Successful track record. Our team knows how to win cases by persuading the technical fact-finders at the USPTO. With post-grant proceedings rising in prominence – whether as an alternative to litigation or as a central piece of a litigation strategy – winning a post-grant proceeding is now a critical step in winning a patent dispute. We have delivered for our clients. While challengers frequently win in such proceedings, we also win when we represent patent owners, persuading the Patent Trial and Appeal Board not to cancel claims – and in many cases not to even institute a trial – or convincing examiners to withdraw their rejections in reexaminations.
2016/2017 Snapshot of Post-Grant Matters:
Deep experience in the art of technical persuasion. We honed our skills for persuasively presenting the technical and legal issues that pervade post-grant proceedings through years of successfully handling reexams, winning patent litigations, and excelling in interferences. And, when post-grant proceedings entail changing the claims of a patent, our years of experience procuring patents for our clients comes into play, enabling us to guide clients through the choices of whether and how to amend a patent. As an IP specialty firm, we have built an infrastructure to support maneuvering within the rigid timelines and rules for responding to USPTO actions and submitting evidence.
Ahead of the curve in highly specialized proceedings.
- First-ever PTAB dismissal on sovereign immunity grounds: We successfully asserted a sovereign immunity defense on behalf of our client, the University of Florida Research Foundation (UFRF), persuading the PTAB to dismiss three IPRs. In an issue of first impression, the PTAB found that UFRF is an arm of the state of Florida entitled to sovereign immunity and therefore cannot be subject to IPRs involuntarily. While state universities had previously had patents challenged before the PTAB, no party had ever asserted that sovereign immunity renders a state entity immune to those challenges. (IPR2016-01274, IPR2016-01275, IPR2016-01276)
- First-ever PTAB grant of attorneys’ fees: The PTAB granted a motion for attorneys’ fees filed by our client RPX Corporation, a leading provider of patent risk solutions, in three IPR proceedings in which RPX challenged patents owned and asserted by a non-practicing entity. This unprecedented attorneys’ fees award followed the rare granting of a motion for sanctions, which the Board held was appropriate in this case because the NPE violated a protective order in its handling of RPX’s confidential information. In addition to attorneys’ fees, the Board also granted RPX’s request for other types of sanctions. (IPR2015-01750, IPR2015-01751, IPR2015-01752)
- First-ever PTAB win on secondary considerations: Our client Saint-Gobain S.A. won confirmation of all claims in its patent, marking a rare instance (less than 15% chance) of a patent surviving an AIA review unscathed. In finding the claims nonobvious, the PTAB relied upon the evidentiary record Saint-Gobain was able to develop demonstrating commercial success of the invention. (IPR2014-00309)
- First-ever pre-institution deposition of non-declarant: While we were defending four of our client EMC Corporation’s patents in IPRs, the PTAB granted us a pre-institution deposition of the petitioner’s CEO on the question of whether the petitions properly named all real parties in interest. The PTAB had never previously granted a pre-institution deposition of a non-declarant. The deposition testimony proved useful in persuading the PTAB that the petitions failed to identify all real parties in interest, resulting in the PTAB denying institution on all four petitions. (IPR2014-01295, IPR2014-01254, IPR2014-01329, IPR2014-01332)