16755 Von Karman Ave, Suite 275
Irvine, CA 92606

Tom H. Dao

Practice Areas
Domestic and foreign intellectual property counseling, litigation support, prosecution, licensing, opinions, and trademark prosecution and counseling.

Technology Areas
Mechanical, electro-mechanical, and medical device technology, oil and gas equipment and machineries, green technology, and complex rotating equipment.

Education
Western State University (J.D. 1998); American Jurisprudence Award in Torts
University of California at Irvine (B.S. Mech. Eng. 1989); University of California at Santa Barbara (Chemical Engineering courses, 1985-1987)

Professional Experience
Prior to his legal career, Mr. Dao was a Power Engineer for Texaco Refinery and a Maintenance and Reliability Engineer for ARCO where he specialized in heavy duty rotating equipment, pumps, compressors, turbines, system controls, hot tapping, dry and mechanical seals, and reliability maintenance, among others.

As a Patent Attorney, Mr. Dao has served domestic and foreign clients in procuring patents and clearance to use, sell, or make products in the U.S. He has provided litigation support and has worked on an appeal before the Court of Appeals for the Federal Circuit. Mr. Dao provides ongoing IP portfolio management and development to protect niche market/position.

Mr. Dao was formerly a Partner at Christie, Parker & Hale prior to joining Klein, O’Neill & Singh.

Representative Cases
Bal Seal Engineering Company, Inc. v. Jay Q. Huang and Saint-Gobain Performance Plastics Corporation, 10-cv-0819 – CAB.  Plaintiff asserted infringement of U.S. Patent Nos. 5,082,390; 5,545,842; 5,411,348; and 5,160,122 and theft of trade secrets lawsuit, among others.  Argued and received favorable claim construction orders and successfully defended defense’s motion for summary judgment.  The parties eventually settled their differences out of court.

Ex parte Kevin Woehr and Michael Zerbes, U.S. Board of Patent Appeals and Interferences, Appeal No. 2011-002408:  Appealed the rejection of claims for obviousness under seven (7) different §103(a) grounds.  Attended oral hearing and argued before the BPAI.  The Appeals Board reversed the examiner’s rejection on all grounds and all claims issued in U.S. Patent No. 8,308,691 entitled “Catheter Assembly and Components Thereof”

Ex parte Marice Loretti, Raoul Chattot, and Savka Djokic, U.S. Board of Patent Appeals and Interferences, Appeal No. 2010-005585:  Appealed the rejection of all pending claims as anticipated under §102(b) and obviousness under §103(a).  Attended oral hearing and argued before the BPAI.  The Appeals Board reversed the examiner’s rejection and all claims issued in U.S. Patent No. 8,025,977, entitled “Multilayer Film”

Ex parte David Edwards, U.S. Board of Patent Appeals and Interferences, Appeal No. 2011-013653, for application entitled “Methods for Production of Ophthalmic Lens Molds and Molded Ophthalmic Lenses”:  Attended oral hearing and argued before the BPAI.  Appealed the rejection of all pending claims for obviousness under §103(a).  The Appeals Board reversed the examiner’s rejection on all grounds.

Ex parte Kevin Woehr, Helmut Freigang, Juergen Fuchs, Juergen Reuter, Klaus Siemon, Joerg Wende and Frank Hilberg, U.S. Board of Patent Appeals and Interferences, Appeal No. 2009-011020:  Appealed the rejection of all pending claims for definiteness under §112, 2nd paragraph, and as anticipated under §102(b).  Attended oral hearing and argued before the BPAI.  The Appeals Board reversed the examiner’s rejection and all claims issued in U.S. Patent No. 8,048,036, entitled “Spring Launched Needle Safety Clip”

Ex parte Kevin Woehr and Juergen Fuchs, U.S. Board of Patent Appeals and Interferences, Appeal No. 2010-008293:  Appealed the rejection of claims for obviousness under §103(a).  Attended oral hearing and argued before the BPAI.  The Appeals Board reversed the examiner’s rejection and all claims issued in U.S. Patent No. 8,419,682 entitled “Safety Syringes”

Ex parte Kevin Woehr, U.S. Board of Patent Appeals and Interferences, Appeal No. 2010-010078:  Appealed the rejection of claims for obviousness under §103(a).  Attended oral hearing and argued before the BPAI.  The Appeals Board reversed the examiner’s rejection and all claims issued in U.S. Patent No. 8,382,718 entitled “Needle Assembly and Components Thereof”

Ex Parte Julie Clements, U.S. Patent Trial and Appeal Board, Appeal No. 2013-003884:  Appealed the rejection of all pending claims as anticipated and rendered obvious under four different grounds by several prior art references.  Following oral hearing, the Board reversed all the claims on all the grounds.

Ex parte BRADLEY P. ACTIS, U.S. Patent Trial and Appeal Board, Appeal No. 2015-001869.  Appealed the rejection of claims 14-24, 26-28, and 31-47 for obviousness under ten (10) different 35 U.S.C. § 103(a) grounds.  Argued Appellant’s case before the PTAB.  The Board reversed all appealed grounds.

Ex parte EDWIN L. BURNARD and DAVID M. NELSON, U.S. Patent Trial and Appeal Board, Appeal No. 2014-009707.  Appealed the rejection of claims 1-20 as being anticipated under 35 U.S.C. § 102(b).  Argued Appellant’s case before the PTAB.  The Board reversed all appealed grounds.

Bar Admissions
Admitted to practice law in California (1999)
Registered to practice before U.S. Patent and Trademark Office
Memberships / Additional Information
U.S. District Courts: California Central District.

Member: The State Bar of California; Orange County Patent Bar Association; Past President of the Orange County Patent Bar Association (2011).

Language: Vietnamese.

Email:  “TDao@koslaw.com

Sample Patents

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