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Alan S. Teran, Ph.D.

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Alan S. Teran, Ph.D., is an associate in the Litigation Department and Intellectual Property Group.

His practice focuses on a variety of intellectual property issues, including worldwide patent portfolio development and litigation. Alan also has experience with in-house legal and compliance matters, including product counseling, commercial contracts, and privacy.

Alan has expertise in semiconductor devices and fabrication as well as experience with a wide range of technologies, including augmented/virtual reality-based software solutions; material processing operations; control systems; integrated circuits; machine learning-based financial services software; media and mobile technology; medical devices; and secondary batteries.

Alan is a registered patent attorney before the U.S. Patent & Trademark Office; and a Certified Information Privacy Professional in the United States (CIPP/US) with the International Association of Privacy Professionals (IAPP).

Alan received his Ph.D. in Electrical Engineering at the University of Michigan, where his research focused on energy harvesting technologies and semiconductor physics for Internet-of-Things and medical applications.

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According to the Federal Circuit, twenty-two communications with a party over the course of three months may be enough to force a defendant to defend itself in the state where the party is located.  But three letters sent over that same time period is not enough.

In a recently published opinion, Trimble, Inc. v. PerDiemCo LLC, the Federal Circuit reversed a district court’s dismissal of a declaratory judgment noninfringement action for lack of personal jurisdiction.  PerDiemCo, a Texas LLC and the defendant in the action, had communicated with Trimble twenty-two times over the course of three months.  The communications began with a demand letter from PerDiemCo’s sole owner to Trimble’s subsidiary seeking to have Trimble pay for a non-exclusive license to practice PerDiemCo’s allegedly infringed patents.  The parties attempted to negotiate over the next three months via letters, emails, and telephone calls until Trimble filed a declaratory judgment noninfringement action in the Northern District of California, where Trimble is headquartered.