J. Steven Baughman
Partner
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 more than 19 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 matters have involved both utility and design patents.
In connection with infringement disputes and litigation, Steve also conducts strategic ex parte patent reexaminations (and ongoing inter partes patent reexaminations) before the U.S. Patent and Trademark Office, and is employing and advising companies regarding the new post-grant review mechanisms that have become and will become available as a result of the Leahy-Smith America Invents Act of 2011. Steve is counsel on 11 of the first 15 petitions for covered business method patent review that have been filed at the PTO’s new Patent Trial and Appeal Board, and on all four of the petitions that were submitted the day the transitional program for covered business method patents became available, September 16, 2012, including the first petition on which the Board has instituted trial.
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.
Experience
- 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.
Awards
- Washington, D.C. Super Lawyers, Intellectual Property Litigation (2013)
- Litigation Counsel of America, Fellow
Insights
Publications
- 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, “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)
Presentations
- “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)
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“Trans-Border Patent Infringement Under U.S. Law,” IP Master Class (September 2005)
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“Patent Reexaminations and Oppositions: Present & Future,” IP Master Class (June 2005)
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"The Impact of Non-Traditional Patent Litigation on Cost/Benefit Analysis," Findlaw/Glasser LegalWorks "Patent Strategies 2003" (April 2003)