Patent Trial and Appeal Board (PTAB) Litigation


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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.

Experience

  • Hitachi Metals Ltd.
    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.
  • PhishMe
    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.
  • Genetech
    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.
  • Yamaha
    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.
  • Netlist
    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.

Law360
IP Practice Group of the Year in 2013, 2015 and 2016


Chambers Global 2018
Global: Intellectual Property
Asia-Pacific Region: Intellectual Property
China: Intellectual Property: International Firms
Japan: Intellectual Property: International Firms
United States: Intellectual Property (Patent)
United States: Intellectual Property (Section 337)


Chambers USA 2017
National: Intellectual Property
National: International Trade: Intellectual Property (Section 337)
California: Intellectual Property
California: Intellectual Property (Patent Prosecution)
New York: Technology & Outsourcing
Washington D.C.: Intellectual Property (Litigation)
Washington D.C.: Technology & Outsourcing


Chambers Asia-Pacific 2018
Japan: Intellectual Property: International Firms
Asia-Pacific Region: Intellectual Property


U.S. News – Best Lawyers® Best Law Firms 2018
National: IP Litigation (Tier 1)
National: Patent Litigation (Tier 1)
National: Patent Law (Tier 1)
Los Angeles: IP Litigation (Tier 1)
Los Angeles: Patent Litigation (Tier 1)
San Diego: IP Litigation (Tier 1)
San Diego: Patent Litigation (Tier 1)
San Diego: Patent Law (Tier 1)
San Francisco: IP Litigation (Tier 1)
San Francisco: Patent Litigation (Tier 1)
San Francisco: Patent Law (Tier 1)
Washington D.C.: IP Litigation (Tier 1)
Washington D.C.: Patent Litigation (Tier 1)


The National Law Journal 2016
IP Hot List


Legal 500 US 2018
Copyright
Patent Litigation: ITC
Patent Litigation: Full Coverage
Patents: Portfolio Management and Licensing
Patent: Prosecution (Including re-examination and post-grant proceedings)
Trade Secrets
Trademarks: Litigation


Legal 500 Asia-Pacific 2018
China: Intellectual Property: Foreign Firms
Hong Kong: Intellectual Property
Japan: Intellectual Property: International Firms and Joint Ventures


Managing IP: American Awards Shortlist 2018
United States: Appellate
United States: Life Sciences IP Litigation
United States: ITC
Japan: Patent – Foreign Firms


IAM Patent 1000 2017
California: Litigation (Gold)
California: Transactions (Highly Recommended)
California: Prosecution
Hong Kong: Litigation & Transactions
International
Japan: Litigation and Licensing (Highly Recommended)
National: Transactions
National: Litigation
Washington D.C.: Litigation


LMG Life Sciences 2017
Hatch-Waxman Patent Litigation
Patent Prosecution (Highly Recommended)
Patent Strategy and Management (Highly Recommended)


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National Law Journal - 2016 IP Hot List


Law 360 - IP Practice Group of the Year
IP Practice Group of the Year 2015, 2013


Chambers USA Winner 2013 - IP Firm of the Year
IP Firm of the Year


BTI Litigation Outlook
BTI Litigation Outlook
“IP VIP” (2015)
“IP Litigation Powerhouse” (2014)

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