• First-ever PTAB dismissal on sovereign immunity grounds: We successfully asserted a sovereign immunity defense on behalf of our client, the University of Florida Research Foundation (UFRF), persuading the PTAB to dismiss three IPRs. In an issue of first impression, the PTAB found that UFRF is an arm of the state of Florida entitled to sovereign immunity and therefore cannot be subject to IPRs involuntarily. State universities had previously had patents challenged before the PTAB, and none had ever argued that sovereign immunity rendered them immune to those challenges. (IPR2016-01274, IPR2016-01275, IPR2016-01276)
• First-ever precedential Federal Circuit decision confirming Board’s authority to issue adverse judgment for pre-trial disclaimer of claims: Our client, Smith & Nephew, Inc., filed an IPR petition against claims of a competitor’s patent asserted against Smith & Nephew in related litigation. Rather than substantively respond to the petition, the competitor disclaimed its claims and requested that the proceeding be terminated by simply denying institution. While the Board had done just that in identical circumstances several times before, we argued that the proceeding should instead be terminated by entering adverse judgment against the patent owner, which would trigger a patent owner estoppel provision that would prevent the patent owner from obtaining patentably indistinct claims in its pending continuation applications. The Board agreed and granted adverse judgement. In a precedential decision, the Federal Circuit affirmed the Board, finding that it had authority to issue the adverse judgment even though the competitor disclaimed claims prior to an institution decision. 
• First-ever PTAB grant of attorneys’ fees: The PTAB granted a motion for attorneys’ fees filed by our client, RPX Corp., a leading provider of patent risk solutions, in three inter partes review (IPR) proceedings in which RPX challenged patents owned and asserted by a non practicing entity (NPE). This unprecedented attorneys’ fees award followed the Board’s granting of RPX’s motion for sanctions against the NPE. The Board held that sanctions, rarely granted, were appropriate in this case since the NPE violated a protective order in its handling of RPX’s confidential information. (IPR2015-01750, IPR2015-01751, IPR2015-01752)
• First-ever PTAB win on secondary considerations: Our client, Saint-Gobain, won confirmation of all claims in its patent, marking a rare (less than 15% chance) instance of a patent surviving an AIA review unscathed. In finding the claims nonobvious, the PTAB relied upon the evidentiary record Saint-Gobain was able to develop demonstrating commercial success of the invention. (IPR2014-00309)
• First-ever pre-institution deposition of non-declarant: While defending four of EMC Corporation’s patents in IPRs, the PTAB granted us a pre-institution deposition of the petitioner’s CEO on the question of whether the petitions properly named all real parties in interest. The PTAB had never previously granted a pre-institution deposition of a non-declarant. The deposition testimony proved useful in persuading the PTAB that the petitions failed to identify all real parties in interest, resulting in the PTAB denying institution on all four petitions. (IPR2014-01295, IPR2014-01254, IPR2014-01329, IPR2014-01332)

• LiTL: Persuaded the Patent Trial and Appeal Board (PTAB) to deny five out of five petitions to institute IPRs filed by Lenovo on five different patents related to computer interface technology being asserted by our client LiTL. Some of the decisions turned on claim construction issues, while others turned on the petitioner’s failures to map the claims to the prior art. (Institution denied: IPR2021-00681, IPR2021-00786, IPR2021-00800, IPR2021-00821, IPR2021-00822).
• WisTa: Saved two critical patents directed to certain highly purified chemical compositions for our client WisTa, even though the European counterparts were successfully challenged by the same party. (Confirmation of all claims: IPR2018-00182 and IPR2018-00323).
• SolarFlare (now part of Xilinx): Persuaded PTAB to deny institution on two unrelated patents being asserted in litigation by our client Solarflare related to sophisticated networking technology. Denials of institution on both petitions gutted the defendants’ stay strategy, and the litigation settled within weeks on terms favorable to SolaFlare. (IPR2016-01832, IPR2016-01908).
• Nuance: Successfully defended all claims of patent on medical record technology challenged by a competitor, with the result upheld on appeal to the Federal Circuit. (Confirmation of all claims: IPR2018-01355).
• Enleofen, Boehringer Ingelheim and patent owners Singapore Health Services and the National University of Singapore: Successfully defended patent on groundbreaking fibrosis treatment by convincing the PTAB to deny institution of PGR filed by competitor because the petitioner failed to meet the threshold showing that any claim is likely unpatentable based on lack of written description, non-enablement or obviousness. (Institution denied: PGR2019-00053).
• EMC: Persuaded the PTAB to deny an infringer’s petitions to institute IPRs on five patents being asserted by our client EMC. The denials served as a turning point in the concurrent litigation and gave EMC a leg up in preparing validity positions for trial. (Institution denied: IPR2014-01295, IPR2014-01254, IPR2014-01329, IPR2013-00458, IPR2014-01332).
• University of Maryland: Saved a valuable patent by demonstrating petitioner failed to show lack of written description and lack of enablement for “tagged proteins” used to treat cancer, and therefore challenged patent antedated the purported prior art references. (Institution denied: IPR2020-00233).
• Saint-Gobain: Won confirmation of all claims in a patent owned by our client Saint-Gobain—marking a rare instance of a patent surviving an America Invents Act review entirely unscathed. We convinced the PTAB to reverse its initial view that the claims were likely invalid by showing that Saint-Gobain’s significant commercial success was tied to the patented invention. This was the first time the PTAB found claims patentable in an IPR based on secondary or objective factors. (Confirmation of all claims: IPR2014-00309).
• BTG (now part of Boston Scientific): Convinced the PTAB not to institute an IPR on behalf of our longtime client BTG International Inc., the manufacturer of CroFab® rattlesnake antivenom, preserving BTG’s right under a settlement agreement regarding an ITC litigation to prevent a competitor antivenom product from infringing its patent. (Institution denied: IPR2014-01269).
• Cold Spring Harbor Laboratory: Convinced the PTAB not to institute four IPRs on four separate patents on behalf of our client Cold Spring Harbor Laboratory. The outcome preserved CSHL’s robust and widely licensed shRNA patent portfolio, which has generated more than $1 million in licensing revenue for the client. (Institution denied: IPR2016-00014, IPR2016-00015, IPR2016-00016, IPR2016-00017).

• Smith & Nephew: Filed 16 petitions challenging 162 claims across several orthopedic surgery device patents asserted by rival Arthrex and achieved a perfect institution record on 16 out of 16 petitions for IPR on 162 of 162 claims. In the parallel litigation, these IPRs forced Arthrex to dismiss three asserted patents with prejudice, and to stay proceedings on three more asserted patents. (IPR2016-00483, IPR2016-00484, IPR2016-00485, IPR2016-00486, IPR2016-00487, IPR2016-00505, IPR2016-00506, IPR2016-00507, IPR2016-00508, IPR2016-00817, IPR2016-00818, IPR2016-00819, IPR2016-00854, IPR2016-00917, IPR2016-00918, IPR2017-00275).
• Google and LG: Successfully invalidated all challenged claims in two patents on instant messaging technology asserted by Zipit Wireless. (IPR2019-01567, IPR2019-01568).
• Sony: Obtained institution on all challenged claims directed to non-magnetic tape technology, then defeated rival Fujifilm’s non-contingent motion to amend the claims. All challenged claims were successfully proven unpatentable. (IPR2017-00809).
• RPX: Filed three petitions for IPRs against a patent asserted by a non-practicing entity against 29 large technology companies. The petition exposed a fatal defect in patent’s priority claim and led to dismissal of all lawsuits and disclaimer of the patent. (IPR2017-00208, IPR2017-00209, IPR2017-00212).
• RPX: Persuaded the PTAB to grant a motion for sanctions and subsequently a motion for attorneys’ fees filed by our client RPX Corporation, a leading provider of patent risk solutions, in three IPRs. The PTAB held that sanctions, rarely granted, were appropriate in this case since the patent owner violated a protective order in its handling of RPX’s confidential information. (Three petitions instituted on all grounds: IPR2015-01750, IPR2015-01751, IPR2015-01752).
• RPX: Filed a petition on behalf of RPX Corporation that led the patent owner to disclaim its patent before the PTAB could institute a trial. An exceedingly small number of patent owners disclaim their patents before institution, making this a rare occurrence and complete victory for our client. (All patent claims cancelled: IPR2015-00736).
• Sony: While defending Sony in a complex multi-respondent action before the International Trade Commission, filed IPR petitions against all three asserted patents. Our concerted attack on the patents before the ITC and in the Patent Office led the patent owner to drop the suit entirely less than two weeks before the ITC hearing was set to begin. Sony reached a favorable settlement that included withdrawal of its IPR petitions. (Favorable settlement: IPR2014-00230, IPR2014-00231, IPR2014-00229).

• Bard: Led multi-firm effort to overcome rejections in reexamination of a medical device patent owned by C. R. Bard, Inc. on which there was an outstanding judgment in excess of $1 billion. Developed strategy that resulted in immediate withdrawal of the rejections and secured the judgment.
• Nuance: Represented patent owner Nuance Communications, Inc. in nine reexamination proceedings arising from two different parallel litigations. All nine were resolved with all claims confirmed.
• Google: Filed ex parte reexamination successfully invalidating all challenged claims of patent asserted by Cypress Lake Software on mobile GUI technology, with the rejection then being affirmed by the PTAB on appeal.
• Ascion: Won final cancellation of all original claims and rejection of all added claims, ending the patent portion of a dispute between our client and a vendor. Related Litigation: Ascion LLC v. Ruoey Lung Enterprise Corp.

Under the America Invents Act (AIA), interferences will be phased out in the coming years; however, they are still a viable alternative for patents filed before March 16, 2013.

• Cooper v. Goldfarb. Won the longest-running patent interference in USPTO history, prevailing in three Board of Patent Appeals and Interferences decisions and two Federal Circuit appeals. The resulting patent issued in 2002 and has been litigated with success.
• Precision Biosciences: Successfully defended nine Precision BioSciences patents relating to CAR-T cell cancer immunotherapy in interferences by Cellectis.
• Regents of the University of California v. University of Iowa Research Foundation. Won a dismissal that not only preserved our client’s valuable patent rights, but also significantly expanded the existing law and provided additional protection to all patent holders by restricting the ability of patent applicants to provoke an interference against an issued patent.
• Raz v. Krieg. Represented the prevailing inventor in two related patent interferences. In the first, we prevailed in the preliminary motions period, and the other side appealed and then abandoned the appeal. In the second, the other side conceded and requested that judgment be entered in our favor.
• Adimab v. Dyax. Invalidated Adimab's patent and removed an anticipatory reference as prior art by proving 11 months of diligence for Dyax. Resulted in Dyax obtaining a patent originally granted to a top competitor. Such successful long diligence showings are very rare.
• Bestfoods v. Barber Foods. Developed a strategy that caused the patentee to concede the interference, resulting in a former collaborator’s patent being cancelled and allowing our client to obtain a patent on that subject matter.
• Landers v. Sapolsky. Prevailed on behalf of the Massachusetts Institute of Technology on §112 grounds, as Sapolsky’s claims were not supported because they were broader in scope than the method disclosed in the specification.