Patent Trial and Appeal Board (PTAB) Litigation

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.