J. Steven Baughman
Steve Baughman is an intellectual property partner in Ropes & Gray’s Washington, D.C. office, where he recently returned after spending three years in Japan to open the firm’s office in Tokyo. For 20 years, Steve has worked with leading international companies to resolve their IP and technology-focused commercial disputes in a broad array of litigation, licensing, and counseling settings. These include patent and trade secret disputes—as well as trademark, copyright, and other complex commercial matters—presented in trial and appellate courts, domestic and international arbitration tribunals, and the International Trade Commission. Steve’s patent litigation matters have involved both utility and design patents.
Steve chairs the firm’s post-grant Patent Office invalidity challenge practice, and in connection with infringement disputes and litigation he is representing and advising clients on the new post-grant mechanisms that have become available as a result of the Leahy-Smith America Invents Act of 2011, including covered business method (CBM) and inter partes review (IPR) trials. Steve also conducts strategic ex parte patent reexaminations (and ongoing inter partes patent reexaminations). Steve is counsel on 15 of the first 25 petitions for covered business method patent review filed at the PTO’s new Patent Trial and Appeal Board, and on all four of the petitions submitted the day the transitional program for CBM patents became available, September 16, 2012, including the first petition on which the Board instituted trial, resulting in the first oral hearing before the Board, and the Board’s first final written decision in a post-grant trial – a victory for our client, SAP, recognized by Managing IP as “Milestone Case of the Year.” Steve has been counsel for petitioners in 8 of the first 9 CBM trials to reach final oral argument before the Board, and in 8 of the Board’s first 10 final written determinations on CBM petitions. All of these resulted in wins for Steve’s clients, with the final written decisions resulting from these trials invalidating every challenged claim in each of the 6 patents they challenged. For his work in this field in 2013, Steve was named “IP MVP” by Law360.
Serving clients like Fujitsu, Aisin AW, Motorola, Sanyo Electric Co., Ltd., Simmons Bedding Company, Orbital Sciences Corporation, Olympus, Spansion Japan Limited and other leaders in a wide range of industries, Steve has experience with diverse subject matter ranging from communications networks, semiconductors, and software to disk drives, satellites, and GPS tracking systems, and from financial services and business methods to e-commerce and video games. He is also experienced in media-related disputes and claims of plagiarism.
Whether they are facing off against industry competitors, patent trolls, or other opponents, Steve offers his clients experience in crafting and implementing efficient strategies for achieving real business goals. Steve also brings experience in working effectively across jurisdictions, with multiple counsel and large groups of codefendants.
- Liberty Mutual Insurance Company (CBM2012-00002, CBM2012-00003, CBM2012-00004, CBM2013-00003, CBM2013-00004, CBM2013-00009). Steve filed six petitions for covered business method review in connection with our defense of Liberty Mutual against assertions of three different patents relating to determining a cost of insurance based on vehicle monitoring in Progressive Casualty Insurance Co. v. Safeco Insurance Co., et al. After our ex parte reexamination of the originally asserted patent resulted in Progressive’s amendment of every remaining claim while litigation was stayed, we filed CBM petitions challenging the amended claims and two later-asserted patents. The board initiated CBM trials on every claim of these three patents, and we successfully stayed the related district court litigation – one of the first litigation stay decisions involving CBM proceedings. On January 23, 2014, the Board issued final written decisions in CBM2012-00002 and -00004 – the Board’s first final written CBM decisions on prior art grounds – invalidating all claims of the patent challenged in those trials. On February 11, 2014, the Board issued final written decisions in CBM2012-00003 and 2013-00009, invalidating all claims of the patent challenged in those trials. And on March 13, 2014, the Board issued a final written decision in CBM2013-00004, invalidating all claims of the patent challenged in that trial. Thus, every claim of every one of these three challenged patents has been held unpatentable in a final written decision from the Board.
- SAP AG (CBM2012-00001). Steve represents SAP, as co-counsel, in a CBM trial challenging a Versata patent involving product pricing in multi-level product and organizational groups, asserted in litigation against computer software.This CBM trial – the very first to be initiated – went to oral argument before the board on April 17, 2013 on the issue of invalidity under 35 U.S.C. § 101, and the Board issued a final written decision in favor of SAP on June 11, 2013, finding every challenged claim invalid for failure to claim patentable subject matter under § 101.
- Liberty Mutual Insurance Company (CBM2012-00010, CBM2012-00011, CBM2013-00001, CBM2013-00002). Steve filed four petitions for CBM review in defending Liberty Mutual against assertions of two different patents relating to an Internet online insurance policy service in Progressive Casualty Insurance Co. v. Safeco Insurance Co., et al. The Board initiated trials on every claim of both challenged patents. As noted in the Liberty Mutual example above, we successfully stayed the related district court litigation pending the outcome of these CBM proceedings. On February 24, 2014, the Board issued final written decisions in CBM2012-00010 and CBM2013-00002, invalidating all claims of both challenged patents.
- A Leading U.S. Consumer Electronics Company (CBM2013-00019, CBM2013-00020, CBM2013-00021, CBM2013-00023). Steve filed four petitions for CBM review challenging two litigated patents relating to selling digital music electronically. Based on these petitions, we successfully stayed the related district court litigation pending the outcome of the CBM proceedings.
- RR Donnelley & Sons Co. (IPR2013-00529, IPR2013-00538). Steve is defending two RR Donnelley patents relating to high resolution real time raster image processing in inter partes review petitions filed by petitioner Xerox Corp.
- Branch Banking and Trust Company (CBM2013-00059). Steve filed a petition for CBM review challenging a litigated patent assigned to Maxim Integrated Products, Inc., entitled “Transfer of Valuable Information Between a Secure Module and Another Module.”
- Spansion LLC (IPR2014-00103, IPR2014-00104, IPR2014-00105, IPR2014-00106, IPR2014-00107, IPR2014-00108, IPR2014-00898). Steve is defending six semiconductor- and memory-related Spansion patents in seven IPRs filed by petitioner Macronix. To date, the Board has denied Macronix’s petitions on two of these challenged patents.
- A Leading Korean Consumer Electronics Company (IPR2014-00209, IPR2014-00212, IPR2014-00407, IPR2014-00408). Steve filed IPR petitions challenging two litigated patents generally relating to the delivery of Internet media content to a portable device.
A Leading Medical Device Company (IPR2014-00429). Steve filed an IPR petition challenging a litigated patent relating to pedicle screw technology.
A Leading U.S. Consumer Electronics Company (CBM2014-00102, CBM2014-00103, CBM2014-00104, CBM2014-00105, CBM2014-00106, CBM2014-00107, CBM2014-00108, CBM2014-00109, CBM2014-00110, CBM2014-00111, CBM2014-00112, CBM2014-00113). Steve filed twelve petitions for CBM review challenging six litigated patents relating to storing and paying for data.
SAP AG (CBM2013-00042). Steve represents SAP, as co-counsel, in a CBM petition challenging an additional Versata patent involving product pricing in multi-level product and organizational groups, asserted in litigation against computer software.
Spansion LLC (IPR2014-01116, IPR2014-01117, IPR2014-01118). Steve filed IPRs challenging three semiconductor-related patents asserted by Macronix against Spansion at the International Trade Commission.
Leveraged Innovations, LLC v. ProShare Advisors LLC, ProShares Trust, ProShares Trust II, et al. (S.D.N.Y.) – Defended against patent infringement allegations involving geared/leveraged exchange traded funds (ETFs). Obtained summary judgment resulting in dismissal of plaintiff’s claims against 127 of the 131 ETFs (and 98.5% of the assets) at issue in the litigation, followed by settlement.
- Optimum Power Solutions v. Fujitsu America, Inc. (C.D.Cal.) – Defending Fujitsu in patent infringement litigation involving computer power management technologies.
- Smart Memory Solutions LLC v. Fujitsu Semiconductor Limited et al. (D. Del., transferred to N.D. Cal.) – Represented Fujitsu in patent infringement litigation involving flash memory technology; successfully sought transfer to Northern District of California prior to disposition.
- Advanced Data Access LLC v. Fujitsu Limited et al. (E.D. Tex.) – Represented Fujitsu in patent infringement litigation involving flash memory technology.
- Fast VDO LLC v. Olympus America Inc. et al. (D. Del) – Represented Olympus in patent infringement litigation involving video recording technology.
- In the Matter of Certain Flash Memory and Products Containing the Same: Defended Spansion Japan in pending multi-respondent ITC investigation into alleged infringement of patents relating to semiconductor device manufacturing.
- Tom Tom Global Assets B.V. v. Aisin AW Co., Ltd., et al. (E.D. Tex., Marshall Div.); and Aisin AW Co., Ltd. v. TomTom NV (E.D. Tex., Lufkin Div.): Represented Aisin AW in suits involving seven patents relating to vehicle navigation systems. Both suits resolved as part of a global settlement of cases pending in the U.S., Germany and Japan, in which both companies received licenses under the other’s patents.
- CyberSource Corporation v. Retail Decisions, Inc., et al. (N.D. Cal.): Defended related UK and US clients against patent infringement allegations relating to fraud detection in Internet credit card transactions. Successfully narrowed and stayed suit pending ex parte reexamination of asserted patent, where plaintiff amended all of its claims. Upon lifting of stay, filed summary judgment motions to invalidate the asserted claims. Based on one of these motions, following the Federal Circuit’s Bilski decision, Judge Patel found all asserted claims invalid for failure to claim patentable subject matter.
- Bioject Inc. v. Robert R. Gonnelli and Biovalve Technologies Inc.: Lead counsel defending Biovalve and its founder against suit seeking correction of patent inventorship and alleging misappropriation of trade secrets relating to needle-free injection technology. Case successfully settled after briefing of motion to dismiss and limited discovery.
- BTG USA, Inc. v. Magellan Corporation (E.D. Pa.): Defended Magellan Corporation against claims of infringement of a patent relating to a “secret communication system,” asserted in consolidated suits against GPS and other technologies. Case settled following favorable Markman decision.
- "Milestone Case of the Year" Managing IP (2014)
- Law360 – Intellectual Property MVP (2013)
- Financial Times “Innovative Lawyers” Report (2013)
- IAM Patent 1000 – The World’s Leading Patent Professionals (2013-2014)
- Washington, D.C. Super Lawyers, Intellectual Property Litigation (2013-2014)
- Litigation Counsel of America, Fellow
- Co-author, “Understanding discovery in administrative post-grant proceedings at the Patent & Trademark Office,” Inside Counsel (October 16, 2013)
- J. Steven Baughman, Gene Lee and Rodrigo Valle, “The multi-party infringement puzzle,” The Patent Lawyer (November/December 2012)
- J. Steven Baughman, “Taking Stock: The AIA At 1 Year,” Law360 (September 14, 2012)
- J. Steven Baughman, “Choosing Inter Partes Reexamination or Review: What to File, and When?” Intellectual Property & Technology Law Journal (September 2012)
- J. Steven Baughman, "Inter Partes Reexamination and Inter Partes Review: Weighing Strategic Choices Before the Clock Runs Out,” Bloomberg BNA Patent, Trademark & Copyright Journal (August 6, 2012 in print and August 3, 2012 online)
- J. Steven Baughman, “Navigating The Looming Changes To Post-Grant Challenges,” Law360 (July 26, 2012)
- J. Steven Baughman, 「米国における共同侵害とその対応策」(“Joint and Divided Infringement: Navigating the Changing Landscape For Multiple Actors and Distributed Systems Under U.S. Patent Law”) (J. Steven Baughman, Hiroyuki Hagiwara), Intellectual Property Management, Japan Intellectual Property Association, Vol. 62, No.3 (No. 735) (March 2012)
- J. Steven Baughman,「米国外を拠点とする企業にとっての、防御目的
での米国特許再審査手続活用メリット」(“Advantages of the Defensive Use of U.S. Patent Reexaminations for Companies Based Outside the United States”), LES JAPAN NEWS, Vol. 52, No.3 (September 2011)
- J. Steven Baughman, “Patents And The Video Game Industry: What You Don't Know Could Hurt You,” Gamasutra.com (Jan. 13, 2011) (J. Steven Baughman, Mark Bloomberg)
- J. Steven Baughman, “Special Report: Advantages of the Defensive Use of US Patent Reexaminations for Companies Based Abroad,” BNA World Intellectual Property Report (January 2011)
- J. Steven Baughman, “What’s In a Name? ‘Patent Trolls’ and Other Bedtime Stories,” Corporate Counsel (Dec. 1, 2008) (available in Japanese: 日本語)
- J. Steven Baughman, "Asian Clients Need a Helping Hand in E-Discovery," National Law Journal (Sept. 1, 2008, p. 14 (In Focus: Asia Practice)) (J. Steven Baughman, Kaede Toh, Hiroyuki Hagiwara) (available in Japanese: 日本語)
- J. Steven Baughman, “Litigating non-obviousness after KSR v. Teleflex,” Intellectual Asset Management Magazine’s Patents in the USA 2008: A guide for Japanese Executives, at 44-48 (J. Steven Baughman, David Brightman, Hiroyuki Hagiwara) (available in Japanese: 日本語)
- J. Steven Baughman, "Reexamining Reexaminations: A Fresh Look at the Ex Parte and Inter Partes Mechanisms for Reviewing Issued Patents,” Journal of the Patent and Trademark Office Society (May 2007, Vol. 89, No. 5, pp. 349-363), originally published in Bloomberg Corporate Law Journal (Winter 2007, Vol. 2, Issue 1, pp. 53-68) (available in Japanese: 日本語)
In The News
- Cited, “Spansion Targets Macronix Patents In PTAB Review Petitions,” Law360 (July 22, 2014)
- Profiled, “The Patent Trial and Appeal Board at 21 Months: An Interview With J. Steven Baughman of Ropes & Gray,” Patent, Trademark & Copyright Journal (July 11, 2014)
- Quoted, Diversity & The Bar, (July-August 2014)
- Quoted, “The Intellectual Property Hot List: Ropes & Gray,” National Law Journal (June 2, 2014)
- Cited, “Liberty Mutual Goes Five-for-Five in PTAB Challenges to Progressive Insurance Patents,” Bloomberg BNA Patent, Trademark & Copyright Journal – Daily Update (March 19, 2014)
- Cited, “PTAB’s Latest Decisions on Merits Include One Set of Claims Upheld, No Amendments,” Bloomberg BNA Patent, Trademark & Copyright Journal – Daily Update (March 3, 2014)
- Cited, “USPTO Nixes Another Progressive Patent In AIA Review,” Law360 (February 12, 2014)
- Cited, “Eight PTAB Decisions in Two Days Result In Cancellation of Challenged Patent Claims,” Bloomberg BNA Patent, Trademark & Copyright Journal – Daily Update (February 11, 2014)
- Cited, “PTAB Now Four-for-Four in Cancelling Covered Business Method Patent Claims,” Bloomberg BNA Patent, Trademark & Copyright Journal – Daily Update (January 27, 2014)
- Cited, “USPTO Sets AIA Review Rules In Nixing Progressive's IP Suit,” Law360 (January 27, 2014)
- Quoted, “5 Things You Need To Know Before Arguing At The PTAB,” Law360 (November 21, 2013)
- Cited, “Progressive's Business Method Patent Obvious, PTAB Told,” Law360 (November 13, 2013)
- Cited, “IP MVP: Ropes & Gray's J. Steven Baughman,” Law360 (November 12, 2013)
- Cited, “Law360 MVP Awards Go To Legal Top Guns From 58 Firms,” Law360 (November 8, 2013)
- Cited, “Progressive's Biz Method Patents Obvious, PTAB Hears,” Law360 (October 28, 2013)
- Cited, “Patent Court Sets the Pace,” National Law Journal (October 21, 2013)
- Cited, “USPTO OKs Apple Bid for AIA Review of SightSound Music IP,” Law360 (October 21, 2013)
- Cited, “Ropes & Gray Represents Major Bank in One of the First Covered Business Method Patent Reviews,” IPFrontline (September 19, 2013)
- Cited, “USPTO Nixes Versata Bid To Rehear AIA Patent Loss,” Law360 (September 19, 2013)
- Cited, “USPTO Gets 2nd Biz Method Review Bid By Major Bank,” Law360 (September 17, 2013)
- Quoted, "How They Won It: Finnegan, Ropes Win 1st-Ever AIA Challenge," Law360 (July 2013)
- Cited as “Legal Lion,” “Law360's Weekly Verdict: Legal Lions & Lambs,” Law360 (June 13, 2013)
- Quoted, “PTAB delivers final CBM review ruling,” World Intellectual Property Review (June 14, 2013)
- Quoted, “SAP victorious in first-ever covered business method patent battle,” Thomson Reuters News & Insight (June 13, 2013)
- Quoted, “Patent Board's SAP Ruling is First Under New AIA Rules,” Corporate Counsel (June 13, 2013)
- Quoted, “SAP Wins Ruling Opposing Versata Patent in $345 Million Case (1),” Bloomberg Businessweek (June 12, 2013)
- Quoted, “1st AIA Ruling Opens Door To More Patent Challenges,” Law360 (June 12, 2013)
- Quoted, “USPTO Nixes Versata Patent In 1st-Ever AIA Ruling,” Law360 (June 12, 2013)
- Quoted, “Patent Board's SAP Ruling is First Under New AIA Rules,” The Recorder (June 12, 2013)
- Quoted, “Patent Office Makes Landmark Invalidity Ruling,” Daily Journal (June 13, 2013)
- Cited, “District Court Stays Proceedings Until Covered Business Method Review Completed,” Bloomberg BNA Patent, Trademark & Copyright Journal – Daily Update (April 24, 2013)
- Cited, “1st AIA Review Hearing Less Like A Trial Than Expected,” Law360 (April 17, 2013)
- Cited, “Versata Patent 1st To Undergo USPTO's Biz Method Review,” Law360 (January 10, 2013)
- Cited, “AIA Patent Challenges at PTO Get Slow Start After Reexamination Filing ‘Bubble,'” Bloomberg BNA Patent, Trademark & Copyright Journal (October 5, 2012 in print and October 3, 2012 online)
- Cited, “Eight Petitions Filed on PTAB Day One; Challenging Patents Under New AIA Rules,” Bloomberg BNA Patent, Trademark & Copyright Journal (September 18, 2012)
- Quoted, “In-House Counsel Prepare for Phase 2 of America Invents Act,” The American Lawyer /Corporate Counsel (September 17, 2012)
- Quoted, “Judge Hacks IP Claims Against ProShares ETF System,” Law360 (April 20, 2012)
Speaker, "Trying Cases Before the PTAB," Patents for Financial Services Summit (July 23, 2014)
- Speaker, ACC-SFBA’s 3rd Annual Institute for Advanced Corporate Counsel (iACC), “Patent Challenges at the USPTO: Advanced Practice Tips for Making Effective Use of Invalidity Trial Proceedings,” (April 10, 2014)
- Speaker, Ropes & Gray IPMC Financial Services Roundtable, “Reshaping the World of Post-Grant Challenges: The PTAB Year (and-a-Half) in Review,” (April 7, 2014)
- Co-Chair with Hon. James D. Smith, Chief Administrative Judge, Patent Trial and Appeal Board, IP Counsel Exchange on Post -Grant Patent Challenges at the PTAB: A Strategic Guide to Effectively Challenging or Defending Patent Validity at the Patent Trial and Appeal Board (February 27-28, 2014)
- Moderator, Tokyo Morning Briefing, “Year 2013 in Review: Developments in U.S. Patent Litigation,” (January 30, 2014)
- Speaker, American Conference Institute's 3rd Comprehensive Guide to Patent Reform: The critical industry forum on the Leahy-Smith America Invents Act, “Red Skies on the Horizon—Tracking Developments of Covered Business Method Proceedings and Preparing for the Era of the Post-Grant Review,” (January 23, 2014)
- Moderator, Tokyo Morning Briefing, “How Companies Can Use Antitrust to Fight Back Against Patent Aggression,” (November 28, 2013)
- Speaker, "Coordinating PTO Invalidity Proceedings & District Court Litigation to Maximize Positive Outcomes," Patents for Financial Services Summit (July 24, 2013)
- "Patent Challenges at the USPTO: What You Need to Know to Make Effective Use of Post-Grant Challenges," Ropes & Gray West Coast Lunchtime Legal Briefing Teleconference (July 23, 2013)
- "Challenging Issued Patents at the USPTO," IP Master Class Financial Services Roundtable (April 9, 2013)
- Speaker, Knowledge Congress: The America Invents Act in 2013 LIVE Webcast, "Procedural and Substantive Guidance from the PTAB in Post-Grant Challenge Proceedings" (February 20, 2013)
- "Intervening Rights and Limits on Damages After Reexaminations, Reissues and Other Post-Grant Proceedings" 「特許再審査、再発行及 びその他付与後手続き後の中用権と損害賠償制限」Ropes & Gray Asia Morning Briefing Teleconferences (November 28, 2012)
- "Challenging Patent Validity at the PTO Post-AIA," IP Master Class (November 15, 2012)
- Speaker, IPO Chat Channel Webinar, "Trans-border Infringement: Latest Developments and Outlook," (November 14, 2012)
- Moderator, Ropes & Gray Asia Morning Briefing Teleconferences, "News from the IP Front: The Federal Circuit’s Akamai Opinion and Updates on the America Invents Act," (September 2012)
- Presenter, Bloomberg/BNA Webinar, “Changing Patent Challenges at the PTO: The Final AIA Countdown,” (August 16, 2012)
- Speaker, "Coordinating PTO Proceedings & District Court Litigation to Maximize Positive Outcomes," Patents for Financial Services Summit (July 26, 2012)
- “Challenging Patents at the PTO: The Clock is Ticking,” IP Master Class (July 19, 2012)
- Faculty/Presenter, ALI-ABA Teleconference/Webcast, “The America Invents Act: As Good As It Gets?” (addressing, inter alia, changes to reexamination and other mechanisms for post-grant challenges to issued patents in connection with litigation) (October 2011)
- “Collaboration and Coordination: Succeeding in Multi-Defendant Disputes,” 8th Annual Patents for the Financial Services Industry Conference (World Research Group) (July 2011)
- Speaker, "IP Implications in the Gaming World," Licensing Executives Society - Silicon Valley Chapter Conference: Video Games: Meeting the IP and Competitive Challenges (June 2011)
- “Patent Law Reform Effects on Patent Litigation,” IP Master Class (October 25, 2011)
- "Multi-Defendant Patent Litigation: Front Line Strategies for Success," SVAGC 22nd All Hands Meeting, Santa Clara, CA (2010)
- "How Companies in Japan Can Benefit from Using Strategic U.S. Patent Reexaminations in Infringement Disputes," 「特許侵害紛争日本 企業のための米国特許再審査の戦略的活用法」Tokyo Morning Briefing Teleconference (September 21, 2010)
- "Thinking Outside the (Jury) Box: The Strategic Use of Ex Parte and Inter Partes Patent Reexaminations in Infringement Disputes," IP Master Class (September 14, 2010)
- "The U.S. Supreme Court’s Bilski Decision – Understanding the Impact on Japanese Companies," 「Bilski 判決：日本企業への影響」Tokyo Morning Briefing Teleconference (July 2010)
- "A Season of Change: Recent Developments in U.S. Patent Law,"「改革の時：米国特許法における最新動向」Tokyo Morning Briefing Teleconference (February 2010)
- "Case Study: Ubiquitous Infringement,"「ケース・スタディー ユビキタス侵害」(Panelist, Joint Seminar on Resolving International Intellectual Property Disputes – Strategies and Practice「国際知財紛争の 対処法 － その戦略と実務」, Tokyo, March 2010)
- "Litigation Makes Strange Bedfellows," IP Master Class Webinar (September 2009)
- Panelist, "Litigation Makes Strange Bedfellows," Association of Corporate Counsel San Francisco Bay Area Chapter, San Francisco and Palo Alto, CA (July 2009)
- Speaker, Ropes & Gray co-sponsored IP Seminars (Tokyo/Osaka, Japan - June 2009)
- "In re Bilski: Where Do We Go From Here? Prosecution and Litigation Perspectives," IP Master Class (December 2008)
- Planning Chair and Host/Panel Member, ALI-ABA Intellectual Property Law Series Teleconference, “Supreme Court Reduces the Extraterritorial Scope of U.S. Patent Laws: Microsoft v. AT&T” (May 2007)
- "Scientists Accused of Plagiarism: Practical and Legal Perspectives," Conference on Plagiarism across the Science Disciplines: An Exploration of the Parameters of Plagiarism in Scholarly and Scientific Publications, Office of Research Integrity and NYU Medical Center (October 2005)
“Trans-Border Patent Infringement Under U.S. Law,” IP Master Class (September 2005)
“Patent Reexaminations and Oppositions: Present & Future,” IP Master Class (June 2005)
"The Impact of Non-Traditional Patent Litigation on Cost/Benefit Analysis," Findlaw/Glasser LegalWorks "Patent Strategies 2003" (April 2003)