J. Steven Baughman

Partner

baughman-steve-300
  • JD, cum laude, Harvard Law School, 1993
  • BSE (Electrical Engineering), Princeton University, 1990; Tau Beta Pi

Qualifications

  • Japan, Gaikokuho Jimu Bengoshi (New York and Washington, D.C.), 2007-2010
  • District of Columbia
  • New York
  • U.S. Patent and Trademark Office

Court Admissions

  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Fourth Circuit
  • U.S. District Court for the Southern District of New York
  • U.S. District Court for the Western District of New York
  • U.S. Court of Federal Claims
  • American Intellectual Property Law Association
  • American Bar Association
  • Master, Tokyo IP American Inn of Court (2013-2014)
  • American Chamber of Commerce in Japan (2007-2010)
  • Daini Tokyo Bar Association (2007-2010)
  • District of Columbia Bar Association
  • New York State Bar Association
  • Federal Circuit Bar Association
  • New York Intellectual Property Law Association
  • Intellectual Property Owners Association (IPO) (Arbitration & Mediation Committee, 2009; Patent Office Inter Partes Proceedings Committee, 2010, 2011, 2012, 2013, 2014)
  • Member, IEEE

  • Milestone Case of the YearManaging IP (2014)
  • Law360 – Intellectual Property MVP (2013)
  • Financial Times “Innovative Lawyers” Report (2013)
  • IAM Patent 1000 – The World’s Leading Patent Professionals (2013-2015) (Recommended Individual: Post-Grant Procedures (2014, 2015))
  • Washington, D.C. Super Lawyers, Intellectual Property Litigation (2013-2015)
  • Litigation Counsel of America, Fellow
  • Master in the Giles S. Rich American Inn of Court for intellectual property litigators (2004-2007)
  • Successfully challenged Maryland restriction on voter-registration in pro bono suit
  • Participated in drafting report for the Lawyers Committee for Human Rights
  • Participated in pro bono federal habeas corpus appeals on behalf of state prisoners in Virginia and Maryland, including a Virginia death row inmate

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 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 trial mechanisms that have become available as a result of the Leahy-Smith America Invents Act of 2011, and to date has been counsel of record in more than 110 covered business method (CBM) and inter partes review (IPR) proceedings, including in more than 20 proceedings that have been argued through final oral hearing before the Board. 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 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

  • 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. The Federal Circuit affirmed these decisions on August 24, 2015.
  • 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. This final decision by the Board was affirmed on appeal to the Federal Circuit.
  • 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 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.The Federal Circuit affirmed these decisions on August 24, 2015. 
  • 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, which resulted in the invalidation of all challenged claims.
  • RR Donnelley & Sons Co. (IPR2013-00529, IPR2013-00538). Steve defended two RR Donnelley patents relating to high resolution real time raster image processing in inter partes review petitions filed by petitioner Xerox Corp. We successfully kept a number of litigated claims from being instituted for review, after which the district court refused to stay the co-pending litigation, and the IPRs were settled by agreement of the parties.
  • 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, IPR2014-01250). Steve defended six semiconductor- and memory-related Spansion patents in eight IPRs filed by petitioner Macronix. The Board denied Macronix’s petitions outright on two of these challenged patents and on other litigated claims. The IPRs were settled as part of a resolution of pending ITC and district court litigation.
  • A Leading Korean Consumer Electronics Company (IPR2014-00209, IPR2014-00212, IPR2014-00407, IPR2014-00408, IPR2014-01181, IPR2014-01182, IPR2014-01184, IPR2015-00820). Steve filed IPR petitions challenging three litigated patents generally relating to the delivery of Internet media content to a portable device. The PTAB has issued final written decisions finding all challenged claims of two of the patents unpatentable, and proceedings involving the third patent are ongoing.
  • A Leading Korean Consumer Electronics Company (IPR2014-00518, IPR2014-00519, IPR2014-00892, IPR2014-00893, IPR2014-00895, IPR2015-00555). Steve defended IPR petitions challenging litigated patents generally relating to communication systems involving a plurality of modulation methods.
  • A Leading Medical Device Company (IPR2014-00429). Steve filed an IPR petition challenging a litigated patent relating to pedicle screw technology. The IPR was settled by agreement of the parties.
  • 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, CBM2015-00015, CBM2015-00016, CBM2015-00017, CBM2015-00018, CBM2015-00028, CBM2015-00029, CBM2015-00031, CBM2015-00032, CBM2015-00033,CBM2015-00117, CBM2015-00118, CBM2015-00119, CBM2015-00120, CBM2015-00121, CBM2015-00123, CBM2015-00124, CBM2015-00127, CBM2015-00130, CBM2015-00131, CBM2015-00133). Steve filed thirty-two petitions for CBM review challenging seven litigated patents relating to storing and paying for data.
  • SAP AG (CBM2013-00042). Steve represented 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. The CBM was settled by agreement of the parties.
  • 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. The IPRs were settled as part of a resolution of pending ITC and district court litigation.
  • 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) – Defended 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.

Publications

In The News 

Presentations

  • Chair and Moderator for “Strategies for Coordinating Parallel Proceedings: PTAB, District Court and ITC,” “Building and Hardening a Patent Portfolio for the PTAB,” and “Inter Partes Review: A Cross-Industry Perspective,” Ropes & Gray and the ACC on Post-Grant Patent Challenges at the Patent Trial and Appeal Board Conference (January 13, 2016)
  • Speaker/Panelist, IPO Chat Channel Webinar, “A Kinder, Gentler PTAB? Proposed New Trial Rules & Important Recent Decisions” (September 9, 2015)
  • Speaker, “Best Practices to Effectively Present Cases to the PTAB,” 12th Annual Patents for Financial Services Summit (July 22, 2015)
  • Panelist, Inaugural AIPLA USPTO PTAB Bench & Bar Conference (June 18, 2015)
  • Panelist, American Intellectual Property Law Association (AIPLA) Spring Meeting, “Recent Court Decisions Impacting Review Proceedings, Including Mandamus, Interlocutory, 318(a) Appeals, Motions to Stay" and “Best Practices and Future Improvements at the PTAB” (May 1, 2015)
  • Speaker, Ropes & Gray IPMC Financial Services Roundtable, “PTAB: Coming Innovations & Gold Plated Patents” and “Section 101: Repair & Replace Your Portfolio” (April 21, 2015)
  • Panelist, The PTO and the Courts, “Practice Before the PTAB in IPRs and CBMs,” sponsored by Stanford Program in Law, Science, & Technology, Samsung Electronics, and the Stanford Technology Law Review (April 17, 2015)
  • Co-Chair with Honorable James D. Smith, Chief Administrative Judge, Patent Trial and Appeal Board, Co-presenter, “Anatomy of a PTO PTAB Patent Trial,” ACI Post-Grant PTO Proceedings Conference (March 25-26, 2015)
  • 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)
  • Speaker, Bloomberg BNA’s AIA Post-Grant Patent Practice Conference (Feb. 19-20, 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)  
  • “The Impact of Non-Traditional Patent Litigation on Cost/Benefit Analysis,” Findlaw/Glasser LegalWorks “Patent Strategies 2003” (April 2003)