PTAB proceedings are an integral part of patent litigation. Many patent cases involve a PTAB proceeding in combination with either district court litigation or an ITC proceeding. PTAB proceedings, including inter partes review (“IPR”) and post-grant review (“PGR”), provide unique opportunities for litigants. They are, in effect, mini-trials at the United States Patent & Trademark Office (“PTO”) – complete with depositions, experts and live argument before a panel of administrative law judges – to determine patent validity. It is critical to leverage both litigation experience and PTAB experience to ensure a successful outcome.
Quinn Emanuel attorneys are uniquely qualified to represent clients in these trial-like proceedings. Our litigation focus enables our attorneys to blend experience from litigation and PTAB practice to develop strategies that not only put our clients in the best possible position at the PTAB, but that also effectively complement our litigation strategy.
Our attorneys are some of the most experienced PTAB attorneys in the country. Quinn Emanuel has been consistently ranked as one of the top five firms at the PTAB every year since 2018. Patexia.com has recognized Quinn Emanuel as one of the “most active” and one of the “best performing” firms at the PTAB. Law360 named our Intellectual Property group “Practice Group of the Year” repeatedly over the last decade.
Our experience in front of the PTAB covers a broad spectrum of technologies, including computer hardware and software, electronics, automotive technologies, medical devices, pharmaceuticals and biologics among many others. Our attorneys are as comfortable with technical issues or thorny issues of PTO procedure as they are with litigation strategy. And because we try so many cases, we have mastered the art of explaining these often complex technologies to PTAB judges, who often have technical backgrounds that differ from the technology at issue.
We have the extensive technical experience necessary to prevail at the PTAB. More than 250 of our lawyers are experienced intellectual property attorneys. More than 110 of our litigators are scientists or engineers, with degrees and professional backgrounds that our clients need, including:
Physics, chemistry, pharmacology, molecular biology and biochemistry, computer science, software and database design and information systems, missile guidance systems, and numerous types of engineering: civil, materials science, chemical, electrical, computer, environmental, industrial, mechanical, automotive, and aeronautical.
Quinn Emanuel’s unique combination of technical knowledge, patent expertise, and deep trial experience gives us a distinct advantage in pursuing our clients’ interests during adversarial PTAB proceedings.
REPRESENTATIVE PTAB CLIENTS
- Celgene Corporation
- Merck Sharp & Dohme Corp.
- Forest Laboratories
- Rohm and Haas Company
- Daimler AG
- Hyundai Motor Company
- Abraxis BioScience
- Neurovision Medical Products, Inc.
- Anest Iwata Corporation
- Aylus Networks
- Bio-Rad Laboratories
- Clarion Co., Ltd.
- Fortinet Inc.
- Jazz Pharmaceuticals
- Memjet Technology Limited
- Parrot S.A.
- TPK Touch Solutions, Inc.
- Universal Secure Registry LLC
Inter Partes Review
Patent Owner Representations
- We represented Qualcomm Inc. in EPO opposition proceedings initiated by Apple Inc. and Intel Corp. in December 2017 concerning a patent about envelope tracking implemented in mobile devices using LTE and 5G. After the Opposition Division had revoked the patent in suit in May 2019 based on lack of novelty (regarding the patent as granted) and on lack of inventive step (regarding our first auxiliary request), we lodged an appeal with the Board of Appeal. During appeal proceedings, we demonstrated in our briefs why the assessment of the relevant prior art by the Opposition Division was wrong and Apple’s arguments on obviousness were technically flawed. In its preliminary opinion, the Board completely followed our arguments indicating that it considered the patent in the form of the first auxiliary request to be novel and inventive. At the oral proceedings on December 8, 2022, we succeeded in rejecting all further objections from Apple and confirming the Board’s preliminary opinion. As a consequence, the Board set the first instance decision of the Opposition Division aside and maintained the patent in the form of the first auxiliary request.
- We represented Mercedes-Benz USA, LLC, Mercedes-Benz U.S. International, LLC, and Daimler AG in a case involving patents directed to CDMA “soft handoff” used by cell phones. Plaintiff Carucel Investments L.P. sued Mercedes for patent infringement, alleging that these patents covered the Wi-Fi hotspots in Daimler’s cars. We successfully stayed the litigation after filing Inter Partes Reviews against the asserted patents at the US Patent Trial and Appeals Board (“PTAB”), asserting that the patents were invalid. The PTAB agreed, finding all claims unpatentable.
- We represented CATL, the largest EV battery maker in the world, in an patent dispute against its competitor China Lithium Battery Technology (CALB). This was a part of a larger dispute between the parties pending in China. In November 2021, CALB filed a Petition for Post-Grant Review of CATL’s U.S. Patent No. 10,930,932 with the Patent Trial and Appeal Board of the United States Patent and Trademark Office. The Petition asserted 19 different grounds of invalidity of the ’932 Patent, which related to the positive electrode plate in the battery, including based on prior use, anticipation, obviousness, lack of written description support, lack of enablement, and failure to further limit. We opposed institution on March 9, 2022, and on June 6, 2022, the Patent Trial and Appeal Board issued a decision denying Institution of post-Grant Review, finding that none of the 19 grounds asserted by CALB established that it is more likely than not that claims 1-19 of the ’932 patent are unpatentable.
- We successfully defended Taction Technology in a series of four IPRs reviews filed by Apple. The IPRs related to patents asserted by Taction against Apple in a litigation in the Southern District of California. The patents at issue related to tactile transducers. Taction filed a detailed preliminary response and supporting expert declaration in response to all four petitions. The PTAB declined institution of all four petitions, crediting in large part the technical analysis by Taction’s expert.
- We won three complete victories for our clients Celgene Corporation and Abraxis BioScience, LLC, in IPRs challenging U.S. Patent Nos. 7,820,788, 7,923,536, and 8,138,229. These patents cover aspects of Celgene’s Abraxane drug product, which is approved to treat metastatic breast cancer and other aggressive cancers. IPRs of all three of these patents had previously been instituted based on identical prior art, arguments, and expert testimony in a related case that had settled. We prevailed in these IPRs by obtaining key admissions from the opposing parties’ expert during his deposition. The PTAB relied on these admissions in denying institution of each IPR, despite having previously instituted on the same grounds. We had previously successfully defended against another IPR covering another patent related to Abraxane, U.S. Patent No. 8,853,260.
- We filed IPRs of behalf of Daimler AG challenging U.S. Patent Nos. 7,979,023; 8,463,177; 8,718,543; 7,848,701 and 7,221,904, owned by Carucel Investments LP. The challenged claims purport to relate to a system for improving handoff operations between a mobile device inside a moving vehicle and fixed cell tower. Attorneys in New York and DC drafted the petition and worked with renowned experts in the field. The Board found all claims unpatentable after oral argument.
- We represented IBM as Petitioner in an IPR filed against a patent asserted by Trusted Knight Corporation. The technology relates to anti-keyloggers In a Final Written Decision, the PTAB found every claim asserted against IBM invalid as obvious over several prior art references that discuss anti-keylogging solutions.
- We represented Nant Holdings in a series of eight IPRs filed by Bank of America. The petitions relate to patents Nant Holdings asserted against Bank of America in a litigation in the Central District of California. We filed detailed Preliminary Responses with supporting expert declarations, arguing that the Petitioner failed to correctly articulate the proper claim construction and that the technical arguments regarding obviousness and anticipation were incorrect. The Board agreed, and declined to institute two of the IPRs (two other IPRs were terminated by stipulation).
- We served as outside counsel for Celgene where we successfully defended against 3 IPRs filed by DRL, and 3 other petitions filed by other potential generic manufacturers.
- We successfully represented Bio-Rad Laboratories in a series of twelve IPRs filed by 10X Genomics that challenged a family of patents Bio-Rad asserted against 10X in parallel litigation. We filed Preliminary Responses on behalf of Bio-Rad, challenging 10X’s primary positions that Bio-Rad’s patents were simple combinations of inventions that were already known. The PTAB agreed and denied institution of all twelve petitions, thus preventing 10X from challenging the validity of Bio-Rad’s asserted patents.
- Quinn Emanuel defended Intertrust Technologies against a series of 12 IPRs filed by AMC Entertainment and Dolby Laboratories. The PTAB denied institution for three petitions. Five of the petitions resulted in Final Written Decisions holding all claims patentable.
- We successfully defended Rohm and Haas Company against two IPRs instituted in response to petitions from Organik Kimya San. Ve Tic. A.S. The IPRs challenged two related patents, U.S. Patent Nos. 6,020,435 and 6,252,004, which claim innovative processes for preparing polymers that are used in coating compositions, such as paints and paper coatings. Rohm and Haas had previously instituted actions against Organik in both the District of Delaware and International Trade Commission. After oral argument, the PTAB’s final written decision accepted our arguments on all key issues, giving our client a total victory on every challenged claim.
- Quinn Emanuel achieved a complete victory for its clients SD3 and SawStop against four IPRs filed by its competitor, Robert Bosch Tool Corporation. The petitions challenged SawStop’s patents related to active safety technology for table saws. The technology has been the subject of considerable industry praise and commercial success, and we leveraged this evidence of secondary considerations to convince the Board that the challenged claims across all four petitions were non-obvious. Two of the challenged patents are the basis of an exclusion order against Bosch that our firm secured for SawStop in a related Section 337 action before the International Trade Commission. Our efforts in the IPRs ensured that the exclusion order will remain in effect.
- We defended Memjet Technology Limited in a series of 11 petitions for IPRs filed by HP Inc. HP’s IPRs related to patents Memjet asserted against HP in a litigation in the Southern District of California. Only one of the 11 petitions reached a decision, and was an unqualified win for Memjet, as the PTAB refused to institute HP’s IPR. Soon after that denial, the remaining IPRs were dismissed by stipulation.
- Quinn Emanuel defended Adamas Pharmaceuticals and Forest Laboratories against a petition for IPRs filed by Ranbaxy Laboratories. The petition challenged U.S. Patent No. 8,362,085, which covers a method of treating a patient with Namenda XR. In the Preliminary Response, we argued that the petition should be denied for failing to name all real parties in interest. The PTAB immediately ordered additional briefing on the issue. Before the PTAB could render a decision, the parties settled the dispute by dismissing by stipulation the IPR and settling the co-pending district court litigation.
- We defended Neurovision Medical Products, Inc. against an IPR filed by NuVasive, Inc. The IPR challenged U.S. Patent No. 8,634,894, which claims an innovative endotracheal tube that is used during head and neck surgeries. Based on the firm obtaining a significant claim construction ruling, the PTAB declined to institute trial on several of Neurovision’s key claims.
- We successfully defended TPK Touch Solutions, Inc. (“TPK”) against three petitions filed by its competitor Wintek Corporation seeking an review of U.S. Patent No. 8,217,902, a patent involving an improved conductor pattern structure for mutual capacitance touch panels. After we eliminated nearly all grounds asserted by Wintek with regard to the critical claims of the ’902 patent, the parties entered a settlement and the proceedings were dismissed by stipulation for the remaining claims. In a related ex parte re-examination, we successfully defended the key claims of the ’902 patent and amended the remaining claims to overcome the cited prior art. The re-examination certificate issued finding all claims patentable.
- We secured a Decision Not to Institute IPRs on Jazz Pharmaceuticals’ S. Patent No. 7,895,059 against a petition filed by hedge fund manager Kyle Bass and Erich Spangenberg. Bass et al. had been filing series of IPRs against many pharmaceutical companies
- We represented Celgene Corporation in defending against an IPR filed by Bass et al. The challenged patent (U.S. Pat. No. 5,635,517), covers the active ingredient in Celgene’s blockbuster cancer therapy, Revlimid®. The PTAB denied institution of the IPR, adopting nearly all of Celgene’s arguments against institution. This was the firm’s second win against Bass’s IPR challenges to pharmaceutical patents.
- We successfully defended our client Fortinet Inc. against three IPRs filed by its competitor Sophos Inc. We filed Preliminary Responses on behalf of Fortinet, and the PTAB denied institution for all challenged claims—thirty-nine in total.
- We defended Aylus Networks against two IPRs filed by Apple seeking review of U.S. Patent No. RE44,412, a patent involving the distribution of media content over a wide area network. At the institution stage we defeated one petition completely and, on the other petition, defeated institution with respect to the critical claims for the litigation.
- Quinn Emanuel successfully defended Jazz Pharmaceuticals against three IPRs filed by Par Pharmaceutical, Inc., Ranbaxy Inc, and Amneal Pharmaceuticals LLC, challenging Jazz’s U.S. Patent No. 8,772,306. The ’306 patent claims methods of treating patients with Jazz’s Xyrem® drug product when it is administered concomitantly with sodium valproate. After submitting preliminary responses, the PTAB agreed with our positions and denied institution in two of the IPRs. The third IPR was only partially instituted, but the proceeding was dismissed by stipulation after the institution decision issued.
- We achieved a complete victory for our client Anest Iwata Corp. against an IPR filed by one of its chief competitors, Sata GmbH & Co. KG. The petition challenged Anest’s U.S. Patent No. 6,494,387, directed to low-pressure spray gun technology. We filed a preliminary response and convinced the Board to deny institution on the grounds that Sata’s petition relied on substantially the same arguments that the Board had considered in a prior petition.
- We defended 44 IPRs file by Intel against Alacritech Inc., an innovation company in the intelligent network card field. We defeated 10 of the petitions at the institution stage. Seven of them resulted in a final decision with at least one claim found patentable.
- Quinn Emanuel defended Universal Secure Registry against four separate IPRs filed by Apple Inc. and Visa, Inc, challenging USR’s U.S. Patent No. 8,856,539. The ’539 patent relates to computer systems that authenticate identities and selectively grant access to information and enable transactions. In two of the four proceedings, the Board found our arguments persuasive enough to deny institution of petitions outright, ensuring an early victory for our client. After fully considering the evidence and arguments we presented for the remaining two proceedings, the PTAB again held that all challenged claims were patentable resulting in a complete sweep in our client’s favor.
- We filed three IPRs petitions on behalf of our client Samsung challenging U.S. Patent Nos. RE42,035, 7,282,951, and 6,781,226. The patents at issue relate to processor modules having stacked integrated circuit die elements. Arbor Global previously asserted the patents against Samsung in a district court action in the Eastern District of Texas. The PTAB instituted all three IPRs, and held all challenged claims in those petitions unpatentable.
- We represented Samsung as Petitioner in a series of IPRs and ex parte reexamination proceedings against patents asserted by Kannuu Pty, Ltd. The technology relates to character input using a directional pad on a remote control. The PTAB instituted two IPR petitions against Kannuu’s patents, and found the asserted claims unpatentable. Quinn also secured institution of three ex parte reexaminations on additional asserted patents
- We filed a series of IPRs on behalf of TSMC North America and Xilinx against Arbor Global Strategies. The challenged patents were asserted against TSMC and Xilinx in a related litigation in the District of Delaware. The PTAB ruled that all claims were unpatentable in Final Written Decisions.
- We represented ASM in patent infringement actions against Kokusai Electric (previously Hitachi Kokusai Electric) in the U.S. and Japan as well as multiple IPR proceedings and ultimately secured a $115 million royalty payment through July 2021.
- We won a complete victory for our client, Clarion Co., Ltd., in an IPR challenging Beacon Navigation GmbH’s U.S. Patent No. 6,029,111. Our client, a major manufacturer of GPS navigation systems, challenged 13 claims of the ’111 patent, which relates generally to navigation systems and Global Positioning System technology. We obtained critical admissions from the patent owner’s expert after institution, and at a combative hearing, successfully defeated the patent owner’s substantive technical and legal claims. The PTAB’s final written decision accepted our arguments on all key issues, giving our client a total victory on every challenged claim.
- We filed two IPRs on behalf of our client Parrot S.A. challenging U.S. Patent Nos. 7,931,239 and 9,073,532 asserted by QFO Labs, Inc. The patents generally relate to flying hovercrafts that are controlled by the user through a remote unit. Attorneys in our New York office identified the strongest prior art references available and worked with a renowned expert in the field to support the petitions. The PTAB ruled that all instituted claims are unpatentable.
- We successfully prosecuted an IPR on behalf of Sony challenging U.S. Patent No. 7,688,347, which is exclusively licensed to Cascades Projection LLC and had been asserted against Sony in litigation pending in the Central District of California. The patent relates to a projection display system and its optical components, a technology area in which Quinn Emanuel has extensive experience litigating before the ITC and in district courts. Following oral argument, the PTAB issued a final written decision finding all the challenged claims invalid and giving Sony a total victory.
- We filed an IPR on behalf of Samsung challenging U.S. Patent Nos. 7,746,916, 7,768,965, 7,881,236, 7,809,373, and 8,218,481, which are assigned to Evolved Wireless LLC. The patents relate generally to LTE wireless communications, a technology area in which Quinn Emanuel has litigated extensively in the ITC and in district courts. The PTAB instituted four of the five petitions, and held all challenged claims in those petitions unpatentable.
- We filed three IPRs on behalf of our client Fortinet Inc. against Sophos Inc. The IPRs challenged Sophos-owned U.S. Patent Nos. 6,195,587, 8,261,344, and 8,607,347. The patents at issue are in the field of network security and malware detection. Sophos previously asserted the patents against Fortinet in a district court action in the Northern District of California. All three IPRs were instituted by the PTAB before the parties settled all pending litigation.
- We filed an IPR on behalf of Daimler-Benz challenging U.S. Patent No. 8,180,279, which is owned by Antennatech LLC. The patent relates generally to wireless internet hotspots. Attorneys in our New York and Chicago offices drafted the petition in collaboration with renowned experts in the field. The petition was strong enough to force a dismissal of the co-pending district court litigation and the IPR review within a few weeks.
- We filed an IPR on behalf of Daimler-Benz challenging U.S. Patent No. 7,241,034, which is owned by Adaptive Headlamp Technologies, Inc. The patent relates generally to headlamps that rotate and incline in order to provide better illumination in front of a moving vehicle. Attorneys in our New York and Chicago offices drafted the petition and worked with renowned experts in the field to support the petition.
- We filed two IPRs on behalf of Daimler North America, Mercedes-Benz USA, and Mercedes-Benz U.S. International challenging U.S. Patent Nos. 8,209,705 and 8,566,843, which are owned by Stragent LLC. The patents relate generally to sharing information in a distributed embedded network. Attorneys in our New York office drafted the petition in collaboration with a renowned expert in the field. The PTAB ruled in our favor that all challenged claims were unpatentable after oral argument.
Covered Business Method Review
- On behalf of Google, we filed covered business method review petitions challenging four related patents owned by NPE Smartflash LLC (U.S. Patent Nos. 7,334,720, 7,942,317, 8,118,221, and 8,336,772). The patents are generally directed to purchasing and downloading content (including music, movies, and apps) to an electronic device. The PTAB accepted all of our arguments and found all of the challenged claims to be unpatentable.
- Quinn Emanuel secured a Decision Not to Institute covered business method review of four patents for firm client Jazz Pharmaceuticals in the first-ever CBM attack in the pharmaceutical industry. The PTO denied the CBMs, holding that Jazz’s patents did not claim a “financial product or service” and, therefore, were not “covered business method patents” eligible for review. This was only the second time the PTO denied institution of CBM review on these grounds, and the first time the PTO found that the Patent Owner affirmatively showed its claims did not encompass a “financial product or service.”
- We defended Universal Secure Registry against three separate petitions for covered business method review filed by Apple Inc., challenging USR’s U.S. Patent No. 8,577,813. The ’813 patent relates to computer systems that authenticate identities and selectively enable financial transactions. The PTAB denied institution for all three proceedings resulting in a complete victory for our client. In particular, the Board held that the ’813 patent claims were eligible patent subject matter under 35 U.S.C. § 101 because they were not directed to an abstract idea. The Board also found that the ’813 patent was directed to a technological invention and did not qualify for CBM review.