Aaron Capron

As a former patent examiner for the U.S. Patent and Trademark Office, Aaron J. Capron is well-placed to manage large portfolios with hundreds of patents for multinational clients as a partner at Finnegan, Henderson, Farabow, Garrett & Dunner LLP.

Early in his career, Capron worked as a systems engineer at Lockheed Martin Corp. He joined Finnegan Henderson as a student associate in 2005. He is a past president of the Silicon Valley Intellectual Property Association.

“Silicon Valley is a great place to be in my line of work,” Capron said. “There’s constant technological development, most recently in the AI field. That has sparked inventions, and we have recently pursued patents in speech recognition technology and in image processing.”

His clients include ASML Netherlands B.V., Alibaba Group Holding Ltd., Included Health Inc. (formerly Grand Rounds Health Inc.) and Megagon Labs.

For ASML Netherlands, a leading electronic components supplier, Capron has overseen a patent portfolio that includes technologies directed to inspecting silicon features on integrated circuits down to a few nanometers.

Capron and the Finnegan team has assisted ASML in winning 88 percent of their cases at the U.S. Patent and Trademark Office appeal process — at a time when the Patent Trial and Appeal Board ruled for applicants less than half the time.

“We are 15 and 2 at the PTAB since 2016,” Capron said. “My time working at the Patent Office led me to understand how to focus on arguments we believe will be successful.”

Capron works with Included Health to shield its digital health solutions portfolio with IP protections from competitors. The Finnegan team provides strategic counseling and has filed several design and utility applications. Capron said that when the client was advised by another law firm that some of its innovations were not patentable, it reached out to him and his colleagues for a second opinion.

“Digital health technology can have some difficulty at the PTO because of the general problem of obtaining business methods patents,” Capron said. “But when the previous firm said an innovation would be impossible to patent, I thought there was a way to massage the application to get an allowance.”

The method involved was a way to identify physicians who could provide patients with second opinions. Capron obtained the patent. “We’ve done some cool work for them,” he said. “And since we got that patent, we’ve developed a good relationship.”

The Finnegan team also counsels Included Health on strategies for protecting its trade secrets, including proprietary ad sophisticated algorithms and software for providing advanced health care.

“It’s all fascinating work,” Capron said.

—John Roemer