We have a long history of successfully representing both patent holders and patent challengers in proceedings before the US Patent & Trademark Office (USPTO), including before the Patent Trial and Appeal Board (PTAB). Our experience includes doing so in parallel with ongoing litigation in the federal courts and at the International Trade Commission (ITC).
The Leahy-Smith America Invents Act (AIA) required the USPTO to implement final rules for new post-grant proceedings that went into effect in September 2012. As of early 2014, more than 1,000 of these proceedings, which allow interested parties to challenge the patentability of issued patents, have been filed before the PTAB. Mayer Brown was one of the first firms retained and has since been retained to represent clients in more than 100 inter partes review (IPRs) or covered business method (CBMs) proceedings.
We are therefore well-positioned to represent clients in all facets of these trial proceedings, including IPRs, post-grant review (PGR) and the transitional program for covered business method patents (CBM). We are actively representing clients in pending IPR and CBM proceedings, know the rules and practices before the PTAB and have been on the cutting edge of the evolving law related to such proceedings, including filing one of the first and only motions that the PTAB granted for obtaining “additional discovery” in an IPR.
Mayer Brown’s IP litigators have the breadth and depth of experience to assist clients in protecting their business processes and patents, including before the PTAB. Our team includes leaders in the patent bar, as well as several former patent examiners and lawyers with technical backgrounds and advanced scientific degrees. Our lawyers are frequent speakers on post-grant procedures and strategy and have served on panels with PTAB judges and other USPTO officials. Additionally, we have developed the “Post-Grant Intellect Series,” a collection of webinars and legal updates that keep clients abreast of new developments and provide timely analysis of changes in the regulatory landscape from a patent litigation perspective.
Administrative trial proceedings before the PTAB provide a unique way to challenge issued patents, including those involved in litigation. We are experienced representing both patent owners and petitioners—whether faced with an opportunity to challenge a newly issued patent of a competitor, deal with a potentially problematic patent as part of a freedom to operate analysis, defend against attacks on a patent owner’s patent or assert or defend against post-grant challenges involving co-pending litigation. Our experience includes navigating the interplay between USPTO proceedings and ongoing parallel litigation in federal court or at the ITC. We also have deep experience handling ex parte and inter partes reexaminations in parallel with ongoing litigation. That experience has carried over to the new post-grant trial proceedings.
A thoughtful strategic approach is necessary to successfully take advantage of PTAB proceedings, including considerations of timing, estoppel issues, likelihood of stay and consistency of approach between any parallel litigation proceedings. Our IPR and CBM experience includes counseling and filing of petitions; filing of preliminary and patent owner responses; working with experts and directing preparation of evidence, whether on behalf of the petitioner or the patent owner; factual investigations and discovery, including taking and defending depositions of declarants; discovery motions and pre-hearing conferences before the PTAB, and pre-hearing preparation and oral hearings at the PTAB.
- We are involved in more than 20 IPR and CBM matters.
- Google v. BE Technologies, LLC. We represent Google as the petitioner in three IPRs challenging the validity of two patents that are being asserted in pending litigation in the Western District of Tennessee against 20 defendants. We successfully obtained stay of all 20 litigations before institution of trial pending resolution of the IPRs. Awaiting decision on trial institution.
- Various US Airlines. We filed two petitions seeking a CBM patent review of two US patents that were assigned to Loyally Conversion Systems Corporation (LCSC), which filed a lawsuit against 10 airlines in the Eastern District of Texas accusing the airlines’ loyalty programs of infringement. The accused functionality is related to converting loyalty (e.g., hotel) points into other forms of credits (e.g., frequent-flier miles). As part of its representation of Delta Airlines, Frontier Airlines, United Airlines, and US Airways, Mayer Brown analyzed LCSC’s patents, identified key prior art and developed the strategy of filing CBM petitions in view of the financial nature of LCSC’s patents. Along with Mayer Brown’s clients, American Airlines (which Mayer Brown was not representing in E.D. Texas) agreed with this strategy and retained Mayer Brown to represent it at the USPTO.
- DSM IP Assets B.V. We represent DSM IP Assets B.V., a life sciences and material sciences company, in ten IPR proceedings involving eight patents relating to optical fiber coatings. These cases are significant because they involve some of the first IPRs filed at the PTAB, in which a patent owner was successful in defending the patentability of the substantial majority of the challenged patent claims. In addition, based on our motions, they were the first cases in which the PTAB allowed additional discovery. Also, they are among the first cases involving chemical patents and dealing with the issue of inherency testing of the prior art.
- Amneal Pharmaceuticals v. Endo Pharmaceuticals. We represent patent owner Endo Pharmaceuticals in two IPRs challenging the validity of two patents asserted against Amneal’s generic ANDA product in co-pending litigation in the Southern District of New York.
- Vertex Pharmaceuticals, Inc. We acted as lead counsel in an Inter Partes Review (“IPR”) initiated by Ranbaxy Laboratories at the US Patent and Trademark Office, Ranbaxy Laboratories, Ltd. et al v. Vertex Pharmaceuticals, Inc., Case No. IPR2013-00024. This was one of the first IPRs filed in a pharmaceutical patent case. The matter was settled in November 2013.
- Software Solution Company. We represent a patent owner in a patent infringement litigation and co-pending CBM review challenging the validity of its asserted real estate settlement software patent.