Patent Trial & Appeal Board (PTAB) Proceedings

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Ropes & Gray’s intellectual property litigation group is renowned for its PTAB expertise. Having successfully navigated hundreds of proceedings on behalf of patent owners and patent challengers alike — including some of the seminal cases on administrative trial practices — Ropes & Gray leverages unparalleled forum expertise, insights and resources for its clients.

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Practice Highlights

  • We understood and embraced PTAB trials from day one, representing the petitioner in the first proceeding to result in a final written decision (a win for our client).
  • Our attorneys also successfully navigated the only inter partes review to date that included live testimony (another client win).
  • We have successfully defended PTAB judgements on appeal to the Federal Circuit, and overturned others in favor of some of the world’s most renowned innovators.
  • Ropes & Gray continues to be a leader at the PTAB, according to data released by Docket Navigator and analyzed by Managing Intellectual Property. Our firm was ranked second among the Petitioner Law Firms in the first half of 2020, filing 50 petitions for clients, and in the top 20 among Patent Owner Law Firms. Moreover, many of our attorneys were recognized as being the most active at the PTAB.
  • To date, Ropes & Gray attorneys have argued hundreds of PTAB oral arguments, and have been counsel of record on more than 575 PTAB trial proceedings, on behalf of both petitioners and patent owners.
  • On behalf of petitioners, we have invalidated 94% of claims ruled on by the Board.
"The supremely proactive Ropes & Gray is a perennial front-runner in adapting to changes on the market. It has demonstrated this to superb effect through its myriad successes in inter partes and covered business method reviews since the enactment of the America Invents Act." IAM Patent 1000
"Very strong in inter partes reviews." Chambers USA

Overview

Ropes & Gray is home to one the country’s most experienced and successful PTAB trial practice groups. Indeed, according to data released by Docket Navigator and analyzed by Managing Intellectual Property, our firm was ranked second among Petitioner Law Firms in the first half of 2020, and in the top 20 among Patent Owner Law Firms. The report also confirmed that our team contains some of the most active PTAB practitioners. Likewise, we have been at the forefront of these proceedings since their inception, filing the first ever challenge to a business method software patent in CBM2012-00001. This CBM challenge resulted in a final written decision that ordered the cancellation of all challenged claims. Our attorneys have also successfully represented a client in one of the only IPR proceedings to date that included live testimony (now designated precedential) before the Board, and are, month-to-month, repeatedly before many of the same judges of the PTAB. Furthermore, the Group has experience across a wide-range of technologies, from complex signaling protocols and consumer electronics devices to high-value pharmaceuticals and medical devices. 

Deep Bench. Ropes & Gray has a deep bench of legal professionals who know the ins-and-outs of the PTAB and know how to win there. The IP litigation team consists of more than 75 attorneys and Ph.D.-level technical advisors who have contributed to our PTAB success, including more than a dozen attorneys who have argued before the Board.

Practical Firsthand Experience. Ropes & Gray’s team has been involved in PTAB trials since the moment of their inception, and accordingly knows firsthand the strategies and arguments that work before the Board, and more importantly, given our consistent presence, the evolution of the agency away from trial practices that are no longer effective. We are able to draw on our extensive library of briefs, petitions and decisions to address many of the questions that arise in our ongoing PTAB matters, as well as in related ITC and district court proceedings. 

Success for Both Petitioners and Patent Owners. Ropes & Gray has a record of continuous success in final written decisions before the PTAB for both petitioners and patent owners that no other firm can match. On behalf of petitioners, our attorneys have invalidated 94% of claims ruled on by the Board. We have also prevailed on behalf of numerous patent-owner clients at the PTAB, preventing review and findings of unpatentability of key litigated claims. Our deep experience on both sides of the “v.” gives us invaluable insights that we leverage on behalf of our clients. 

Cross-Forum Team. A successful PTAB defense must include tightly integrated, cross-forum strategy. Ropes & Gray’s PTAB team includes patent-focused district court litigators who are also registered to practice at the USPTO and technical subject matter specialists. Our litigators are regular members of the courtroom and International Trade Commission (ITC) trial teams, and understand the issues that can arise in coordinating district court, ITC and PTAB challenges. This coordination has become crucial as PTAB proceedings become an increasingly critical phase of patent disputes. 

Industry Experience. Our attorneys have handled PTAB proceedings for clients in all industries including electronics, computer sciences, financial services, semiconductors, medical devices, and pharmaceuticals. For example, our attorneys were involved in some of the first challenges to semiconductor patents, and were also involved in an IPR proceeding related to the first patent challenges concerning marketed biologics. 

PTAB Appeals. With PTAB appeals exceeding 50% of the Federal Circuit’s docket, successful advocates must not only stand out from the crowd, but also build winning trial records from Day 1. The Ropes & Gray PTAB team has extensive experience appearing before and winning at the Federal Circuit, and understands how to create a record at the PTAB that will withstand appellate review.

PTAB Experience

Examples of success before the Patent Trial and Appeal Board (PTAB):

  • A Leading Medical Device Company (IPR2020-00024, IPR2020-00025, IPR2020-00026, IPR2020-00027). We successfully defended a leading medical device company as patent owner in four IPRs against Baxter Healthcare related to anti-microbial fluid caps. All four of the petitions were denied institution. This decision was significant, as the patent family had been challenged in previous PTAB proceedings, in which the same grounds had been instituted, but settled before a final written decision.
  • GREE (PGR2018-00070, PGR2018-00071, PGR2018-00064, PGR2019-00018, PGR2020-00046, PGR2020-00043, PGR2020-00049, PGR2020-00053, PGR2020-00052, PGR2020-00063, and related IPRs and PGRs). We represent patent owner GREE adverse to Supercell Oy in numerous ongoing PGRs related to the popular “Clash of Clans” videogame. To date, three of the PGRs have been successfully denied institution.
  • A Leading Information Technology Company (IPR2016-00768). We represented a leading information technology company against Mobile Telecommunications in an IPR proceeding concerning wireless communication systems. The Board found in favor of our client and invalidated as obvious all of the challenged claims of the asserted patent.
  • GN Hearing (IPR2017-01926, IPR2017-01927). We represented petitioner GN Resound in filing two IPRs relating to hearing aid technology. At final written decision, the board found the commercially relevant claims unpatentable at final written decision.
  • Seakeeper, Inc. (IPR2017-01931, IPR2017-01996). We successfully represented Seakeeper in dismissing two IPR petitions concerning two patents related to a cooling apparatus for transferring heat from and cooling one or more heat generating components that support or drive a flywheel or other spinning member.
  • AstraZeneca (IPR2017-00900, IPR2017-00904, IPR2017-00905, IPR2017-01913, IPR2017-01910, IPR2017-01912). We defended three patents relating to a treatment for breast cancer. The PTAB denied institution of the petitions.*
  • Novartis AG (IPR2016-01102, IPR2016-00084). We represented Novartis in an IPR proceeding concerning the compound patent on Zortress® (a rapamycin derivative used to prevent transplant rejection). Patentability of all claims was upheld on the grounds that it would not have been obvious to modify the chemical structure of rapamycin to arrive at the claimed compound everolimus.
  • Novartis AG (IPR2016-00078). We represented Novartis in an IPR concerning a method of using Zortress® for transplant rejection and successfully prevented institution of trial.
  • A Major Biopharmaceutical Company (IPR2013-00537, IPR2013-00534). We served as counsel in an inter partes review for a leading biopharmaceutical company relating to the first patent challenges concerning marketed biologics.*
*Experience prior to joining Ropes & Gray.

PTAB Appellate Experience

Examples of PTAB judgments that we have successfully defended at the Federal Circuit:

  • Emerson Electric (IPR2015-01901, IPR2015-01973, IPR2016-00984, CBM2016-00095, IPR2016-01602, IPR2016-01895, IPR2017-00001, IPR2017-00008, IPR2017-00007, IPR2017-00216, IPR2017-00213, IPR2017-00252, IPR2017-00359, and related IPRs and EPRs). On behalf of Emerson Electric as petitioner, we have invalidated over 100 claims across SIPCO’s patent portfolio in multiple proceedings at the PTAB, and secured Federal Circuit wins on appeals from PTAB final written decisions, as well as a win before the Supreme Court vacating and remanding the case to the Federal Circuit.
  • Sony (IPR2016-00834, IPR2016-00835). We successfully defended Sony at the Federal Circuit in relation to a PTAB appeal involving a patent directed to an element of a video processing system for cable television, which petitioner ARRIS successfully challenged at the PTAB. The Federal Circuit vacated the PTAB’s adverse decision, and on remand, the PTAB’s decision was reversed, securing a win for Sony.
  • Google (IPR2017-01652, IPR2017-01653). We filed two petitions on behalf of Google adverse to Spring Ventures relating to Google’s “I’m Feeling Lucky” feature. All claims were subsequently found unpatentable by the Board. At the Federal Circuit, the Court affirmed the PTAB’s findings in favor of Google.
  • Multi Packaging Solutions (IPR2017-01650). We represented petitioner Multi Packaging Solutions in an IPR review challenging a patent related to ultrasecure card packaging. All 30 claims were found unpatentable by the Board, which was subsequently affirmed by the Federal Circuit in MPS’ favor.
  • A Leading Consumer Electronics Company (IPR2015-01898, IPR2015-01899). We filed inter partes review petitions against Conversant Wireless challenging two patents directed to graphical user interfaces for computing devices. The Board found all challenged claims unpatentable, which was affirmed by the Federal Circuit in January 2019.
  • Activision Blizzard, Electronic Arts (IPR2015-01996, IPR2015-01964, IPR2015-01951, IPR2015-01953, IPR2015-01970, IPR2015-01972). We filed IPRs challenging three patents relating to broadcasting information in computer networks and resulting in the Board finding 35 claims unpatentable. At the Federal Circuit, these findings were successfully affirmed.
  • Samsung Electronics (IPR2016-00652, IPR2016-00653, IPR2016-00654, IPR2016-00655). We filed four inter partes review petitions challenging four patents relating to touch screens. The Board issued final written decisions finding all challenged claims unpatentable on two separate grounds each. The Federal Circuit subsequently affirmed the PTAB’s findings and denied rehearing.
  • Samsung Electronics (IPR2014-00209, IPR2014-00212, IPR2014-00407, IPR2014-00408, IPR2014-01181, IPR2014-01182, IPR2014-01184, IPR2015-00820, IPR2015-00821). In matters adverse to Affinity Labs, we filed IPR petitions challenging three litigated patents generally relating to the delivery of Internet media content to a portable device. The PTAB issued final written decisions finding all challenged claims unpatentable, which were affirmed on appeal.
  • SAP AG (CBM2012-00001). We represented SAP, as co-counsel, in a CBM trial challenging a Versata patent involving product pricing in multi-level product and organizational groups. 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 finding every challenged claim invalid for failure to claim patentable subject matter under § 101. The Board’s decision was affirmed on appeal by the Federal Circuit and the Supreme Court denied Versata’s petition for certiorari.
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