Bryan K. Wheelock

In the News

• Unlocking The Power Of Intellectual Property Of Mid-Size Companies
• “Trademarks in the Middle Market: Uncovering Hidden Value and Assets” – Harness IP’s Wheelock and Walsh on The Market That Moves America Podcast
• Patent Attorney Bryan Wheelock Co-presents 2021 Federal Circuit Year in Review CLE
• Patent Attorney Bryan Wheelock to Participate in Strafford CLE Webinar on the Expectation of Success Doctrine
• Patent Attorney Bryan Wheelock Quoted in Law360 about Written Description Requirement Rulings
• Bryan Wheelock Quoted about Submarine Patents in Bloomberg Law Article
• Attorneys Michael Thomas and Bryan Wheelock to Participate as Featured Speakers in a Virtual Meeting Hosted by the USPTO
• Bryan Wheelock Discusses Amended Patent Claims in PTAB Proceedings with Law360
• Bryan Wheelock Interviewed by Law360 about USPTO Deadlines amid COVID-19 Outbreak
• Bryan Wheelock talks to Diagnostics World News about the Value of Diagnostic Patents and Why Congress Must Protect Diagnostic Inventions
• Wheelock Shares Insights on GoPro "Printed Publication" Ruling with Law360

• “Forces Converge to Make Trademark Law Hot,” Of Counsel Newsletter

Presentations

“CLE: Annual Federal Circuit Year in Review and PTC Section Annual Election,” Co-presenter, Bar Association of Metropolitan St. Louis, March 3, 2017

“Intellectual Property Owner’s Manual,” Guest Speaker, Center for Emerging Technologies, June 2016

“Patent Federal Circuit Year in Review and Annual Election Meeting,” Guest Speaker, The Bar Association of Metropolitan St. Louis, St. Louis, MO, March 2016

Articles

• The Hypocrisy of ‘Delete IP’: Billionaire Frustrations Masquerading as Policy
• “Employee-Created Intellectual Property: Protecting Employer Ownership,” HR.com
• “Should Kellogg’s be Frosted by Seinfeld’s ‘Unfrosted’?,” IPWatchdog
• “Disney Copyright Expiration Spurs Trademark Questions,” Law360
• “Copy, Paste, Infringe!” – Harness IP’s Bryan Wheelock and Joel Samuels Clear Up Copyright Misconceptions in the St. Louis Bar Journal
• “Maximizing License Agreements with Precision,” Industry Today
• "Lexicography: The Ultimate Superpower" – Harness IP’s Bryan Wheelock in The Patent Lawyer
• Bryan Wheelock Discusses the Limits on Modifying Branded Goods in a Recent World Trademark Review Article
• Bryan Wheelock Discusses IP Rights for Kiosks and Vending Machines in Vending Times Article
• Bryan Wheelock Shares IP Design Protection Strategies in Nutrition Industry Executive Magazine

Blogs

• Joe Walsh and Bryan Wheelock Talk Middle Market IP on NCMM Podcast
• Website and Press Releases Created Plausible Claim of Inducement of Infringement by a Skinny Labelled Generic Product
• Plaintiff Failed to Show It was Entitled to a Preliminary Injunction to Protect its Trade Secrets
• Supreme Court Affirms 100+ Year Period for Copyright Damages
• Have a Seat Over There — Petitioner Has No Standing to Appeal PTAB Decision
• Extrinsic Evidence Needed to Construe Numerical Limitation in the Claims
• Co-owned, but Unrelated Application Cited in IDS Does not Inform the Meaning of the Claims
• Computer-Readable Recording Medium Is Not a Transitory Medium
• How Many?
• Storing and Displaying Video is an Abstract Idea
• A Court Can Only Enjoin Public Accusations of Patent Infringement if They Are Objectively Baseless
• Functional Medical Device Demonstrated at Trade Show Trigged On Sale Bar of pre-AIA 102(b)
• Holiday Countdown
• Still Chasing A Buck?
• Sitting On A Gold Mine
• July 4, 2022
• Juneteenth 2022
• June 14, 2022 — Flag Day 2022
• June 6, 2022 Patent of the Day
• Memorial Day 2022
• Not so fast — Letters to Customers + Customer Litigation Required More Analysis Before Dismissing a DJ Action
• “AND” Can Mean “OR” Depending on the Context
• Happy Mother’s Day 2022
• Dashed Lines Broaden the Scope of a Design Patent, But this is Ridiculous
• Plaintiff’s Gonna Lose, Lose, Lose, Lose, Lose
• Apparently Goodwill, like Love and like Diamonds, is Forever
• Wait ... Ignorance of the Law is an Excuse?
• Black Inventors and Their Inventions
• Groundhog Day: Thank you Mr. Sowerby
• Proper Claim Construction is Essential to a Determination of Patentability
• PTO Examiners are Entitled to Appropriate Deference
• Ordinary Meaning Can Be Broader than Disclosed Embodiments
• Silence is not only Golden, it is a Written Description if the Skilled Artisan Would Understand it that Way
• The Proper Claim Construction of a Term is Not Necessarily the Sum of its Parts
• Patents for a Happy Thanksgiving
• To Claim a Range, Make it Clear You are a Claiming a Range
• Any Third Party Use is Relevant to Whether a Claimant Made Exclusive Use of a Mark
• Veterans: Thank You for your Service
• Patent Venue Construed Strictly, Even in ANDA Litigation
• Indians Acting Like Cowboys: The Cleveland Guardians Trademark Dispute
• Failure in the Art Undermines any Reasonable Expectation of Success
• Too Late for Brooklyn Brewery to Pursue Brooklyn Brew Shop
• IPR’s Survive More Constitutional Challenges
• An Army of Citation Footnotes Crouching in a Field of Jargon is no Substitute Explanation
• THIS forum selection clause in THIS NDA agreement did not bar the IPRs
• What’s in a Name? Patentability.
• §101: Why We Won’t Have Nice Things
• There’s More to Being an Inventor than Butterscotch Ripple
• False Association Under 2(a) is not the Same As Likelihood of Confusion Under 2(d)
• Mmm, Mmm, Obvious
• Federal Circuit Holds USPTO Can’t Recover Expert Witness Fees under 35 USC § 145
• Wayback Machine Helps Prove Exhibit was Prior Art
• Broad, Functional Claims Made it Hard to Presume Nexus for Commercial Success
• The Step that Can Be Performed in The Human Mind is a Telltale Sign of Abstraction
• Following the Rules is Not Enough (Check the Statutes)
• Skimpy Proof of a Regular and Established Place of Business Bares Absence of Venue for Corporate Affiliates
• I will Gladly Assign to You Today an Invention I will Make Tomorrow
• Do Lawyers Make Us Rude?
• Trademark Dispute: Upwork Can Use the Term “Freelancer” to Describe an App for Freelancers
• Father’s Day 2021
• Recognizing Juneteenth
• Flagging a Potential Trademark Issue
• Flag Day 2021
• Intrinsic Evidence > Dictionary Definitions, Analogies, and Purported Plain Meaning
• Picture This: An Improved Camera is an Abstract Idea
• The Specification may be Eligible, But the Claims Were Not
• Antitrust Law is Not Appealing to the Federal Circuit
• The Disclaimer Doctrine Prevents Patent Owners from Construing the Claims Differently in Court than in the USPTO
• Complying with All Rules and Paying $7 Million in Fees Can Still Constitute Prosecution Laches
• Don’t Forget to Claim What the Device Is, Not Just What the Device Does
• The References are not the Only Sources a Person of Ordinary Skill Would Consider
• Applying Vitiation to “Annular Cover” was Circular Reasoning
• Federal Circuit Ignores Forum Selection Clause that Could Have Prevented IPR
• Federal Circuit Ignores Forum Selection Clause, Allowing IPR to Proceed
• Being Able to Practice the Invention is not the Same as Being Able to Practice the Full Scope of the Invention
• A Cease and Desist Letter Can Confer Personal Jurisdiction
• Trademark Protects Something From “Nothing”
• Copying for Compatibility, Rather than Creativity, is Fair
• A Basket of Easter Patents: Egghead Edition
• A Basket of Easter Patents
• Shamrock-shaped Patents
• St. Patrick’s Day in Patent History
• Can you Patent Something that Doesn’t Work?
• A Uniform Policy on Trademarks
• Marking Your Trademark: ® or TM
• Hindsight May be 20-20, but it has no Place in Evaluating Obviousness
• It’s OK to Give Less Weight to Suggestive and Descriptive Terms when Comparing Marks as a Whole
• Even If Phrase Was In the Preamble, it is a Claim Limitation that was Not Met
• Judgment of Non-Infringement Moots Appeal of PTAB Decision Sustaining Validity
• Late Request For Leave to Amend Complaint to try to Save Patent on Ineligible Subject Matter Denied
• A Preference for Something Else is not Teaching Away
• Patent FAQ: Patent Renewals, Expirations, Coverage, Tax Benefits, and More
• Breach of Confidentiality Agreement Required Transfer for Resulting Patents
• Petitioner Can Substantiate Prior Art When Challenged by Patent Owner
• Apparatus Claims Sometimes Incorporate Process Limitations, but Not this Time
• Descriptive Use of a Registered Trademark is not Infringement
• Finding Claims Non-obvious Was Not Error, It Was the Application of the Proper Evidentiary Standard
• IPR Estoppel: It’s Not A Second Bite at the Apple if You Didn’t Get a First Bite
• §315(c) Does Not Allow Board to Join IPRs or to Add Issues to an IPR via Joinder
• Goodwill Hunting
• Inventorship, Unlike a Claim, is a “Nose of Wax”
• Pointed Tip is Not a Substantially Flat Surface
• Clear Claim Language Trumped Written Description in Construction
• Upper and Lower Claim Limitations Leave Patent Owner Feeling Down
• Constitutional Rights: Use Them or Lose Them
• Local Rules, unlike the Pirate Rules, Are More than Mere Guidelines and Ignoring Them Can Cause a Loss of Rights
• Standard-Essentiality is a Question for the Factfinder
• Reason for Claim Amendment Was Tangential to Equivalent, Doctrine of Equivalents Applies
• Federal Circuit to PTAB: Show Your Work
• Improved Method of Operating a Flow Cytometry Apparatus Is Not Abstract
• "Half-Liquid" is Wholly Indefinite
• Lack of Likelihood of Success and Irreparable Harm Doomed Preliminary Injunction
• Institution Decision Not Carved in Stone; Final Written Decision Can Differ
• Apparent Agreement Did Not Protect Condom Company from Attack
• PTAB is not Limited to § 102 and § 103 when Reviewing Amended Claims in IPR
• Licensee’s Failure to Mark Ruined Patent Owner’s Claim for $3.5 Million in Pre-Suit Damages
• Collaboration and Concerted Effort are What Result in Joint Inventorship
• Board Should Fix Obvious Claim Errors in Order to Make a Decision on the Merits
• Over-designation of Confidential Information Costs Plaintiff Protection
• 42 U.S.C. § 262(l)(8) Simply Requires 180 Day Notice before Sale of a Biosimilar Product
• Past History is as Relevant as Current Conduct in Attorneys’ Fee Award
• Common Sense Dooms Airplane Bathroom Patents
• Federal Circuit Explains When You Can Ignore the Words Before the Colon in a Patent Preamble
• A Brief History of Patents & Slavery In Honor of Juneteenth
• The Federal Circuit extends the Kessler Doctrine to Dismissals with Prejudice
• Rogers Defense in Fight over Trademark Use in Teen Movie: Blockbuster or Flop?
• Employee Agreement Review
• A Clear Explanation of Reasons Needed for a Fee Award
• Joint Ownership of Patents: It Is Not Always Nice to Share
• IPR Attorneys’ Fees are not Awardable under Section 285
• Reducing Costs: Patent Maintenance Fees
• While PTO Action was Frustrating, Applicants Can Only Appeal Final Agency Actions
• Claim Terms Construed in the Context of the Entire Patent, including the Specification
• More Mischief from Exempting Agency Action from Review: Real Party in Interest in IPR not Reviewable
• Federal Circuit to PTAB: Try Harder to Construe Patent Claims in IPR
• Federal Circuit Erases Protection for Chalk Pencil
• Petitioner Can’t Complaint About Improperly Appointed PTAB
• Claims to System that Reduced Transmission Delays Are Patent Eligible and Not Merely Data Manipulation
• Board Misconstrued Scope of Prior Art By Relying on Reference Numerals in its Claims
• 19 Things In-House Counsel Can Do During the Lockdown To Improve Their IP Portfolio
• Ha Ha, Our New Robot Overlords Can’t Get Patents
• Losing the Right to Challenge a Patent is not Enough to Confer Standing to Appeal IPR Decision
• Pro Se Applicant Gets the Same Result as the Pros: Method of Fishing is Abstract
• Assignor Estoppel Cannot Resurrect Patent Invalidated in an IPR, but it Can Save Patent from Challenge in District Court
• Getting the Infringement Case Dismissed as Moot Still Counts as a Win
• The Scope of Patent Term Extension under 35 USC §156 Only Includes the Active Ingredient of an Approved Product
• Wrong or Purposefully Evasive Decisions on IPR Time Bar Are Not Reviewable
• Selection of Primary Reference in Design Patent Case is a Question of Fact that Should Not be Resolved on Summary Judgment
• Patent Claims Focusing on Improving Cardiac Monitoring Technology are Eligible Subject Matter
• Who Knew? Banks are People and Can Petition for Post-issuance Review, Too
• Good Friday 2020 and a History of Easter Eggs According to a Patent
• A Patent Claim is not Indefinite Merely Because Infringement Can’t be Determined in Advance
• The Board Can Identify New Issues of the Patentability of Amended Claims; But Must give the Parties Notice
• Color the TTAB Embarrassed; Packaging Colors can be Inherently Distinctive
• Similar Compounds at Overlapping pH’s Created Prima Facie Case of Obviousness
• Licensing of Process, and Sale of the Business using Process, did not put Invention on Sale
• Erroneous Patent Claim Interpretation and Misunderstanding of Case Law Results in Reversal of No Anticipation
• Allegations of Infringement Should not have been Enjoined without Evidence of Bad Faith
• Removal Improper Because Trade Secret Claim did not Necessarily Raise Inventorship Issues
• Descriptive Use or Trademark Infringement?
• Trademark Litigation Over "You're Never Done" Shows Sometimes You Are
• Endless Litigation
• Celebrating Spring 2020 with Patents
• § 315(c) Does Not Authorize Joinder of Two Proceedings, or Joining a Person to a Proceeding in Which that Person is Already a Party
• An Improved Step in a Diagnostic Method is Patentable Subject Matter
• Design Patent Infringement Affirmed Where Defendant Did Not Proffer Jury Instructions or Introduce Prior Art
• Prosecution History Doesn’t Have to Rise to the Level of Disclaimer to Inform the meaning of the Disputed Claim Term
• Patent’s Prosecution History Informs the Meaning of the Claim Language, Saving them from Invalidity
• First-Filed Declaratory Judgment Dismissed in Favor of Later-Filed Infringement Action
• International Women’s Day: Recognizing Mary Dixon Kies, First Woman to Obtain a U.S. Patent
• Software Can Make Non-Abstract Improvements to Computer Technology Just as Hardware Can (But Didn’t Here)
• Federal Circuit Finds Lawyers Chose Advocacy over Candor
• Leap Patents
• Motivation to Combine Prior Art Can Come from Knowledge of those Skilled in the art, the Art Itself, or the Nature of the Problem
• Licensee’s Failure to Mark Licensed Products Limits Patent Owner’s Recovery
• Hilton Sued for $4.6 Million for Infringing Restaurant Name, Trademark for Six Months
• Presidents’ Day 2020: Presidential Patents Beyond Lincoln
• Happy Valentines Day (Patents) 2020
• A Binding Settlement Agreement Generally Moots the Action Even if it Requires Future Performance
• Hot Sauce v. Pot Sauce
• Petitioner in an IPR is Entitled to Respond to Arguments Made by Patent Owner
• You Mess With Me, You Mess With My Whole (Patent) Family
• Recognizing the History-Makers in Black History Month
• Only an Expert Can Testify about What Would Be Obvious to a Non-Expert
• Federal Circuit Asks PTAB to Give it a Go and Decide Whether Indefinite Claims Were Otherwise Patentable
• File When Ready! Criteria for Determining if an Invention Should Be Patented
• General Knowledge is Available in Obviousness Inquiry Even Though IPRs are Limited to Documentary Prior Art
• Affirmed: Patent Owner’s Claim Construction that Excluded Preferred Embodiments Was Not Correct
• Lack of Showing of Criticality Dooms Claims
• IPR Decision Wipes Out Patent Owner’s Earlier Victory in District Court
• Markush Groups Open to Additional Elements
• Happy New Year! Celebrating a New Year with Patents
• Lack of Clarity for Reason for Denying Permanent Injunction Results in Remand

BOOKS

• “Evaluating and Addressing the Complexities of Various Intellectual Property Cases,” Co-authored by Geoffrey Aurini and Bryan Wheelock, Litigation Strategies for Intellectual Property Cases, 2015 Edition

In addition to his practice at Harness IP, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.

Awards & Distinctions

• Best Lawyers, Litigation – Patent “Lawyer of the Year” in St. Louis, 2021
• Best Lawyers, Trademark “Lawyer of the Year” in St. Louis, 2015
• Best Lawyers, Patent Law and Trademark Law, 2011-2024
• Best Lawyers, Copyright Law, 2018-2024
• Best Lawyers, Litigation – Intellectual Property and Litigation – Patent, 2019-2024
• JD Supra, Reader’s Choice Award, 2017-2018, 2022
• Intellectual Asset Management (IAM), “Patent 1000,” 2021-2023
• Managing Intellectual Property, “IP Stars,” 2014-2022
• Missouri Super Lawyers, 2011-2021
• World Trademark Review, “WTR 1000,” 2021-2022
• Lexology, Legal Influencer for IP – US, Q1, Q2 2020
• St. Louis Magazine, “Best Lawyers,” 2012

Memberships

• American Intellectual Property Law Association
• Bar Association of Metropolitan St. Louis
• International Trademark Association, Trademark Reporter Committee