Certain Backpack Chairs (ITC 2017) – Through aggressive discovery and strategic challenges to complainant's infringement theories, succeeded in convincing complainant to withdraw the complaint, terminating the investigation, prior to claim construction briefing.
• Certain Composite Aerogel Insulation Materials and Methods for Manufacturing the Same (ITC 2017) – Served as second chair for Section 337 trial involving four patents directed to aerogel technology.
• Certain High-Potency Sweeteners, Processes for Making Same, and Products Containing Same (ITC 2017) – Defended multiple respondents in case involving patent for artificial sweeteners, which ended with complainant withdrawing the complaint after discovery inquires brought to light an on-sale bar issue.
• Certain Toy Figurines and Toy Sets Containing the Same (ITC 2015) – Represented subsidiary of one of the U.S.'s largest toy manufacturers in an investigation involving design patent, trade secret, and copyright infringement claims. Achieved early, favorable settlement.
• Certain Toner Cartridges and Components Thereof (ITC 2014) – Defended leading printer cartridge manufacturers in ITC investigation involving nine patents for laser toner cartridges. Oversaw all aspects of case and presented arguments that led to extremely favorable settlement less than one week prior to hearing.
• Certain Computers and Computer Peripheral Devices (ITC 2013) – Defended Fortune 100 technology company in ITC investigation in which both the ALJ and the Commission found no infringement of any of the four asserted patents. Also supported team in briefing to the Commission, which led to new precedent requiring "articles protected by the patent" for licensing-based domestic industries.

Representative IPR Experience:

Persuaded:

• The Board not to institute review on seven separate petitions for inter partes review of patents asserted by client in pending district court litigation.
• Patent Trial and Appeal Board not to institute review of client's three patents related to audio codec technology.
• Assisted with defense of 10 IPR petitions, six of which were denied institution.
• Invalidated challenged claims in trio of patents directed to graphic processing technology; thwarted patentee's attempt to swear behind prior art in all three cases by eliciting favorable cross-examination testimony of patentee's witnesses and exposing weaknesses in patentee's 100+ documents offered to support conception, reduction to practice, and reasonable diligence.
• Served as technical lead on two IPRs defending the validity of LGE's patents; prevented petitioner from invaliding all challenged claims of the asserted patents.
• Located crucial prior art and assisted with drafting petitions for inter partes review of patents for video-display control.
• Represented Fortune 100 company and invalidated all challenged claims of non-practicing entity's patent for multi-flashcard reader.