PTAB Litigation

McNish PLLC is dedicated to litigation before the Patent Trial and Appeal Board, including inter partes reviews (IPRs) and post-grant reviews (PGRs). Representing petitioners and patent owners ranging from sole inventors to Fortune 500 companies across a variety of industries, Kevin McNish has first-chair experience spanning more than 90 IPRs and other PTAB proceedings. In those proceedings, he has most frequently represented clients from start to finish: drafting petitions and responsive briefing; taking and defending expert depositions; and arguing at the oral hearing.

That dedication makes a difference. By focusing his practice on PTAB matters, Kevin has made a career of taking on larger firms—and winning. But don’t just take his word for it: the analytics service Patexia has consistently ranked Kevin as one of the most active and best performing PTAB attorneys in the country. His experience with and command of unorthodox techniques for patent owners contributed to several of the wins underlying that recognition.

Representative Work*

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).

*Includes experience obtained at previous law firms.