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 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, 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:
Inter Partes Review
Patent Owner Representations
Covered Business Method Review
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.