Skip to Main Content

Patent litigation has shifted to the U.S. Patent and Trademark Office (USPTO) through inter partes review (IPR) and post grant review (PGR) proceedings as well as derivation proceedings. These adversarial procedures for challenging the validity of a patent differ significantly from the prior reexamination proceedings and include characteristics of a district court bench trial on the issue of patent validity, albeit before the USPTO. These proceedings feature discovery between the parties and, in many cases, a “trial” before the USPTO Patent Trial and Appeal Board (PTAB).

  • BakerHostetler defeated a series of IPRs brought against two key semiconductor manufacturing patents owned by Reno Technologies Inc. We persuaded the PTAB to deny institution on a first IPR petition, and then defeated the other IPR petition after a PTAB trial. The PTAB trial included numerous depositions, motions and briefings.
  • BakerHostetler convinced the PTAB to deny institution of two IPR petitions respectively filed against two electrocardiograph connector patents owned by Cardinal Health. Ultimately, the PTAB found Cardinal Health’s expert witness testimony to be more credible than that of the petitioners’ expert. This was part of a patent litigation brought by BakerHostetler on behalf of Cardinal Health, asserting these same patents against competitors.
  • BakerHostetler convinced the PTAB to invalidate a competitor’s patent related to small molecule compounds in a PGR brought on behalf of client Syngenta. We convinced the PTAB that the challenged patent lacked sufficient enablement and written description.
  • BakerHostetler obtained two wins for Crown Packaging Technology, first by successfully arguing that a first IPR should not be instituted against a Crown patent and then by defeating another instituted IPR after trial in the PTAB. In the instituted IPR, our team convinced the PTAB that compelling evidence of secondary considerations involving commercial success and industry accolades weighed in favor of validity over an obviousness challenge brought by the petitioner.
  • In 2019, BakerHostetler won the first-ever derivation proceeding instituted by the PTAB. In this PTAB trial, witness testimony was submitted by depositions and exhibits along with extensive briefing on the facts and the law. Following oral argument, the PTAB issued a 67-page opinion confirming all claims of the patent issued to BakerHostetler client GED Integrated Solutions Inc.
  • BakerHostetler attorneys represented patent owner Trading Technologies in more than a dozen CBM reviews, including numerous appeals of the same to the Federal Circuit. In early 2019, the Federal Circuit found in favor of BakerHostetler’s client on the first four appeals, holding that patented technologies are “for technological inventions” under the AIA and are therefore not subject to CBM review. The court vacated the CBMs at issue in the first four appeals.
  • When Microsoft was accused in litigation of infringing eight patents with two of its well-known product lines, it turned to BakerHostetler. Our team successfully sought institution of IPRs of all the patents and invalidated each of the 91 claims asserted in the underlying litigation.
  • BakerHostetler successfully represented Henny Penny with one of the first cases involving the Pilot Program for Amending Claims during an IPR. The PTAB found all the original claims involving deep fryer technologies unpatentable and denied the patent owner’s motion to amend.
  • BakerHostetler successfully defeated all critical patent claims related to video streaming technologies in an IPR trial brought on behalf of client Vimeo Inc.

Featured Insights