Gregory S. Nieberg

Overview

Greg Nieberg represents patent owners and petitioners—including high-tech companies in the electronics, software, and internet industries—in inter partes review (IPR) and patent reexaminations before the USPTO’s Patent Trial and Appeal Board (PTAB).

On the petitioner side, Greg is known for his ability to identify “killer” prior art that other challengers and prior-art search firms often fail to find. On the patent owner side, Greg's technical experience and creative thinking is often able to identify weaknesses in the other side’s prior art and arguments that can be case dispositive.

Whatever side of “v” he is on, Greg is known for carefully crafted approaches that align with his clients’ larger strategic goals, in particular maintaining consistency with related litigation defense / offensive positions.

Greg has also represented clients at all stages of patent litigations, including before federal district courts, the International Trade Commission (ITC), and arbitrations before the International Chamber of Commerce (ICC).

Greg’s technical experience includes a wide range of complex electrical and computer technologies, such as consumer electronics, medical devices, semiconductor technologies, materials, fabrication and device physics, and software and hardware related to various wireless standards and protocols, including Bluetooth, Wi-Fi, and 2G/3G/4G/5G cellular phone-standards.

Before joining Wolf Greenfield, Greg was a senior associate in the patent litigation group at an Am Law 50 law firm.

Greg is passionate about pro bono representation. He was awarded the 2011 Award for Excellence in Pro Bono Advocacy by Sanctuary for Families for the successful representation of a woman seeking asylum from Burkina Faso, where she faced retaliation for avoiding a forced marriage and FGM of her daughters. Greg also represented another client that successfully vacated a state criminal conviction on the grounds of ineffective assistance of appellate counsel over 10 years after pleading guilty and having a direct appeal denied.

Experience

Post-Grant Proceedings

• As counsel for Google, LG, and Samsung, filed IPRs on two patents concerning voice-based Internet-search technology asserted by Parus Holdings. Our IPRs invalidated all challenged claims; whereas IPRs filed by other petitioners failed to invalidate any claims of the same patents. We successfully defended the wins at the Federal Circuit when Parus appealed, resulting in a precedential opinion affirming the PTAB’s invalidation of the patent claims. (IPR2020-00846, IPR2020-00847)
• As counsel for Bose, secured institution of three IPR petitions against patents related to headphone designs and integrated hardware and wireless functionalities. In its final written decision, the PTAB found all challenged claims of one patent unpatentable, and the overwhelming majority of the remaining challenged claims unpatentable. (IPR2021-00297, -00612, -00680)
• As counsel for leading medical device company, defended several IPR petitions filed against client’s patents related to continuous glucose monitoring. Our team successfully upheld the validity of several challenged claims that were concurrently being asserted in district court litigation.
• As counsel for train positioning and safety component manufacturer, filed several petitions for IPR against competitors patents that were being asserted in a related litigation. For petitions where our team was lead counsel, the patent owner disclaimed the patents before the Board’s institution.
• As counsel for leading technology company, filed two IPRs challenging patents related to encryption and storage technology (pre-institution phase).
• As counsel for leading semiconductor manufacturer, filed IPR petition that successfully invalidated all challenged claims of patent related to MIMO wireless communication techniques.
• Successfully represented start-up company as petitioner in several IPRs involving patents related to proxy-server communications and data distribution over networks.
• Representing LiTL, LLC as patent owner in several IPRs, currently in the pre-institution phase.
• Huawei Device Co., Ltd. v. Maxell, Ltd. (PTAB). Represented Huawei as petitioner in two instituted IPRs of patents directed to various cellular phone functionalities involving positioning and base-station selection techniques.
• Hughes Network Sys., LLC, v. Elbit Sys. Land & C4I Ltd. (PTAB). Represented Elbit Systems Land and C4I Ltd. as patent owner in an IPR proceeding filed by Hughes Network Systems LLC challenging Elbit’s patents relating to satellite and cellular communication systems.

Patent Litigation 

• Maxell, Ltd. v. Huawei Device USA, Inc. et al. (District Court). Represented Huawei defendants in lawsuits involving patents on various cellular phone functionalities.
• Dominion Energy, Inc., et al. v. Alstom Grid LLC (District Court). Represented Alstom Grid in patent litigation involving electrical-grid management software.
• Linex Technologies, Inc. v. Hewlett-Packard Company et al. (District Court). Represented Hewlett-Packard in patent infringement litigation involving MIMO wireless communication systems for IEEE 802.11 Wi-Fi standards. Matter resolved favorably on summary judgment of non-infringement and invalidity.
• Optis Wireless Tech., LLC et al. v. Huawei Techs. Co. Ltd. et al. (District Court). Represented Huawei defendants in lawsuits involving patents involving cellular phone standards.
• In the Matter of Certain Wireless Devices with 3G and/or 4G Capabilities and Components Thereof, Investigation Nos. 337-TA-868 and 337-TA-800 (USITC). Represented Huawei respondents in a multi-patent, multi-respondent patent infringement litigation involving smartphones, tablets, and access points for 3G and 4G cellular standards.
• Peregrine Semiconductors, Corp. v. RF Micro Devices, Inc. (District Court). Represented Peregrine in claims and counter-claims of patent infringement, involving design, layout, and fabrication of radio frequency (RF) switches.
• In the Matter of Certain Semiconductor Devices, Semiconductor Device Packages, and Products Containing Same, Investigation No. 337-TA-1010 (USITC). Represented Complainant in patent infringement case involving semiconductor fabrication and packaging technology.
• In the Matter of Certain Woven Textile Fabrics and Products Containing Same, Investigation No. 337-TA-976 (USITC). Represented respondent textile manufacturer in a patent infringement case involving woven textile fabrics.
• Represented major pharmaceutical company in Hatch-Waxman litigations against several generic drug manufacturers relating to oral contraceptives.

Recognition

• Ranked among the top 5% of best performing and most active practitioners—out of 5,720 attorneys—when representing petitioners before the PTAB (Patexia’s IPR Intelligence Report) 
• Hugo Otto Wolf Memorial Prize in Electrical Engineering, “awarded to that member of the senior class in each department of the School of Engineering and Applied Science who, during the senior year, by the thoroughness and originality of his or her work, meets with the greatest approval of the professors in charge” (University of Pennsylvania)
• Gordon Wu Fellow, “Princeton’s most prestigious award for graduate study in engineering … made to new graduate students who demonstrate the potential to be world leaders in their fields in the 21st century” (Princeton University)
• Prince Scholarship, Dean’s Merit Scholarship, Faculty Scholarship Centennial Grant (Brooklyn Law School)
• 2011 Award for Excellence in Pro Bono Advocacy (Sanctuary for Families)