Mr. Phillips has served as counsel in 67 inter partes reviews (IPRs) and covered business method patent reviews (CBMs). He has been lead counsel in 33 of those cases. In addition, he has been lead counsel in approximately 12 contested reexaminations. Representative matters include:
[Various Parties] v. Elecs. & Telecommc’ns Research Inst. (IPR2013-00635, IPR2014-00152, IPR2014-00901, IPR2014-00949, and IPR2015-00549) – Represented the owner of U.S. Patent No. 6,978,346, directed at a redundant interconnection for a RAID (redundant array of inexpensive disks) in a series of six IPR petitions filed by Dell, Hewlett-Packard, Net-App, VMware, IBM, and Oracle against the patent, raising or attempting to raise a total of 15 different patentability challenges. Matt led a team that convinced the PTAB not to institute trial for three of those petitions and won the trials in the other three cases. Affirmed under Rule 36.
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.
Volkswagen Group of Am., Inc. v. Light Transformation Techs. LLC (IPR2013-00238 and IPR00244) – Represented the owner of patents for a luminaire and optical transformer. Convinced the PTAB not to institute trial on a variety of grounds. Settled confidentially thereafter
GE Lighting Solutions, LLC v. Farlight LLC (IPR2014-00323) – Represented the owner of patent for an optical transformer. Settled confidentially before an institution decision.
Medtronic, Inc. v. Endotach LLC (IPR2014-00100 and IPR2014-00695) – Represented the owner of a patent for an intravascular stent. Defeated a motion for joinder of a second petition to add additional challenges based on additional prior art.
Xilinx v. PLL Techs., Inc. (IPR2054-00148) – Represented owner of patent for a PLL (phase-locked loop) based clock synthesizer.
Cellco P’ship v. Orlando Commc’ns LLC (IPR2015-01567 and IPR2015-01573) – Represented the owner of telecommunication patents. Implemented a strategy to avoid the expense of trial.
Neptune Generics LLC v. AUSPEX Pharms., Inc. (IPR2015-01313) – Part of team that represented the owner of a biopharmaceutical patent against an IPR petition filed by a hedge fund. Convinced the PTAB not to institute trial.
[Various Parties] v. Horizon Therapeutics, Inc. (IPR2015-01117, IPR2015-01127, IPR2016-00283, IPR2016-00284, and IPR2016-00829) – Part of team representing owner of patents for the drug Ravicti® in IPRs filed by generic drug companies.
[Various Parties] v. Horizon Therapeutics, Inc. (IPR2015-01718, IPR2015-01773, IPR2015-01774, and IPR2015-01775) – Part of team representing owner of patents for the drug Vimovo® in IPRs filed by generic drug company and hedge fund. Convinced the PTAB not to institute trial for the IPR petition filed by the hedge fund.
Motorola Mobility LLC v. Intellectual Ventures I LLC (CBM2014-00083 and CBM002014-00084) – Part of team representing owner of fundamental Internet technology patents. Convinced the PTAB not to institute trial.
Motorola Mobility LLC v. Intellectual Ventures I LLC (Control Nos. 95/002,095; 95/002,095; 90/013,205, and 90/013,206) – Led team representing owner of fundamental Internet technology patents in a pair of inter partes reexaminations and ex parte reexaminations.
PATENT PROCUREMENT AND PORTFOLIO MANAGEMENT
For almost 8 years, Mr. Phillips has led a team of 4-8 patent attorneys prosecuting patent applications for a large company that employs approximately 20 law firms as outside patent prosecution counsel. Phillips’ team has consistently been graded as the top firm or nearly the top firm for quality of work product during every grading period.
Filed and successfully prosecuted approximately 12 reissue applications, including broadening reissue applications, reissue continuations, and patents that have been asserted in litigation.
FEDERAL CIRCUIT APPEALS
Lead counsel for appellee in VMware, Inc. v. Elecs. & Telecommc’ns Research Inst., Nos. 2016-1670, -1673
Lead counsel for appellee in Dell Inc. v. Elecs. & Telecommc’ns Research Inst., No. 2015-1719. Settled.
Of counsel for appellant in Endotach LLC v. Medtronic, Inc., No. 2015-1784.
Lead counsel for appellant in Collectors Universe, Inc. v. Blake, No. 2015-1296.
Principal author of brief filed by amicus curiae Intellectual Ventures Management LLC in Marine Polymer Techs, Inc. v. Hemcon, Inc., 672 F.3d 1350 (Fed. Cir. 2012) (en banc). The court adopted the positions and largely followed the reasoning set forth in our brief that intervening rights in reexaminations and reviews should arise only for actual claim wording changes, not from mere arguments.
Lead counsel on appeal for Mentor Graphics in Singhal v. Mentor Graphics, 2009 WL 1220786 (Fed. Cir. May 6, 2009) (nonprecedential). Represented owner of patent applications against former employee alleging to be inventor and owner of the patented technology. Part of team that obtained summary judgment on all inventorship and ownership claims in district court. Affirmed on appeal by unanimous opinion.