Inter Partes Review

Few things have changed the face of patent litigation like the arrival of Inter Partes Reviews in 2012. The benefits for patent challengers are clear: reduced costs to file petitions, a lower burden of proof to invalidate, and broader claim scope interpretation, among other benefits. There may be no greater opportunity to attack a competitor’s patent than an IPR.

While the initial Final Written Decisions were decidedly in favor of Petitioners (a 96.4% cancellation rate as of March 16, 2014), more recent decisions have increasingly sided with Patent Owners, bringing down the total number of canceled claims to 82%. Critics of IPR proceedings try to argue the various ways in which the proceedings are skewed toward Petitioners.

It is becoming increasingly clear, however, that the IPR process has added an efficient and cost-effective avenue to test the patentability of patent claims outside of expensive District Court litigation.

A list of exemplary cases follows below:

Exemplary Petitioner Cases:

  1. Laird Techs., Inc. GrafTech Int’l Holdings Inc.
    Represented the petitioner in three IPR proceedings that returned Final Decisions invalidating all claims as unpatentable under Section 103.
  2. Wahoo Fitness, LLC Blackbird Tech LLC
    Represented the petitioner, with co-counsel, to render unpatentable the claims that were asserted by non-practicing entity in co-pending litigation. 
  3. Cosmax USA Amorepacific US, Inc.
    Represented the petitioner in an IPR proceeding that led to favorable settlement before Decision to Institute.
  4. We are currently representing the petitioner in 21 additional IPR matters that have not been concluded. In addition, we have prepared at least 11 IPR petitions that were never filed because, upon sending those petitions to Patent Owners, the cases settled favorably for our clients pursuant to settlement discussions.

Exemplary Patent Owner Cases:

  1. Microsoft v. Proxyconn
    Represented the patent owner in obtaining a Federal Circuit decision reversing the PTAB’s claim construction and vacating its unpatentability findings, marking the first time that the Board was reversed in an IPR.
  2. Facebook v. Bruce Zak
    Successfully defended the patent owner against four IPR Petitions brought by the social media giant. The PTAB denied institution of trial on all claims.
  3. South-Tek Systems, LLC and Potter Electric Signal Company v. Engineered Corrosion Solutions, LLC
    Successfully defended all claims of our client’s patent on fire sprinkler system technology against two IPR challengers, securing an all-out victory before the Board.
  4. Positec USA v. Stanley Black & Decker
    Highlighting the hidden complexity of a seemingly simple invention, we successfully defended two claims before the Board and beat the remaining challenges on appeal before the Federal Circuit, thereby saving all four of the patent holder’s claims at issue.
  5. LKQ Corporation v. Clearlamp, LLC
    Represented the patent owner in one of the first three cases in which patent claims survived the IPR “Death Squads.” The second of the three cases is Microsoft v. Proxyconn, noted above.
  6. DaVincia, LLC. v. Enco Systems, Inc.
    Enco Systems sued a competitor for infringing their patent covering a closed captioning technology. The competitor countered by filing a petition for Inter Partes Review, which was denied by the Patent Trial and Appeal Board thanks in part to the hard work of Harness Dickey’s PTAB experts.