Thomas J. Bean

Thomas J. Bean has extensive experience counseling clients on enforcing, acquiring, evaluating, licensing and protecting intellectual property assets. Mr. Bean focuses his practice on domestic and foreign patent prosecution in the areas of communications, consumer electronics, consumer products, semiconductor and materials technologies, medical devices, game devices, software and network-based systems and business methods.

Mr. Bean also prepares patent and technology licensing agreements, patent clearance studies and right-to-use opinions, and patent noninfringement/invalidity and infringement/validity opinions.

Before joining Gibbons, Mr. Bean was Senior Counsel at Darby & Darby P.C. in New York. Mr. Bean also held positions as an Associate at Katten Muchin Rosenman in New York and as Corporate Counsel at Lucent Technologies Inc. and Avaya Inc. in Holmdel, New Jersey. At Avaya, a Lucent spinoff, Mr. Bean was responsible for setting up and administering Avaya’s patent prosecution practice, including the management of outside counsel and foreign associate programs.

Prior to practicing law, Mr. Bean was a Technical Manager at Bell Laboratories in Holmdel, New Jersey, where he was responsible for field reliability studies, quality assurance of manufactured products, software quality assurance and R&D process improvement services.

Education
Rutgers University School of Law - Newark (J.D., 1996)

Stanford University (M.S., 1978)

Cornell University (B.S., cum laude, 1977)
Participant, Cornell Cooperative Engineering Program

Professional Admissions
State of New Jersey, 1997

State of New York, 1997

United States District Court for the District of New Jersey, 1997

United States District Court for the Eastern District of Texas

United States Patent and Trademark Office (Reg. No. 44,528)

United States Supreme Court, 2005

Professional Activities
Member, American Intellectual Property Law Association

Member, New York Intellectual Property Law Association

Member, International Intellectual Property Society

Member, Institute of Electrical and Electronics Engineers

Member, American Society of Mechanical Engineers

Publications
"AIA Post Issuance Proceedings – Patent Owner Challenges Standing of United States Entities to Bring PGR Review of CBM Patent," IP Law Alert, July 28, 2014 (Wendy R. Stein, Thomas J. Bean)

"AIA Post-Issuance Proceedings – Patent Owner’s Preliminary Response Persuades PTAB Denial of IPR," IP Law Alert, June 24, 2014

"AIA Post-Issuance Proceedings – Live Testimony Finds Its Way Into Oral Argument for Inter Partes Review," IP Law Alert, June 11, 2014

"AIA Post-Issuance Proceedings – First Claim Amendment Motion Granted in Inter-Partes Review," IP Law Alert, May 28, 2014

"AIA Post Issuance Proceedings – Additional Discovery Requested in Inter Partes Review Must Be “Surgically” Tailored," IP Law Alert, May 21, 2014

"AIA Post-Issuance Procedures – Estoppel Provisions Raised by Patent Owner In Attempt to Defeat “Synchronized” Decisions," IP Law Alert, April 22, 2014

"How Post-Issuance Patent Challenges Affect Concurrent Litigation," New Jersey Law Journal, April 14, 2014 (Thomas J. Bean, Robert E. Rudnick, James J. Kang)

"PTAB Finds DNA Sequencing Patent Claims to be Invalid," IP Law Alert, March 12, 2014

"Momentum Builds on Patent Litigation Reform...Goodlatte Bill Passes House," IP Law Alert, December 13, 2013 (Robert E. Rudnick, Thomas J. Bean, Ralph A. Dengler)

"PTAB Issues its First Decision in an Inter Partes Review Trial," IP Law Alert, November 20, 2013 (Thomas J. Bean, James J. Kang)

"Senate Proposes Its Bill on Patent Litigation Changes," IP Law Alert, November 6, 2013 (Thomas J. Bean, Robert E. Rudnick, Jillian A. Centanni)

"Patent Law Bill to Rein in Litigation Abuses . . . (No really)!," IP Law Alert, October 31, 2013 (Thomas J. Bean, Robert E. Rudnick, Ralph A. Dengler)

"Updated California Online Privacy Laws Require Disclosure of "Do Not Track" Policies," IP Law Alert, October 23, 2013 (Luis J. Diaz, Thomas J. Bean)

"Proposed Amendments to Patent Laws to Rein in Litigation Abuses," IP Law Alert, October 9, 2013 (Thomas J. Bean, Owen J. McKeon, Ralph A. Dengler)

"GAO Report Fails to Make it "Open Season" on Trolls," IP Law Alert, September 4, 2013 (Thomas J. Bean, Ralph A. Dengler)

"The Texas Two Step, A Tale of Two Texas District Courts' Differing Views Concerning Stay Requests Pending Inter Partes Review," IP Law Alert, August 16, 2013 (Robert E. Rudnick, Thomas J. Bean)

"Third Circuit District Courts Take Aim at Non-Patent Eligible Patents Under § 101," IP Law Alert, August 8, 2013 (Thomas J. Bean, Robert E. Rudnick, Ralph A. Dengler)

"Federal Circuit Advisory Council Gives Nod to Limited Claims and Prior Art in Patent Suits," IP Law Alert, July 23, 2013 (Thomas J. Bean, Ralph A. Dengler)

"Del. Leads The Way On CBM-Related Stay," Law360, March 18, 2013 (Christopher Viceconte, Thomas J. Bean, Ralph A. Dengler)

""SHIELD Act" Reintroduced to Combat NPEs...," IP Law Alert, March 7, 2013 (Thomas J. Bean, James J. Kang)

"Delaware Leads the Way on CBM-Related Stay," IP Law Alert, February 19, 2013 (Thomas J. Bean, Christopher Viceconte, Ralph A. Dengler)

"New Jersey Law to Stimulate High Tech Investment," IP Law Alert, February 6, 2013 (Thomas J. Bean, Ralph A. Dengler)

"PTO Announces Software Partnership Roundtable Meetings," IP Law Alert, January 9, 2013 (Thomas J. Bean, Robert E. Rudnick)

"AIA Technical Corrections Bill and Trade Secret Penalties Bill Await President's Signature," IP Law Alert, January 4, 2013

"USPTO Extends Deadline for Commenting on First Inventor to File Provisions of the AIA to November 5, 2012," IP Law Alert, October 19, 2012

"Akamai and McKesson: Inducement Liability for Infringement by Multiple Actors," IP Law Alert, September 10, 2012 (Thomas J. Bean, Ralph A. Dengler)

"(Still) Waiting for Akamai and McKesson ....," IP Law Alert, August 15, 2012 (Thomas J. Bean, Ralph A. Dengler)

"Trade Secrets Update," IP Law Alert, July 24, 2012 and Business Litigation Alert, July 26, 2012 (Thomas J. Bean, Owen J. McKeon, Ralph A. Dengler)

"In re Staats: Two-Year Time Limit for Reissue Applications," IP Law Alert, March 9, 2012 (Thomas J. Bean, Michael Cukor)

"New Jersey Trade Secrets Act Becomes Law," IP Law Alert, January 10, 2012 (Thomas J. Bean, Ralph A. Dengler)

"Coming Soon to New Jersey . . . Trade Secrets Law!," IP Law Alert, December 13, 2011 (Thomas J. Bean, Ralph A. Dengler)

"Federal Circuit Reins In Doctrine of Inequitable Conduct in Therasense, Inc. v. Becton, Dickinson & Co.," IP Law Alert, May 27, 2011

"Federal Circuit Provides New Rules for Post Injunction Contempt Proceedings in TiVo v. EchoStar," IP Law Alert, May 2, 2011

"U.S. Patent & Trademark Office Circulates Supplementary Patent Examination Guidelines Regarding Definiteness of Claim Language," IP Law Alert, February 17, 2011

"New Patent Quality Examination Metrics Attempt Greater Balance," IP Law Alert, November 1, 2010

"Supreme Court's Bilski Decision Rejects Federal Circuit's Machine-Or-Transformation Test For Business Method Patents," IP Law Alert, June 29, 2010 (Robert E. Rudnick, Thomas J. Bean)

Quotes/Interviews
Quoted in "All Great Businesses Begin with a Good Idea: U.S. Patent and Trademark Law Protects Intellectual Property", Commerce, December 2011

Speaking Engagements
Speaker, Association of Corporate Counsel New Jersey (NJCCA), "New Considerations for Patent Counsel: Patent Post-Issuance Proceedings under the AIA," Basking Ridge, NJ. June 3, 2014

Speaker, Gibbons Institute of Law, Science & Technology, "USPTO Patent Post-Issuance Proceedings Under the America Invents Act: Considerations Impacting the Healthcare and Technology Sectors," Newark, NJ. May 6, 2014

Moderator, New Jersey Intellectual Property Law Association - Third Electronics, Telecom and Software Patent Practice Update Seminar, "Monetization & Commercialization of Intellectual Property," New Brunswick, NJ. November 12, 2013

Speaker, Gibbons Institute of Law, Science & Technology, "USTPO Patent Post-Issuance Proceedings Under the American Invents Act - a New Frontier," Newark, NJ. April 23, 2013

Panelist, New Jersey Intellectual Property Law Association, "Post Grant Review: Strategies for Effective Use of Ex Partes Reexamination Under AIA," Iselin, NJ. January 24, 2013

Judicial Clerkship(s)
Judicial intern to the Honorable Philip B. Cummis, Law Division, Special Civil Part, Essex County Superior Court, 1994

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Thomas J. Bean Attorney at Law
Thomas J. Bean
Director
Intellectual Property

Contact Information
One Gateway Center
Newark, NJ 07102-5310

Direct: 973-596-4779
Fax:      973-639-6287
TBean@gibbonslaw.com
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