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.
Post-Grant Record 2016-Present:
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. State universities had previously had patents challenged before the PTAB, and none had ever argued that sovereign immunity rendered them immune to those challenges. (IPR2016-01274, IPR2016-01275, IPR2016-01276)
- First-ever precedential Federal Circuit decision confirming Board’s authority to issue adverse judgment for pre-trial disclaimer of claims: Our client, Smith & Nephew, Inc., filed an IPR petition against claims of a competitor’s patent asserted against Smith & Nephew in related litigation. Rather than substantively respond to the petition, the competitor disclaimed its claims and requested that the proceeding be terminated by simply denying institution. While the Board had done just that in identical circumstances several times before, we argued that the proceeding should instead be terminated by entering adverse judgment against the patent owner, which would trigger a patent owner estoppel provision that would prevent the patent owner from obtaining patentably indistinct claims in its pending continuation applications. The Board agreed and granted adverse judgement. In a precedential decision, the Federal Circuit affirmed the Board, finding that it had authority to issue the adverse judgment even though the competitor disclaimed claims prior to an institution decision.
- First-ever PTAB grant of attorneys’ fees: The PTAB granted a motion for attorneys’ fees filed by our client, RPX Corp., a leading provider of patent risk solutions, in three inter partes review (IPR) proceedings in which RPX challenged patents owned and asserted by a non practicing entity (NPE). This unprecedented attorneys’ fees award followed the Board’s granting of RPX’s motion for sanctions against the NPE. The Board held that sanctions, rarely granted, were appropriate in this case since the NPE violated a protective order in its handling of RPX’s confidential information. (IPR2015-01750, IPR2015-01751, IPR2015-01752)
- First-ever PTAB win on secondary considerations: Our client, Saint-Gobain, won confirmation of all claims in its patent, marking a rare (less than 15% chance) instance 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 defending four of 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)