Patent Office Trials

The trial-like proceeding before the Patent Trial and Appeals Board (PTAB) demand representation from attorneys who know both the courtroom and the USPTO. At Robins Kaplan, the attorneys in our Patent Office Trials Group are already adept at the techniques and strategies needed to succeed in PTAB litigation—especially when those proceeding are double-tracked with co-pending patent infringement litigation.  Seasoned intellectual property litigators, we have dozens of attorneys and Ph.D scientists admitted to practice before the USPTO. Our depth of experience and wide-ranging technical backgrounds means we know the patent system and technology as well as the courtroom.

This hybrid perspective gives us the technical mastery and persuasive power PTAB trials demand. It also informs our skillful coordination of PTAB proceedings with key district court litigation issues like Markman hearings, expert selection and trial strategies. Our complete menu of PTAB and patent litigation services means that, whether our client is a patent owner or petitioner, they can turn to us for an end-to end solution that helps make PTAB proceedings work with overall litigation goals.

Experience

Our PTAB experience includes ongoing representations for petitioners and patent owners in Inter Partes Review (“IPR”) and Covered Business Method (“CBM”) proceedings. The majority of our current cases involve patents that are also involved in parallel district court actions. We have brought or are defending IPR and CBM proceedings relating to patents in a variety of technology areas, including:

  • Adaptive Bit Rate Streaming
  • Electrical Connectors
  • Electronic Controllers
  • Gas Flame Burners
  • GPS Systems and Navigational Displays
  • Infant Incubators
  • Integrated Circuits
  • Lithium Battery Technology
  • Medical Devices
  • Meta-Searching and Client-Server Multitasking
  • Pharmaceuticals
  • Raster Image Printer (RIP)
  • Telecommunications
  • Thermal Imaging Cameras
  • Vehicle Steering and Transmissions Systems

Clients and Industries

We have experience litigating patents from a variety of technical disciplines and industries, including:

  • Emerging Technology
  • Green/Clean Technology
  • Life Sciences
  • Manufacturing
  • Pharmaceuticals
  • Semiconductor
  • Software

Selected Case Results*

  • Represent global leader in the development and production of specialty microporous membranes in multiple inter partes review proceedings concerning lithium battery technology.

  • Represent American manufacturer of various outdoor maintenance equipment in inter partes review concerning vehicle steering systems.

  • Represent American manufacturer of recreational vehicles in inter partes review concerning transmission systems.

  • Represent worldwide semiconductor company in multiple inter partes review proceedings concerning integrated circuits.

  • Represent Fortune 100 company in an inter partes review proceeding concerning GPS systems and navigational displays.

  • Represent Indian pharmaceutical company in an inter partes review proceeding concerning fluoroalkoxy-substituted benzamide dichloropyridinyl N-oxide compounds.

  • Represent Fortune 100 company in an inter partes review proceeding concerning electronic control devices.

  • Represent global corporation that sells business services and document technology in multiple inter partes review proceedings concerning raster image printer (RIP) technology.

  • Represent manufacturer of optical communications and RF drop products in an inter partes review proceeding concerning electrical connectors.

  • Represent global leader in medical and safety technology in an inter partes review proceeding concerning thermal imaging cameras.

  • Represent global leader in medical and safety technology in multiple inter partes review proceedings concerning infant incubator technology.

  • Represent innovative consulting firm in multiple inter partes review proceedings concerning adaptive bit rate streaming technology.

  • Represent innovative consulting firm in multiple covered business method proceedings concerning metasearching and client-server multitasking technologies.

* Past results are reported to provide the reader with an indication of the type of litigation we practice. They do not and should not be construed to create an expectation of result in any other case, as all cases are dependent upon their own unique fact situation and applicable law.

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Cyrus A. Morton

Partner

Chair, Patent Office Trials Group

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