Patent Trial and Appeal Board (PTAB) Litigation

In a lawsuit filed in the Southern District of New York, Nike accused our client lululemon of infringing six patents relating to athletic software technology. We filed IPR petitions against all six patents, won a pre-institution stay of the district court proceeding, and then persuaded the PTAB that every asserted claim was unpatentable. In total, the PTAB found 62 patent claims unpatentable in its Final Written Decisions.

We scored an IPR victory for our client Magic Leap against Percept Technologies. Percept asserted two patents against Magic Leap in district court. We filed IPR petitions on the two patents, and the district court case was stayed pending the IPRs. The PTAB subsequently ruled in favor of Magic Leap, finding all challenged claims to be unpatentable. 

Represented Xilinx in proceedings as part of its ongoing patent case against Analog Devices. Oversaw and handled 16 IPR proceedings (one of the largest numbers to be litigated in one patent dispute). Successfully invalidated many of the asserted claims against Xilinx, and successfully defended challenges brought by ADI against Xilinx’s patents. These proceedings involved a large amount of evidence, technical sophistication due to the complex analog circuit designs at issue, and a mastery of the nuances in an opaque area of patent law.

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 such a complete patent owner victory occurs only in a small fraction 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.

Prepared and filed three IPR petitions for Splunk, Inc., in connection with a litigation brought against Splunk in the Eastern District of Texas. The challenged patents related to computer networking and network data analytics. All three petitions were instituted, leading to favorable settlement of the IPRs and the district court litigation.

Successfully represented VMware in PGR and IPR proceedings as part of its patent dispute with Cirba. We obtained favorable Final Written Decisions holding all challenged claims unpatentable before the PTAB proceedings challenging the two patents in suit.

Prepared and filed five IPR petitions for client Quibi Holdings, LLC, challenging three patents belonging to a competitor that had sued Quibi in the Northern District of California. The challenged patents included network-optimized streaming techniques and protocols for wireless devices. All five petitions were instituted, leading to a settlement of the IPRs and the district court litigation.

Our client PhishMe was locked in patent litigation over a PhishMe patent with a competitor. The competitor filed a PGR petition on the PhishMe patent, but we identified a 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.