Patent Appeals

Overview

Successful patent appeals filed in the United States Court of Appeals for the Federal Circuit require special skills and experience. Appellate briefs, the most important part of the appeal process, require persuasive and concise writing, the ability to explain complex technology and legal issues in the limited space that the Federal Circuit Rules permit, proper structure in compliance with the rules, and the judgment necessary to select a small number of viable issues to address without losing credibility by arguing weak issues. Thorough preparation and planning for oral argument enhance the chances of success that excellent briefing provides.

BakerHostetler’s Appellate teams have successfully represented both appellants and appellees from all industries in numerous Federal Circuit appeals (and in appeals to other regional circuits before the Federal Circuit’s creation) from tribunals such as:

  • District Courts
  • United States Patent and Trademark Office Patent Trial and Appeal Board (PTAB)
  • International Trade Commission

We have represented parties in appeals from not just rulings in BakerHostetler’s own cases, but also in cases where a party that has lost seeks appellate counsel to correct a lower tribunal’s ruling. In some cases, even the winning party has retained one of our appellate specialists to preserve the victory on appeal. The best practice is to involve an appellate specialist during proceedings in the lower tribunal, especially during post-trial briefing (if not earlier), to ensure preservation of issues for appeal. Assisting our appellate specialists, who themselves have technical backgrounds, we have one of the country’s largest collections of intellectual property lawyers with experience in virtually all technologies. Our lawyers have also represented parties and amici curiae at the certiorari and merits stages before the United States Supreme Court. 

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Appellate Counseling

In addition to actually presenting an appeal, our appellate specialists can review the important parts of the record and advise regarding the chances of success on appeal and the strategy that should be pursued. That advice could include the issues and arguments that should and should not be raised, or for example in appeals from the PTAB, ways to improve the party’s position by forgoing an appeal and instead filing a continuing or reissue application to eliminate problems with the party’s existing position. As in other areas of our intellectual property practice, we pride ourselves on providing the best value and quality of service in our appellate practice.

Our patent litigators are leading practitioners with decades of experience litigating patent disputes covering a myriad of technologies, including:

  • Life Sciences
  • Industrial Chemicals
  • Pharmaceuticals
  • Ceramics
  • Small Molecules
  • Polymers
  • Biotechnology
  • Nanotechnology
  • Computer Hardware and Software
  • Computer Networks
  • Telecommunications Devices
  • Printing
  • Mechanical Devices
  • Computer Forensics
  • Food Containers
  • Semiconductors
  • Alignment Systems
  • DVDs
  • Aircraft Components
  • Financial Services Products
  • Internet-related Business Methods
  • Computer Controls
  • Medical Devices

Select Experience

  • Represented Microsoft Corp. at the Federal Circuit and Supreme Court, establishing new law regarding section 271(f) as applied to software, and obtaining reversal of district court judgment of infringement liability. AT&T Corp. v. Microsoft Corp.
  • Participated in drafting amicus brief before the United States Supreme Court in support of respondents. Halo Electronics, Inc. v. Pulse Electronics, Inc. and Stryker Corp. v. Zimmer, Inc.
  • Represented patent owner in an appeal from a decision by the PTAB in an IPR. The Federal Circuit reversed the invalidity ruling of a key claim. Pride Mobility Products Corp. v. Permobil, Inc.
  • Represented client in Federal Circuit appeal from an APA action relating to several inter partes reexaminations, and obtained ruling establishing that the Patent Office’s subpoena power is accessible in proceedings where the Patent Office’s regulations authorize parties to take depositions. Abbott Labs. v. Cordis Corp.
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Experience

  • Represented Microsoft Corp. at the Federal Circuit and Supreme Court, establishing new law regarding section 271(f) as applied to software, and obtaining reversal of district court judgment of infringement liability. AT&T Corp. v. Microsoft Corp.
  • Participated in drafting amicus brief before the United States Supreme Court in support of respondents. Halo Electronics, Inc. v. Pulse Electronics, Inc. and Stryker Corp. v. Zimmer, Inc.
  • Represented patent owner in an appeal from a decision by the PTAB in an IPR. The Federal Circuit reversed the invalidity ruling of a key claim. Pride Mobility Products Corp. v. Permobil, Inc.
  • Represented client in Federal Circuit appeal from an APA action relating to several inter partes reexaminations, and obtained ruling establishing that the Patent Office’s subpoena power is accessible in proceedings where the Patent Office’s regulations authorize parties to take depositions. Abbott Labs. v. Cordis Corp.
  • Represented client in appeal to Federal Circuit from district court, and obtained reversal of district court’s grant of summary judgment on written description and anticipation. Crown Packaging Tech. v. Ball Metal Bev. Container Corp.
  • Represented client in Federal Circuit appeal of willful infringement ruling. The Federal Circuit reversed the willful infringement ruling. Innovention Toys, LLC v. MGA Entertainment, Inc.
  • Represented patent owner who was defending a $45 million jury verdict on appeal to the Federal Circuit and obtained affirmance. TruePosition Inc. v. Andrew Corp.
  • Represented client in appeal to Federal Circuit from district court, and obtained reversal of grant of summary judgment of noninfringement. Crown Packaging Tech. v. Rexam Bev. Can Co.
  • Represented Pharmaceutical Research and Manufacturers of America as amicus curiae before the United States Supreme Court. KSR International Co. v. Teleflex & Technology Holding Co. 
  • Represented patent owners in a case concerning the antidepressant Prozac®. The Federal Circuit upheld the client’s basic patent and held an adversary’s later patent invalid for double patenting. Eli Lilly & Co. v. Barr Laboratories, Inc. (S.D. Ind. and Fed. Cir.).

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