Patent Office Litigation

Overview

Our Patent Office Litigation team is deeply experienced in post-grant proceedings before the United States Patent & Trademark Office (USPTO).  We consistently represent both petitioners and patent owners.  With exceptional trial and appellate skills, as well as technical knowledge and expertise, our team consistently delivers exceptional results for our clients.  We work effectively with litigation counsel to develop and execute on a strategy that will best leverage our expertise at the Patent Trial and Appeal Board (PTAB) as an element of the client’s overall litigation strategy.  Whether it’s challenging or defending patents, we are your winning choice.

Challenging or Defending Patents

Our Patent Office Litigation Team comprises highly skilled patent litigators and prosecutors with deep technical backgrounds and extensive experience litigating patent disputes in federal courts across the country, as well as before the PTAB.  Our team members guide our clients through complex post-grant proceedings, including traditional ex parte reexaminations, inter partes reexaminations, reissues and interferences, as well as inter partes review (IPR), post-grant review (PGR), covered business methods (CBM) review, supplemental examination, and derivation (DER) proceedings established under the America Invents Act (AIA).

We use post-grant proceedings as a measure to prevent potential or threatened litigation, as well as part of an offensive or defensive litigation strategy. We have successfully assisted patent owners and those accused of infringement in navigating these complex proceedings before the USPTO to achieve our clients’ desired business objectives.

For patent owners, we effectively dissect and challenge the unpatentability arguments in the petition to save the claims for trial.  As one example, our team defended 88 challenged claims across 4 patents, delivering an exceptional result with 54 claims (61%) surviving the IPR challenges for trial—which is significantly higher than the PTAB’s average claim survival rate of 25.6%.  Meanwhile, representing petitioners, we leverage our deep technical expertise to understand complex technologies and carefully craft petitions to kill patents.  Moreover, we have had notable successes with appeals of PTAB final written decisions to the Federal Circuit.

Experience in District Court and Patent Office litigation

The new AIA contested proceedings share many features with district court litigation and the prior USPTO interference and inter partes reexamination practices, which are being phased out. Some of the similarities include the use of technical expert witnesses, opportunities for document discovery, depositions, motion practice, and sanctions. Success in the new proceedings thus requires a sophisticated blend of USPTO and patent litigation experience. Our Patent Office Litigation Team has deep experience in both, a rare combination today. Given the Team’s blend of extensive patent trial and USPTO experience, we are uniquely positioned to counsel clients on how best to leverage all forms of post-grant proceedings as an element of their overall intellectual property strategy.

Technical Depth and Knowledge

With a technical background in engineering or science, our Patent Office Litigatio team has the depth and knowledge to understand complex technologies and craft winning legal strategies.  Our technical expertise involves a wide range of industries, including medical devices, electronics, computer architecture, computer networks, fiber optics, wireless and satellite communications, gaming, semiconductor devices, mechanical devices, among others.

Select Patent Office Litigation Matters

Infinera Corp. v Core Optical Technologies, LLC. Successfully represented Patent Owner in Inter Partes Review proceeding at the PTAB and obtained a favorable decision denying institution on all grounds raised by Petitioner (IPR2018-01259, Paper 9, January 14, 2019).

Collective Minds Gaming Co. Ltd. v. Ironburg Inventions, Ltd. Represented Patent Owner in four Inter Partes Review proceedings at the PTAB in connection with four U.S. Patents (IPR2018-00354, IPR2018-00355, IPR2018-00356, and IPR2018-00357), which led to a favorable settlement.

Valve Corporation v. Ironburg Inventions, Ltd. Represented Patent Owner in six Inter Partes Review proceedings at the PTAB in connection with four U.S. Patents (IPR2016-00948, IPR2016-00949, IPR2017-00136, IPR2017-00137, IPR2017-00858, and IPR2017-01928), including related Appeals to the U.S. Court of Appeals for the Federal Circuit (Appeal Nos. 2018-1432, -1731, -1783).

Fujitsu Network Communications, Inc. v Core Optical Technologies, LLC. Successfully represented Patent Owner in Inter Partes Review proceeding at the PTAB and obtained a favorable decision denying institution on all grounds raised by Petitioner (IPR2016-01618, Paper 13, January 31, 2017).

TCT Mobile (US) Inc. v. Telefonakiebolaget LM Ericsson.  Successfully represented Petitioner TCT Mobile in 17 Inter Partes Review proceedings, resulting in institution of all 17 IPRs and invalidation of four of the five challenged patents, thereby reducing potential exposure and simplifying issues to be tried in the district court (IPR2015-01584, IPR2015-01583, IPR-01600, IPR2015-01605, IPR2015-01602, IPR2015-01622, IPR2015-01628, IPR2015-01650, IPR2015-01646, IPR2015-01637, IPR2015-01641, IPR2015-01674, IPR2015-01676, IPR2015-01772, IPR2015-01761, IPR2015-01806, and IPR2015-01878).