The firm recently won a complete victory for its client, a major manufacturer of GPS navigation devices, in one of the first-ever filed and argued inter partes review (IPR) proceedings. An IPR is a relatively new, trial-like proceeding which takes place before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office, and involves taking depositions and presenting evidence to a panel of three administrative patent judges at a hearing. It replaces theinter partes reexamination process that was used for many years as a means of invalidating a patent outside of actual litigation.
Quinn Emanuel coordinated across its Tokyo and Los Angeles offices to identify the strongest Japanese and English language prior art references. Working with a technical expert, we presented a report and extensive briefing to explain the complex references that were found. Because depositions are allowed in IPRs, as opposed to the prior inter partes reexamination system, we were able to establish a number of key admissions from the opposition’s expert that were then used in the invalidation procedure. The IPR culminated in our successful oral argument at the PTAB before a gallery well-attended with legal and automotive industry observers. The IPR concluded when the PTAB issued its final written decision, finding every challenged claim unpatentable and giving our client a total victory.