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In Brief: A Digest of Post-Grant Proceedings Projects

Client Success
  • Represented the American Simmental Association (ASA) in a patent infringement case in the U.S. District Court for the District of Colorado involving methods of using genetic merit data to determine relative value of livestock. Obtained dismissal for ASA in the litigation and petitioned the PTO to reevaluate validity of the patents in post-grant proceedings. PTAB granted the petitions and issued the first ever PGR final decisions invalidating the patents.
  • In connection with defending a global leader in baby and children’s products charged with patent infringement in federal court in California, we successfully invalidated all claims of the patent in suit by filing and winning an Review at the Patent Trial and Appeal Board.
  • In connection with asserting infringement of a patent of the same global leader in baby and children’s products against a competitor in federal court in Texas, we successfully defended all claims of the patent in a companion Review at the Patent Trial and Appeal Board brought by the competitor. At the outset, the firm persuaded the PTAB to exclude some of the challenged claims from the proceeding entirely because the challenger had failed to establish a reasonable case as to them. As to the remaining claims that went forward, none were invalidated, an infrequent outcome at the PTAB.
  • Represented Gnosis SpA in the first pharmaceutical-related Inter Partes Review proceeding, involving patent directed to compositions including natural active metabolites used to treat folate deficiencies. Obtained finding of invalidity in all 58 challenged claims.
  • Obtained dismissal of patent infringement case for multinational Sunbeam Products Inc., a home appliance manufacturer, after Inter Partes Reexamination of the patent-in-suit resulted in all claims rejected.
  • Represented Korea-based dental equipment manufacturer, Vatech Co. Ltd., in intellectual property litigation and in several reexamination proceedings before the USPTO. The civil litigation was stayed after we initiated Inter Partes Reexamination of patents-in-suit. The case was settled on a worldwide basis after asserted claims were found not patentable in reexamination proceedings.
  • Prosecuted an Inter Partes Reexamination proceeding on behalf of a multinational company, resulting in the rejection of all patent claims asserted against the client and the dismissal of the litigation.
  • Represented Semiconductor Energy Laboratory Co., Ltd., the patentee, in two IPRs. Petitions for IPRs were filed and initiated against the patents. We defended the patents through the expert phase and then the IPRs were settled. We were able to achieve our client successfully maintaining its patents and all of its patent rights.
  • Lead counsel for petitioner (a manufacturer of physical infrastructure equipment) in several Review proceedings, challenging patents for High Density and Bandwidth Fiber Optic Apparatuses and Related Equipment and Methods; Fiber Optic Equipment Guides and Rails Configured with Stopping Position(s), and Related Equipment and Methods; Optical Polarity Modules and Systems; Independently Translatable Module and Fiber Optic Equipment Trays in Fiber Optic Equipment; and Rear-Installable Fiber Optic Modules and Equipment.
  • A large competitor commenced an Reexamination against our client StormTrap LLC, challenging one of StormTrap’s significant patents concerning precast, modular, underground storm water detention and retention assemblies and modules, citing numerous references. The Patent Office confirmed the validity of all but three of the claims, confirmed the validity of those three other claims with some amendment, and confirmed the patentability of eight new claims that we added to the patent.