Patent Trial and Appeal Board (PTAB)

Adversarial proceedings before the U.S. Patent and Trademark Office (USPTO) have become a routine facet of patent litigation. These proceedings—inter partes reviews (IPRs), post-grant reviews (PGRs), and derivations—are similar to a bench trial on invalidity or inventorship issues, albeit before a panel of three administrative law judges before the Patent Trial and Appeal Board (PTAB) of the USPTO. These proceedings feature briefing, expert discovery, and an oral hearing and conclude with a final written decision issued by the PTAB panel.

BakerHostetler has built a formidable win record representing clients in IPRs, PGRs and other proceedings before the PTAB. Since the September 2012 implementation of the America Invents Act (AIA), BakerHostetler attorneys have handled over 100 such PTAB proceedings. We manage the IPR and PGR proceedings as part of a holistic approach to patent litigation. We are strategic, timing filings to best position our clients for success, and take an aggressive approach to litigation. Whether a client is challenging or protecting a patent, we work to develop greater knowledge, conduct more thorough research, design better arguments and, with our technical experts, formulate more credible expert testimony than do our opponents.

In other PTAB proceedings, BakerHostetler won the first-ever Derivation Proceeding instituted by the PTAB and has also successfully handled many covered business method (CBM) proceedings.

BakerHostetler defeated a series of IPRs brought against two key semiconductor manufacturing patents owned by Reno Technologies Inc. We persuaded the PTAB to deny institution on a first IPR petition, and then defeated the other IPR petition after a PTAB trial. The PTAB trial included numerous depositions, motions and briefings.
BakerHostetler convinced the PTAB to deny institution of two IPR petitions respectively filed against two electrocardiograph connector patents owned by Cardinal Health. Ultimately, the PTAB found Cardinal Health’s expert witness testimony to be more credible than that of the petitioners’ expert. This was part of a patent litigation brought by BakerHostetler on behalf of Cardinal Health, asserting these same patents against competitors.
BakerHostetler convinced the PTAB to invalidate a competitor’s patent related to small molecule compounds in a PGR brought on behalf of client Syngenta. We convinced the PTAB that the challenged patent lacked sufficient enablement and written description.
BakerHostetler obtained two wins for Crown Packaging Technology, first by successfully arguing that a first IPR should not be instituted against a Crown patent and then by defeating another instituted IPR after trial in the PTAB. In the instituted IPR, our team convinced the PTAB that compelling evidence of secondary considerations involving commercial success and industry accolades weighed in favor of validity over an obviousness challenge brought by the petitioner.
In 2019, BakerHostetler won the first-ever derivation proceeding instituted by the PTAB. In this PTAB trial, witness testimony was submitted by depositions and exhibits along with extensive briefing on the facts and the law. Following oral argument, the PTAB issued a 67-page opinion confirming all claims of the patent issued to BakerHostetler client GED Integrated Solutions Inc.
BakerHostetler attorneys represented patent owner Trading Technologies in more than a dozen CBM reviews, including numerous appeals of the same to the Federal Circuit. In early 2019, the Federal Circuit found in favor of BakerHostetler’s client on the first four appeals, holding that patented technologies are “for technological inventions” under the AIA and are therefore not subject to CBM review. The court vacated the CBMs at issue in the first four appeals.
When Microsoft was accused in litigation of infringing eight patents with two of its well-known product lines, it turned to BakerHostetler. Our team successfully sought institution of IPRs of all the patents and invalidated each of the 91 claims asserted in the underlying litigation.
BakerHostetler successfully represented Henny Penny with one of the first cases involving the Pilot Program for Amending Claims during an IPR. The PTAB found all the original claims involving deep fryer technologies unpatentable and denied the patent owner’s motion to amend.
BakerHostetler successfully defeated all critical patent claims related to video streaming technologies in an IPR trial brought on behalf of client Vimeo Inc.