PTAB proceedings are an integral part of patent litigation. Most patent cases involve a PTAB proceeding in combination with either district court litigation or an ITC proceeding. PTAB proceedings, including inter partes review (“IPR”), covered business method patent review (“CBM”), and post-grant review (“PGR”), provide unique opportunities for litigants. They are, in effect, mini-trials at the 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 procedures. 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 compliment our litigation strategy.
Our attorneys are some of the most experienced PTAB attorneys in the country. In 2017 Docket Navigator ranked Quinn Emanuel third in the country for the number of proceedings handled. Patexia.com recognized Quinn Emanuel as one of the “most active” and one of the “best performing” firms at the PTAB. In 2018, Law360 named our Intellectual Property group “Practice Group of the Year.”
Our experience in front of the PTAB covers a broad spectrum of technologies, including computer architecture, electronic controls, enterprise and computer software, semiconductors, automobile technologies, navigation and global positioning technologies, cellular communications, LED technologies, mechanical devices, medical devices, pharmaceuticals, biologics, and chemical polymers, among others. Our attorneys are as comfortable with litigation strategy as they are with complex technical issues or thorny issues of PTO procedure. 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 technical experience necessary to prevail at the PTAB. More than 250 of our lawyers are experienced intellectual property attorneys. More than 140 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, 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
- 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.
Inter Partes Review
Patent Owner Representations
- We successfully represented Bio-Rad Laboratories in a series of twelve inter partes review proceedings filed by 10X Genomics that challenged a family of patents Bio-Rad was asserting 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.
- We won three complete victories for our clients Celgene Corporation and Abraxis BioScience, LLC, in inter partes reviews 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. Inter partes review 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 an unrelated patent related to Abraxane, U.S. Patent No. 8,853,260.
- We successfully defended Rohm and Haas Company against two inter partes reviews 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 petitions for inter partes review 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 inter partes review proceedings ensured that the exclusion order will remain in effect.
- We defended Memjet Technology Limited in a series of 11 petitions for inter partes review 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 parties settled their dispute, and HP agreed to voluntarily dismiss all remaining IPRs.
- Quinn Emanuel defended Adamas Pharmaceuticals and Forest Laboratories against a petition for inter partes review 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 and co-pending district court litigation.
- We defended Neurovision Medical Products, Inc. against a petition for inter partes review 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 inter partes 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 terminated with respect to 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.
- Quinn Emanuel secured a Decision Not to Institute inter partes review of Jazz Pharmaceuticals’ U.S. Patent No. 7,895,059 against a petition filed by hedge fund manager Kyle Bass and patent troll Erich Spangenberg. Bass et al. had been filing IPRs against pharmaceutical companies in an attempt to drive down their stock prices and profit on short positions taken in advance of filing. Thanks to the complete denial of their petition against the ’059 patent, their strategy did not harm Jazz.
- 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 inter partes review petitions filed by its competitor Sophos Inc. We filed Preliminary Responses on behalf of Fortinet, and in response the PTAB denied institution for all challenged claims—thirty-nine in total.
- We defended Aylus Networks against two petitions filed by Apple seeking inter partes 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 separate petitions for inter partes review 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 parties settled after the institution decision issued.
- We achieved a complete victory for our client Anest Iwata Corp. against a petition for inter partes review 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 won a complete victory for our client, Clarion Co., Ltd., in an inter partes review 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. Quinn Emanuel coordinated across its Tokyo and Los Angeles offices to identify the strongest Japanese and English language prior art references. Working with technical experts, our team worked to clearly present briefing and argument on GPS and related navigation technology fields, in order to demonstrate that various prior art inherently demonstrated key claim limitations. We also took advantage of the IPR deposition process to obtain critical admissions from the patent owner’s expert. At a combative hearing, we 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 inter partes review petitions on behalf of our client Parrot S.A. challenging U.S. Patent Nos. 7,931,239 and 9,073,532. 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 recently ruled that all instituted claims are unpatentable.
- We successfully prosecuted a petition for inter partes review 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-at-issue relates generally 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. Attorneys in our Silicon Valley office identified the strongest prior art references and collaborated with a renowned expert in the field of display system optics to draft the petition. Following oral argument, the PTAB issued a final written decision finding all the challenged claims invalid and giving Sony a total victory.
- We filed a petition for inter partes review 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 inter partes reviews 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 a petition for inter partes review 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 inter partes review within a few weeks.
- We filed a petition for inter partes review 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. The inter partes review settled before the PTAB rendered an Institution Decision.
- We filed two petitions for inter partes review 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.
- We filed a petition for inter partes review on behalf of Merck Sharp & Dohme Corp. challenging U.S. Patent No. 6,331,415 (“the Cabilly II patent”), which is owned by Genentech, Inc. and City of Hope. The challenged claims purport to relate to recombinant DNA processes and compositions for making antibodies. Attorneys in our New York and Chicago offices drafted the petition and worked with renowned experts, including a Nobel Laureate, in the field to support the petition. The inter partes review was instituted by the PTAB and settled shortly thereafter.
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.”
The PTO had been liberal in its interpretation of what is included in a “financial product or service.” The patents here cover methods of safely distributing the drug Xyrem to patients while preventing abuse and diversion of the drug. The generic pharmaceutical petitioners alleged Jazz’s patents cover a financial product or service because they cover Jazz’s sale of its drug Xyrem, and because the claims have certain steps such as checking for cash payments and a patient’s insurance coverage. The firm convinced the PTO that sales were not encompassed by Jazz’s patents’ claims, and that the claims as a whole are directed to safely controlling access to dangerous pharmaceutical drugs, not anything financial in nature.