News Releases

Baker Botts Garners Major Client Victories Before the Patent Trial and Appeal Board ("PTAB")

News Release

HOUSTON, September 8, 2015 - Baker Botts L.L.P., a leading international law firm, announced today that it has successfully represented two of its clients in major victories before the Patent Trial and Appeal Board (“PTAB”).

“Baker Botts has a well-earned reputation as a leader in patent litigation and prosecution. We have applied those skills and experiences to represent scores of clients on their most important matters before the Patent Trial and Appeal Board,” said Bart Showalter, Chair of the firm’s Intellectual Property Practice.

“These two client victories really speak to the leadership, expertise and experience that our 150+ technology lawyers have in the patent arena. These victories continue to demonstrate Baker Botts’ commitment to being a world-class technology law firm,” added Mr. Showalter.

John D’Agostino v. MasterCard International Incorporated

In this case, Baker Botts lawyers acted for long-standing client MasterCard International Incorporated (“MasterCard”) before the PTAB and the United States District Court for the District of Delaware.

The plaintiff, John D’Agostino, sued MasterCard in Delaware, alleging that MasterCard (as well as Citigroup and Discover) infringed upon two United States patents related to systems and methods for performing secure credit card transactions. More specifically, to credit card transactions with various types of controls on use (e.g., restricting use to certain stores or types of stores).

In defending MasterCard, the firm took advantage of the then recently-enacted America Invents Act ("AIA") by quickly filing petitions challenging both of the asserted patents before the PTAB, and by obtaining a stay of the district court litigation pending PTAB review.

The PTAB granted both petitions instituting trial last September, heard oral argument on May 12, 1015, and then, on August 31, 2015, rendered its final decision, concluding that all sixty-eight claims from both patents were unpatentable.

“We are very pleased that AIA really worked for its intended purpose, and that we were able to have these patents invalidated, which is no easy task," said Rob Scheinfeld, lead counsel for MasterCard and Partner-in-Charge of the firm's New York office.

"We are especially pleased for MasterCard, whom we strategized very closely with, to have this dispute, which dates back many years, finally resolved completely in their favor," added Mr. Scheinfeld.

Baker Botts counsel to MasterCard included: Rob Scheinfeld (Partner, New York); Eliot Williams (Partner, Palo Alto); and Henry Chen (Senior Associate, New York).

ART+COM Innovation Pool v. Google 

The firm successfully represented its client, ART+COM Innovation Pool (“ACI”) in a patent dispute with Google before the PTAB.

ACI's patent addresses technology that they developed in the mid '90s for use by its client Deutsche Telecom in demonstrating the potential future of broadband networks. That technology was the forerunner of what today has become Google Earth.

“Our client, ART+COM Innovation Pool, is pleased with this result and looks forward to presenting their claims at trial in May 2016 before Judge Andrews in Delaware Federal Court,” said Scott Partridge, IP Partner with Baker Botts and the lead lawyer for ACI.

“This action by the Patent Trial and Appeal Board, which is thorough and well-reasoned, should bring an end to Google’s efforts in delaying the trial of this case,” added Mr. Partridge.

Baker Botts lawyers representing ACI included: Scott Partridge (Partner, Houston); Mike Hawes (Partner, Houston); Lisa Kelly (Partner, Houston); Gene Spears (Special Counsel, Houston); Ryan Pinckney (Senior Associate, Houston); Natalie Alfaro (Associate, Houston); Lisa Thomas (Associate, Houston) and Mike Silliman (Associate, Houston).


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About Baker Botts LLP

Baker Botts is an international law firm of approximately 725 lawyers practicing throughout a network of 14 offices around the globe. Based on our experience and knowledge of our clients’ industries, we are recognized as a leading firm in the energy and technology sectors. Throughout our 177-year history, we have provided creative and effective legal solutions for our clients while demonstrating an unrelenting commitment to excellence. For more information, please visit

BakerBotts.com.

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