Representative Work

PTAB Litigation

Google LLC v. Princeps Secundus, LLC

As lead counsel for petitioner Google, led the preparation of an IPR petition against a user interface patent. The patent owner settled shortly after the petition was filed.

Case IPR2020-01135 (PTAB).

Int’l Bus. Machs. Corp. v. Groupon, Inc.

As lead counsel for petitioner IBM, prepared and filed two IPR petitions against a patent related to location-based services. The Patent Trial and Appeal Board instituted one of the petitions, which covered every claim asserted in litigation. After institution, defended IBM’s expert’s deposition, deposed the patent owner’s expert, and argued at the oral hearing. The matter settled favorably after the oral hearing as part of IBM’s global settlement with Groupon.

Cases IPR2017-01451, IPR2017-01452 (PTAB).

Kayak Software Corp. v. Int’l Bus. Machs. Corp.

As lead counsel for patent owner IBM, led the defense of four patents related to network-based services across eight IPRs and covered business method reviews. Obtained complete denials of institution in six of those proceedings, including one denial later designated “informative” by the Patent Trial and Appeal Board. Prevailed after appeals of the remaining two proceedings in Int'l Bus. Machs. Corp v. Iancu; the Federal Circuit reversed one adverse final written decision and vacated and remanded the other.

Cases IPR2016-00604, IPR2016-00605, IPR2016-00608, IPR2016-00609, CBM2016-00075, CBM2016-00076, CBM2016-00077, CBM2016-00078 (PTAB).

Globus Medical, Inc. v. Bonutti Skeletal Innovations LLC

As lead counsel for patent owner Bonutti Skeletal Innovations, led the defense of five patents related to spinal implants across seven IPRs. After obtaining complete denials of institution on petitions against two key patents and filing preliminary responses against the petitioner’s second round of petitions against those patents, achieved a favorable settlement.

Cases IPR2015-01333, IPR2015-01335, IPR2015-01339, IPR2015-01345, IPR2015-01346, IPR2016-00410, IPR2016-00417 (PTAB).

Coalition for Affordable Drugs IV LLC v. Pharmacyclics, LLC

Represented patent owner Pharmacyclics to defend against a short-selling hedge fund’s IPR petition against an Orange Book-listed patent on the mantle cell lymphoma treatment IMBRUVICA® (ibrutinib). Obtained a complete denial of institution.

Case IPR2015-01076 (PTAB).

Appellate Litigation

Int’l Bus. Machs. Corp. v. Iancu

In consolidated appeals of two IPR final written decisions, drafted all of the appellant’s briefing and prepared the arguing attorney for the oral hearing. The Court reversed one final written decision for lack of substantial evidence and vacated and remanded the other for applying an incorrect claim construction.

Nos. 18-1065 and 18-1066 (Fed. Cir.).

Appellate Litigation – Appeal from the Patent Trial and Appeal Board

Led the appellant’s briefing and argued at the oral hearing in appeal of an IPR final written decision involving a patent related to logistics systems.

No. 18-2373 (Fed. Cir.).

Appellate Litigation – Appeal from the Patent Trial and Appeal Board

Wrote all of the appellant’s briefing and argued at the oral hearing in appeal of an IPR final written decision involving a patent related to charcoal briquets.

No. 18-1957 (Fed. Cir.).

Ex Parte Reexaminations

Ex Parte Reexaminations – Counsel for Requester

Prepared and filed two ex parte reexamination requests against a patent related to expert systems.

Ex Parte Reexaminations – Counsel for Patent Owner

Represented the patent owner in two ex parte reexaminations involving a patent related to nucleic acid diagnostics.

Ex Parte Reexamination – Counsel for Patent Owner

Represented the patent owner in an ex parte reexamination involving a patent related to logistics systems.

Administrative Comments

Comments on Northern New England Community Outreach Office

Prepared McNish PLLC’s comments advocating Brunswick, Maine for the USPTO’s forthcoming Northern New England Community Outreach Office in response to the USPTO’s Request for Comments on Southeast Regional Office and Community Outreach Office Locations.

Comments on ANPRM for Changes Under Consideration to Discretionary Institution Practices, Petition Word-Count Limits, and Settlement Practices for America Invents Act Trial Proceedings Before the Patent Trial and Appeal Board

Contributed to the PTAB Bar Association’s comments responding to the USPTO’s Advanced Notice of Proposed Rulemaking for Changes Under Consideration to Discretionary Institution Practices, Petition Word-Count Limits, and Settlement Practices for America Invents Act Trial Proceedings Before the Patent Trial and Appeal Board.

Comments on Request for Comments on USPTO Initiatives to Ensure the Robustness and Reliability of Patent Rights

Contributed to the PTAB Bar Association’s comments responding to the USPTO’s Request for Comments on USPTO Initiatives to Ensure the Robustness and Reliability of Patent Rights.

Individual Comments on Request for Comments on USPTO Initiatives to Ensure the Robustness and Reliability of Patent Rights

Contributed to comments on behalf of certain PTAB practitioners responding to the USPTO’s Request for Comments on USPTO Initiatives to Ensure the Robustness and Reliability of Patent Rights.

Amicus Briefing

Supreme Court Amicus Briefing on Retroactivity

Contributed to Supreme Court amicus brief on retroactively applying the America Invents Act’s inter partes review statutes.

Federal Circuit Amicus Brief on Damages

Prepared Federal Circuit amicus brief on patent damages and apportionment.

Prior results do not guarantee a similar outcome. Includes experience obtained at previous law firms.