Allen M. Sokal

Of Counsel

Address: 701 Palomar Airport Road
Suite 230
Carlsbad, CA 92011

Phone: (858) 227-6633

Overview Experience Insights Interests

Overview

Allen Sokal practices patent litigation, with a particular concentration in appellate practice in the United States Court of Appeals for the Federal Circuit. Although Allen’s district court litigation has focused on the pharmaceutical and chemical fields, throughout his career Allen has handled appellate cases in an array of technologies. He has briefed and argued numerous cases at the Federal Circuit and other regional circuits.

Allen received a degree in chemical engineering from the University of Pennsylvania and a JD from Georgetown University. After serving as a patent examiner for five years and clerking for Judge Jack Miller on the United States Court of Customs and Patent Appeals for two years, Allen entered private practice at Finnegan, Henderson, Farabow, Garrett & Dunner in 1976, where he remained for 39 years and was for many years leader of the firm’s appellate section.

He has been retained as a patent law expert witness in infringement suits and has lectured throughout the world on patent law, licensing, and legal ethics issues for bar organizations and clients, as well as on chemical patent practice for the Patent Resources Group and C5. Allen is also on the American Arbitration Association’s list of neutrals.

Experience

Represented Roger Cleveland Golf Company as amicus curiae before the United States
Supreme Court in case addressing standard for damages for copyright infringement. Samsung Electronics Co. v. Apple Inc. (S. Ct.).

Represented client in a multibillion-dollar patent litigation involving the fan stages of jet engines. Rolls-Royce Plc v. United Technologies Corporation (E.D. Va.). The court granted summary judgment in favor of client, finding noninfringement.

Represented InterDigital in Federal Circuit appeal of an ITC ruling of noninfringement by Nokia’s cellular telephones. In re Certain 3G Mobile Handsets and Components, 337-TA-613 (ITC). The Federal Circuit reversed the noninfringement ruling. lnterDigital Communications, LLC v. International Trade Commission, 690 F.3d 1318 (Fed. Cir. 2012), reh’g denied, 707 F.3d 1295 (Fed. Cir. 2013).

Represented patent owners in a case involving blood-thinner Lovenox®. Aventis Pharma S.A. v. Amphastar Pharmaceuticals, Inc. (C.D. Cal. and Fed. Cir.).

Represented patent owners in a case concerning antidepressant Prozac®. Eli Lilly and Company L. v. Barr Laboratories, Inc. (S.D. Ind. and Fed. Cir.). The Federal Circuit upheld the client’s basic patent and held a later patent invalid for double patenting.

Represented pharmaceutical company Wyeth in suits filed against Abbreviated New Drug Applications (ANDA) applicants.

Represented Pharmaceutical Research and Manufacturers of America as amicus curiae before the United States Supreme Court in landmark case addressing the standard for the obviousness defense to patent infringement. KSR International Co. v. Teleflex & Technology Holding Co. (S. Ct.).

Represented client in Federal Circuit appeal of willful infringement ruling. Innovention Toys, LLC v. MGA Entertainment, Inc. The Federal Circuit reversed the willful infringement ruling, but the Supreme Court granted certiorari, vacated, and remanded based on the Court’s subsequent overruling of the Federal Circuit’s standard fpr proving willful infringement in Halo Electronics, Inc. v. Pulse Electronics, Inc.

Represented client in In re Alappat as amicus curiae and orally argued before the en banc Federal Circuit after taking position (lack of subject matter jurisdiction) that neither party was asserting.

Insights

  • Coauthor, Patent Litigation, Chapter 13 (Appeal), Practicing Law Institute, 2001-to 2018.
  • Coauthor, A Way to Improve PTAB Ex Parte Appeals, Law360, May 9, 2018.
  • Coauthor, Questioning USPTO Estoppel Rule 42.73(d)(3)(i): Part 2, Law360, Feb. 2, 2018.
  • Coauthor, Questioning USPTO Estoppel Rule 42.73(d)(3)(i): Part 1, Law360 Feb. 1, 2018.
  • The Federal Circuit Provides a Tutorial on Patent Venue, BakerHostetler IP Intelligence, Sept. 27, 2017.
  • Federal Circuit Suggests Solution to Patent Owner’s Dilemma When Applicant for Biosimilar Product Refuses Discovery, BakerHostetler IP Intelligence, Aug. 14, 2017.
  • The Federal Circuit Reverses a Hindsight Reconstruction of an Important Pharmaceutical Invention, BakerHostetler IP Intelligence, July 20, 2017.
  • The Federal Circuit Invalidates a Patent for Failure to Describe the Accused Product, BakerHostetler IP Intelligence, May 31, 2017.
  • The Supreme Court, Reversing the Federal Circuit, Holds that “Residence” in the Patent Venue Statute Refers to Only a Domestic Corporation’s State of Incorporation, BakerHostetler IP Intelligence, May 24, 2017.
  • In Case of First Impression, Federal Circuit Rules that a Patent Owner’s Statements in an IPR Proceeding Can Create Prosecution Disclaimer, BakerHostetler IP Intelligence, May 15, 2017.
  • Federal Circuit Remands Novel Issue on Patent Marking Requirement, BakerHostetler IP Intelligence, May 10, 2017.
  • Federal Circuit Appears to Narrow the Exceptions to 35 U.S.C. § 101, BakerHostetler IP Intelligence, Mar. 13, 2017.
  • The Federal Circuit Considers a New Issue on Appeal, Lectures the PTO on its Burden to Establish Obviousness, and Reveals an Internal Split on What to Do When the PTO Fails to Carry that Burden, BakerHostetler IP Intelligence, Mar. 2, 2017.
  • Federal Circuit Expands Personal Jurisdiction in Declaratory Judgment Suits, BakerHostetler IP Intelligence, Feb. 22, 2017.
  • Licensees Stymied by Sovereign Immunity Both in Federal Court and at PTAB, BakerHostetler IP Intelligence, Feb. 10, 2017.
  • Federal Circuit Provides Guidance on Divided Infringement, Inducement of Infringement, and Indefiniteness, BakerHostetler IP Intelligence, Jan. 17, 2017.
  • Biotech Patent Dispute Between Academics That Is Far from Academic, BakerHostetler IP Intelligence, Jan. 3, 2017.
  • Federal Circuit Panel Splits in Important Decision Regarding Its Jurisdiction Over Institution of IPRs, BakerHostetler IP Intelligence, Oct. 4, 2016.
  • A Split Panel of the Federal Circuit Debates the Standards for Definiteness, BakerHostetler IP Intelligence, Oct. 3, 2016.
  • Federal Circuit Holds PTAB Unreasonable in Denying Motion to Amend, BakerHostetler IP Intelligence, Sept. 2, 2016.
  • PTO Provides Additional Guidance on Patent Eligibility of Life-Sciences Method Claims, BakerHostetler IP Intelligence, July 20, 2016.
  • Federal Circuit Provides Additional Guidance in Reversing Holding of Patent-Ineligibility of Biotech Invention, BakerHostetler IP Intelligence, July 7, 2016.
  • Court Decides that ANDA Approved Before Patent Issued Cannot Infringe 35 U.S.C. § 271(e)(2)(A), BakerHostetler IP Intelligence, June 1, 2016.
  • Coauthor, Supreme Court to Consider Patent Laches in Wake of Copyright Laches Decision, BakerHostetler IP Intelligence, May 17, 2016.
  • Federal Circuit Denies Rehearing on Whether Section 337 Includes Digital Imports, BakerHostetler IP Intelligence, Apr. 8, 2016.
  • Federal Circuit Judge Bryson Denies Motion to Disqualify Plaintiffs’ Counsel, BakerHostetler IP Intelligence, Mar. 3, 2016.
  • Coauthor, Federal Circuit Discards the “Nexus” Test for Infringement at the ITC, Potentially Narrowing the Scope and Effectiveness of § 337, AIPLA Quarterly Journal, Dec. 27, 2013.
  • Coauthor, Trial Court Procedures in Patent Litigation: Maximizing Chances of Success on Appeal: Part 1, Intellectual Property & Technology Law Journal, Aug. 2013.
  • Coauthor, Trial Court Procedures in Patent Litigation: Maximizing Chances of Success on Appeal: Part 2, Intellectual Property & Technology Law Journal, Sept. 2013.
  • Coauthor, The Hatch-Waxman Act: Encouraging Innovation and Generic Competition, Current Topics in Medicinal Chemistry, Winter 2010.
  • Coauthor, “Chemical Patent Law,” Patent Resources Group, 1996

Interests

Allen has extensive experience representing clients on a pro bono basis in immigration cases, especially applicants for asylum.

Allen is an avid tennis player, plays piano, sings with the Choral Arts Society of Washington, and is a scuba diver.

Practice Areas
Industries
Technical Expertise
Locations

c/o San Diego

Education

J.D., Georgetown University Law Center

B.S., Chemical Engineering, University of Pennsylvania, cum laude

Bar and Court Admissions
  • United States Supreme Court
  • United States Court of Appeals for the Federal Circuit
  • United States Patent and Trademark Office
  • United States District Court for the District of Columbia
  • United States Court of Federal Claims
  • Supreme Court of Virginia
  • District of Columbia Court of Appeals