Building on our many years of conducting and defending traditional reexaminations, Ropes & Gray is now at the forefront of the new post-grant patent invalidity challenges that became available in September 2012 as a result of the Leahy-Smith America Invents Act: the transitional program for covered business method (CBM) patents, which offers advantageous features for patents that qualify; the inter partes review (IPR) mechanism that has replaced inter partes reexamination; and the derivation (DERV) proceeding that is a partial substitute for interferences and post-grant review (PGR), which is available for patents issuing under the “first-inventor-to-file” regime.
New Challenges. Ropes & Gray is the country’s most experienced law firm in representing companies in CBM patent proceedings and is a pioneer in the new IPR reviews. We have considerable experience appearing before the U.S. Patent and Trademark Office's Patent Trial and Appeal Board in these new invalidity trials and have represented clients across a wide range of industries.
Deliberate Choices. Combining extensive post-grant PTO challenge experience with comprehensive litigation and prosecution resources and skill, we help clients weigh the benefits and risks in each dispute and decide when – and when not – to deploy post-grant challenges. These proceedings are not the right solution for every situation, and part of the value we bring is knowing the difference.
When a determination is made to pursue a challenge, our client strategies involve more than just an all-or-nothing attempt at invalidation. Instead, we implement a multi-tiered approach, building challenges that give our clients multiple opportunities to benefit – no matter the direct outcome – such as supporting claim construction positions that will lead to non-infringement in litigation, additional invalidity arguments not raised at the PTO, or unenforceability positions to be pressed in court. We take advantage of the opportunity to commit patent owners to simultaneous, on-the-record positions in multiple proceedings – positions they would otherwise strive to avoid – and to highlight and exploit contradictions in those positions to the benefit of our clients. Where appropriate, we rely on post-grant proceedings to support stays of pending litigation. And, in support of our clients’ objectives, we deploy challenges to gain leverage that can aid in the negotiation of a favorable business resolution to disputes.
We are also experienced in defending the IP rights of patent holders in post-grant challenges, giving us a clear understanding of the issues on both sides of these disputes. Ropes & Gray's post-grant teams include experienced litigators who are part of the courtroom trial team, eliminating the knowledge and communication gaps we often encounter on the opposing side – gaps we leverage on behalf of our clients.
In our work for patent owners, we carefully plan a strategy focused on the long-term preservation of valuable patent assets and the achievement of our clients’ underlying business goals. Drawing on our considerable experience both in post-grant challenges and in regularly prosecuting, asserting and defending patents, we understand the nuances of strategic IP portfolio management, and we are well positioned to identify and take advantage of weaknesses when defending against a proceeding initiated by another party. By thoroughly charting a course at the outset, and continuously reevaluating and coordinating between litigation and PTO positions, we can navigate around pitfalls that might otherwise tip the balance in favor of a patent challenger.
Examples of post-grant invalidity challenges:
- Liberty Mutual Insurance Company (CBM2012-00002, CBM2012-00003, CBM2012-00004, CBM2013-00003, CBM2013-00004, CBM2013-00009). We filed six petitions for covered business method review in defending 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. The Board has issued final written decisions cancelling every claim of each of these three challenged Progressive patents.
- SAP AG (CBM2012-00001). We represent 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.
- SAP AG (CBM2013-00042). We represent 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.
- RR Donnelley & Sons Co. (IPR2013-00529, IPR2013-00538). We are defending two RR Donnelley patents relating to high resolution real time raster image processing in inter partes review petitions filed by petitioner Xerox Corp.
- medac GmbH (IPR2014-01091). We are defending a medac patent related to concentrated methotrexate solutions for the treatment of inflammatory autoimmune diseases in an IPR filed by petitioner Antares Pharma.
- NJOY (IPR2014-01289, IPR2014-01300). We filed IPR petitions challenging 2 patents related to electronic cigarette technology.
- Branch Banking and Trust Company (CBM2013-00059). We 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.
- A Leading Korean Consumer Electronics Company (IPR2014-00209, IPR2014-00212, IPR2014-00407, IPR2014-00408, IPR2014-01181, IPR2014-01182, IPR2014-01184). We filed IPR petitions challenging two litigated patents generally relating to the delivery of Internet media content to a portable device.
- Liberty Mutual Insurance Company (CBM2012-00010, CBM2012-00011, CBM2013-00001, CBM2013-00002). We filed four petitions for CBM review in defending Liberty Mutual against assertions of two different patents relating to 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. The Board has issued final written decisions cancelling every claim of each of these two challenged Progressive patents.
- A Leading U.S. Consumer Electronics Company (CBM2013-00019, CBM2013-00020, CBM2013-00021, CBM2013-00023). We 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.
- 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). We filed twelve petitions for CBM review challenging six litigated patents relating to storing and paying for data.
- Spansion LLC (IPR2014-00103, IPR2014-00104, IPR2014-00105, IPR2014-00106, IPR2014-00107, IPR2014-00108, IPR2014-00898, IPR2014-01250). We are 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.
- Spansion (IPR2014-01116, IPR2014-01117, IPR2014-01118). We filed CBM petitions challenging three semiconductor-related patents asserted by Macronix against Spansion at the International Trade Commission.
- A Leading Investment Advisor (CBM2014-00079). We filed a CBM petition challenging a patent involving private equity benchmarking.
- A Leading Medical Device Company (IPR2014-00429). We filed an IPR petition challenging a litigated patent relating to pedicle screw technology.
Vertex Pharmaceuticals (IPR2013-00024). We defended a Vertex patent related to aspartyl protease inhibitors in an IPR filed by petitioner Ranbaxy Laboratories. The parties reached settlement before a final written decision was issued.
- We have also advised clients in numerous other post-AIA patent challenges where our participation has not been publicly disclosed, or where petitions have been prepared but have not yet been filed.
Examples of reexaminations and interferences:
- Sealy Technology LLC v. Simmons Bedding Company. Defending Simmons, we initiated inter partes reexamination of the two design patents asserted in litigation, both relating to mattresses. Both patents have been rejected by the PTO – one in a non-final action and the other in a final action now on appeal – and we successfully stayed the litigation pending completion of the reexaminations.
- Lear Corp. v. TS Tech Corp. We filed ex parte and inter partes reexaminations of patents relating to active headrest technology, and successfully stayed litigation based on the pending challenges.
- Linear Technology v. Micrel. After initially prosecuting the original patent on integrated circuit voltage regulators, and defending it through multiple reexaminations and an on-sale bar challenge, we obtained a willful infringement verdict on behalf of our client.
- Infinity Computer Products, Inc. v. Ricoh Americas Corporation. In March 2013, we filed ex parte reexaminations of four asserted patents relating to transfer of digital image data signals between a computer and a facsimile machine, all of which were granted – with initial office actions rejecting every claim – within roughly one month of filing, leading to a stay of the litigation.
- Motorola, Inc. We successfully sought inter partes reexamination challenging a patent relating to a user-carried personal recovery unit involving positioning and safe zones, and won final cancellation of every claim of the patent.
- We represent Arena in an inter partes reexamination that we filed against a Lundbeck patent related to G-protein coupled receptors. An oral hearing before the Trial Board is scheduled for mid-May 2013.
- On behalf of a major U.S. financial institution, we obtained ex parte reexaminations of two patents directed to consumer-targeted marketing in the financial services industry, including advertising delivered over the Internet using databases of customer information. These patents were involved in multidistrict litigation arising from a licensing program in which the plaintiff reportedly asserted that damages from one party alone amounted to some $250,000,000. We negotiated a successful resolution, with our client exiting these litigations well before many codefendants.
- On behalf of Motorola, Inc., we requested ex parte reexamination of a patent relating to character pattern recognition in connection with one of several suits seeking damages from multiple defendants. The request highlighted inconsistencies between claim construction positions taken during prosecution and much broader positions taken in litigation when plaintiff sought to prove infringement. The tension between these positions became a central issue in a successful motion for summary judgment of noninfringement, which was affirmed on appeal.
- We represented Aerotel Ltd. in five ex parte reexaminations that were consolidated into two proceedings, preserving all claims of a pioneering patent in the field of prepaid calling cards, in the face of challenges by various parties, including defendants in related litigation.
- CyberSource Corporation v. Retail Decisions, Inc., et al. We defended related U.K. and U.S. clients against patent infringement allegations related to fraud detection in Internet credit card transactions, first launching an ex parte reexamination resulting in a litigation stay and the amendment of every claim, and thereafter filing a winning summary judgment motion that invalidated the asserted claims under 35 U.S.C. § 101.
- Sanofi-Aventis v. Pfizer Inc. We prevailed for Pfizer at the board in an interference directed to recombinant IL-13 binding chain and its DNA. The case is now under submission before the Federal Circuit. Sanofi-Aventis v. Pfizer Inc., Appeal 2012-1345 (Fed. Cir. 2013).
- Noelle v. Lederman. We acted for a biotechnology company and its licensor, Dr. Seth Lederman, in an interference directed to anti-CD-40 ligand antibodies. We prevailed on preliminary motions and priority, establishing the standard of written description for antibodies. See Noelle v. Lederman, 355 F.3d 1340 (Fed. Cir. 2004).
- Garner v. Velander. We acted for Garner and it licensees, including the Roslin Institute (where the sheep Dolly was cloned), in an interference related to the making of a recombinant blood clotting factor in the milk of transgenic animals. See Garner v. Velander, 348 F.3d 1359 (Fed,. Cir. 2003).
- Fiers v. Sugano. We acted for a biotechnology company and its licensor, Professor Walter Fiers, in a three-party interference related to the DNA coding for recombinant beta interferon. The case is one of the seminal cases on written description in recombinant DNA technology and particularly in the context of the conception of DNA. See Fiers v. Sugano, 984 F.2d 1164 (Fed. Cir. 1993)