Patent Trial and Appeal Board (PTAB) Litigation

Our team’s combination of technical backgrounds and legal acumen sets it apart from other PTAB groups.

With a world-renowned patent litigation group that has handled some of the world’s biggest IP cases, coupled with a patent prosecution group with practitioners who hold more than 65 advanced degrees in a variety of science and engineering fields, our Patent Trial and Appeal Board (PTAB) Litigation group is especially qualified to navigate our clients through this unique forum.

PTAB trials – which include post-grant review (PGR), inter partes review (IPR), covered business method review (CBM), and derivation proceedings – were designed to provide faster, more affordable alternatives to standard district court patent litigation.

Our PTAB Litigation group draws on the combined talents of our intellectual property litigators and the technical knowledge of our patent prosecution lawyers to guide clients through the unique set of rules and procedures involved in PTAB trials. We can counsel our clients through the strategic considerations of a PTAB trial while providing the in-depth technical analysis that the PTAB requires. To date, we have handled more than 180 PTAB matters in total, representing both the petitioner and patent owner at all stages of the proceedings.

In addition, PTAB judges often possess technical backgrounds themselves and are looking for more technically sophisticated arguments than are generally presented to a jury. Our PTAB group has experience and proficiency in a wide array of scientific and technological areas, including electronics, medical devices, computer software and hardware, semiconductors, and life science technologies.

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Experience

  • We obtained a complete victory for patent owner Hitachi Metals Ltd. when the PTAB concluded that all of the claims of the patents were not unpatentable in a Final Written Decision. Such a decision occurs in approximately 19% of IPRs. The decision turned on whether a prior art reference adequately described a procedure. We argued that the reference did not, and the PTAB agreed.

  • Our client PhishMe and its biggest competitor were locked in patent litigation over a PhishMe patent. The competitor filed a PGR petition on the PhishMe patent, but we identified a fatal weakness in the petition: the competitor had failed to properly establish that the patent qualified for PGR. The PTAB agreed and denied review.

  • Our client Genentech was sued for patent infringement related to the chemotherapy drug Tarceva, a tyrosine kinase inhibitor which Genentech co-markets. We defended Genentech in the lawsuit and, as part of the defense strategy, filed an IPR petition challenging the validity of the asserted patent. Following the parties’ written submissions and oral argument, the PTAB agreed with our argument that all the asserted claims of the patent were obvious in light of the prior art.

  • In a case involving assertion of numerous patents relating to streaming audio technology against our client Yamaha and many other audio/video companies by patent holder Black Hills Media, we succeeded in invalidating 81 claims of four patents in four separate IPR proceedings. In its Final Written Decisions, the PTAB found all claims under review to be unpatentable based on multiple grounds. The related litigation had previously been stayed pending the outcome of the IPRs.

  • In an earlier version of IPR, we represented our client Netlist all the way to the Federal Circuit, which is the highest patent court outside of the Supreme Court. In this case, we amended the claims, and the PTAB agreed that the amended claims were patentable. The Federal Circuit agreed as well in a precedential decision.

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