Post-Grant Proceedings and federal circuit appeals
Representative matters before the Patent Trial and Appeal Board (PTAB) and the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) include:
Flywheel Sports, Inc. v. Peloton Interactive, Inc., (IPR2019-00294, IPR2019-00295, and IPR2019-00564)
Represent patent owner as back-up counsel defending U.S. Patent Nos. 9,233,276, 9,174,085, and 9,861,855, which relate to exercise systems.
Shure Inc. v. ClearOne Inc.,(IPR2017-01785)
Represented patent owner as back-up counsel defending U.S. Patent No. 9,264,553 relating to beamforming microphone arrays. ClearOne won IPR2017-01785 with respect to all of the claims.
NVIDIA Corp. v. Polaris Innovations Ltd., (IPR2017-01346 and IPR2017-01781)
Represented the patent owner as back-up counsel defending U.S. Patent No. 8,161,344 relating to circuits for creating an error coding data block. Polaris won IPR2017-01781 completely and won IPR2017-01346 partially in a mixed decision that confirmed the patentability of at least 10 challenged claims.
Argentum Pharmaceuticals LLC v. ICOS Corp., (IPR2017-01762)
Represented petitioner as lead counsel challenging U.S. Patent No. 6,943,166 relating to the Cialis® drug. Settled on behalf of Argentum Pharmaceuticals LLC.
Vivex Biomedical, Inc. v. MiMedx Group, Inc., (IPR2017-01220)
Represented petitioner as lead counsel challenging U.S. Patent No. 8,709,494 relating to placental tissue grafts. Settled on behalf of Vivex Biomedical, Inc.
Argentum Pharmaceuticals LLC v. Novartis AG, (IPR2017-01063)
Represented petitioner as lead counsel challenging U.S. Patent No. 9,006,224 relating to neuroendocrine tumor treatment. Settled on behalf of Argentum Pharmaceuticals LLC.
Unified Patents Inc. v. Virtual Fleet Mgmt., LLC (IPR2017-00845)
Represented petitioner as lead counsel challenging U.S. Patent No. 6,958,701 relating to vehicular alert systems. Settled on behalf of Unified Patents Inc.
Kingston Tech. Company, Inc. v. CATR Co., Ltd. (IPR2015-00149 and IPR2015-00559)
Represented the patent owner in two IPRs for a patent directed to flash memory devices with a rotary cover. Three of the four independent claims in the patent survived the trials.
[Various Parties] v. Horizon Therapeutics, Inc. (IPR2015-01718, IPR2015-01773, IPR2015-01774, and IPR2015-01775)
Part of a team representing owner of patents for the Vimovo® drug in IPRs filed a generic drug company and hedge fund. Helped secure victory in trial successfully defending the validity of U.S. Patent No. 8,945,621.
Chums, Inc. and Croakies, Inc. v. Cablz, Inc. (IPR2014-01240)
Conducted oral argument for petitioner, Chums, in an IPR resulting in all claims being found unpatentable for a patent directed to eyewear retainers.*
ForHealth Technologies, Inc. v. Intelligent Hospital Systems Ltd., 582 Fed.Appx. 887 (Fed.Cir. 2015)
Principal author of appellee brief and conducted oral argument at the Federal Circuit for a medical device manufacturer, Intelligent Hospital Systems, after it successfully challenged a patent in an inter partes reexamination, No. 95/000,333, directed to automated preparation of syringes. The Federal Circuit affirmed the decision by the PTAB in which all claims of the patent were cancelled.*
eBay v. Locata LBS LLC (IPR2014-00585)
Represented eBay as back-up counsel in an IPR that resulted in all claims being found unpatentable for a patent directed to location-based services.*
Petroleum Geo-Services Inc. and ION Geophysical Corp. v. WesternGeco LLC (IPR2014-00689 and other cases)
Represented the patent owner, WesternGeco, which is a subsidiary of Schlumberger, as back-up counsel in IPRs of U.S. Patent No. 7,923,520 and other patents involving marine seismic systems.*
GEA Process Eng’g, Inc. v. Steuben Foods, Inc. (IPR2014-00041 and other cases)
Represented a manufacturer, Steuben Foods, as part of a team in the successful defense of a family of five patents directed to aseptic packaging technologies in IPRs and in related ex parte and inter partes reexaminations and reissues.*
Ariosa Diagnostics, Inc. v. Stanford Univ. (IPR2013-00308); Ariosa Diagnostics v. Verinata Health, Inc. (IPR2013-00276 and IPR2013-00277); and Ariosa Diagnostics v. Isis Innovation Ltd. (IPR2012-00022 and IPR2013-00250)
Represented Ariosa, a molecular diagnostic company, as back-up counsel in multiple IPRs regarding patents directed to non-invasive DNA-based prenatal testing for chromosomal abnormalities.*
St. Jude Medical, Inc. v. Medtronic (No. 95/002,110 and other cases)
Represented a medical device company, St. Jude, as co-counsel in inter partes reexaminations of nine patents and successfully cleared space in the patent landscape related to renal denervation as all of the challenged were cancelled.*
Graphic Packaging Int’l, Inc. v. Exopack-Technology, LLC (No. 95/001,638; No. 95/001,639; and No. 95/001,640)
Represented a packaging company, Exopack, as lead counsel in the defense of the three patents in inter partes reexamination. The PTAB affirmed the successful outcomes at the Central Reexamination Unit regarding the patentability of the claims in each patent. The concurrent litigation, which had been stayed, was settled along with the defendant’s appeal pending at the Federal Circuit regarding the reexaminations.*
*Experience prior to founding Laurence & Phillips IP Law
Patent Procurement and Portfolio Management
Led a team that prepared and prosecuted applications directed to automotive airbags for Autoliv ASP, Inc. Two patents in this portfolio were challenged by Hyundai in IPRs. The Federal Circuit affirmed the PTAB’s decision in IPR2014-01005 in which all of the claims in U.S. Patent No. 7,347,450 survived in Autoliv ASP, Inc. v. Hyundai Mobis Co., Ltd., 678 Fed.Appx 1020 (Fed. Cir. 2017). Some of the claims of U.S. Patent No. 7,614,653 remained valid after an appeal from IPR2014-01006 as held in Autoliv ASP, Inc. v. Hyundai Mobis Co., Ltd., 685 Fed.Appx 962 (Fed. Cir. 2017).
Managed development of a portfolio directed to blood pumps for a small company and prepared its priority applications (U.S. Patent No. 7,717,682). The portfolio was acquired by Fresenius and then transferred to Baxter Int’l. Three patents in the portfolio were subjected to reexaminations and all survived including U.S. Patent No. 8,197,231, which required no amendments to the original claims during reexamination.
Advised a medical device company for more than a decade on building its patent portfolio, clearing products, and investment transactions.
Developed worldwide strategies to build several portfolios with 100+ U.S. and foreign patents. Prepared and prosecuted several hundred patent applications to patent issuance.
Opinion Practice and Litigation Counseling
Provided an opinion that an independent claim in a patent asserted by a plaintiff was invalid since it was broadened during reexamination. This invalidity position resulted in a summary judgment for the defendant and recovery of all costs in Sharper Image Corp. v. Neotec, Inc., 03-4426 (N.D. Cal. June 3, 2005).
Co-led a team in clearing a family of pharmaceutical compounds for clinical study.
Co-authored a Supreme Court amicus brief in Association for Molecular Pathology et al. v. Myriad Genetics, Inc., et al., 569 U.S. 576 (2013).