Patent Counsel

Arent Fox's patent law blog examines the latest news, trends, and legal developments in the patent world.

Patent Counsel

Jeff Leung

Jeff Leung, Associate at Arent Fox
Jeff Leung
New York, NY

Jeff Leung’s practice primarily focuses on complex commercial litigation, including intellectual property matters and re-insurance arbitrations. He has litigated matters in state and federal court, as well as before the Copyright Royalty Board. Jeff has experience with drafting pleadings, motions, discovery requests and responses, and subpoenas; conducting traditional and electronic discovery; supervising aspects of document review and production; and taking depositions.

Previous Work

Immediately prior to joining Arent Fox, Jeff served as a law clerk to the Honorable Eileen Bransten in the Commercial Division of the New York State Supreme Court. Jeff also served as a law clerk to the Honorable Richard B. Lowe, III, in the Commercial Division of the New York State Supreme Court.

While clerking, Jeff drafted decisions on various litigation issues in a range of complex matters, including actions by a programming distributor that sought a preliminary injunction against a broadcast satellite television provider, a non-profit organization that sought to vacate an arbitration award concerning the nationally-recognized Emmy Awards, and insurers seeking a declaratory judgment with significant implications in a contentious and protracted asbestos-related insurance coverage action.

Publications, Presentations and Recognitions

Jeff’s recent publications include:

  • “Applying Section 512(c) of the DMCA to Video-Sharing Websites, Bright Ideas,” New York State Bar Association; Fall 2008
  • “Patent Securitizations, Patently Bad Idea? Risk/Benefit Approach Reveals Possible Reasons For Lack Of Patent Securitizations,” IPL Newsletter American Bar Association, Section Of Intellectual Property Law; Fall 2006

Blog Posts by Jeff Leung

Patent Litigation
Post-Octane Fitness Decisions Show an Uptick in Attorney Fee Awards to Prevailing Parties

The Patent Act’s fee shifting provision provides that a “court in exceptional cases may award reasonable attorney fees to the prevailing party.” 35 U.S.C. § 285. Earlier this year, we reported on the Supreme Court’s decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749, 188 L. Ed. 2d 816 (2014), which revised the standard on fee shifting in patent cases, and held:

[A]n “exceptional” case is simply one that stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated. District courts may determine whether a case is “exceptional” in the case-by-case exercise of their discretion, considering the totality of the circumstances. Id. at 1756.

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Post-Grant Proceedings, Inter-Partes Review
Recent PTAB Decisions on Motions for Additional Discovery

On a motion for additional discovery, various factors inform the Board’s determination of whether the discovery requested meets the standard of “necessary in the interest of justice” under 35 U.S.C. § 316(a)(5), including the factors set forth in Garmin Int’l., Inc. v. Patent of Cuozzo Speed Techs, LLC, Case IPR2012-00001 (PTAB Mar. 5, 2013) (Paper No. 26) slip. op. at 6-7: (1) the request is based on more than a mere possibility of finding something useful; (2) the request does not seek the litigation positions of the other party; (3) the information is not reasonably available through other means; (4) the request is easily understandable; and (5) the request is not overly burdensome to answer.

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Post-Grant Proceedings, Inter-Partes Review
Joinder Decisions

An inter partes review challenging the validity of a patent is normally barred after one year from service of a complaint. However, 35 USC § 315(b) indicates that the time limit doesn’t apply to a motion to join, which has been interpreted to allow filing an IPR after one year with a motion to join the other IPR. The window for doing this is within one month of institution of the IPR to be joined (37 CFR § 42.122(b)). This situation often occurs in multicase, multidefendant litigation.

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Arent Fox LLP, founded in 1942, is internationally recognized in core practice areas where business and government intersect. With more than 350 lawyers, the firm provides strategic legal counsel and multidisciplinary solutions to clients that range from Fortune 500 corporations to trade associations. The firm has offices in Los Angeles, New York, San Francisco, and Washington, DC.