PTAB Trials

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The most comprehensive patent reform in over sixty years was brought about by the Leahy-Smith America Invents Act (“AIA”), which includes a complete restructuring of the post-grant patent proceedings at the U.S. Patent & Trademark Office (“USPTO”).

Included in these reforms are the new post-grant procedures intended to provide a faster, more affordable alternative to traditional patent litigation in federal district court. Not only do these procedures have statutory time limits for completion, usually within one year of institution of a proceeding, but they impose significant restrictions on the breadth of discovery available to parties in order to facilitate compliance with the statutory time limits. Given the expedited timelines and significant differences from traditional patent litigation, to take advantage of these new processes for challenging patents, practitioners must possess a thorough understanding of the complexity of the AIA as well as how the Patent Trial and Appeal Board (“PTAB”) the entity charged with handling these proceedings, is interpreting the Act.

Patent Prosecution Experience:

Our patent lawyers’ knowledge of patent prosecution, familiarity with the operations of the USPTO, and our courtroom skills differentiate us from competitors. Already Baker Botts lawyers have been engaged in more than 125 post-grant review proceedings before the PTAB. This combination of skills and experience makes our lawyers the natural choice for clients looking to pursue this new patent prosecution avenue.

Baker Botts maintains a team of accomplished and experienced professionals dedicated to understanding all aspects of the post-grant proceedings and are constantly monitoring all aspects of the AIA, including the various orders and decisions being issued by the PTAB on a near-daily basis. This team issues its Post-Grant Report on a regular basis commenting on key aspects of the AIA and provides context to important PTAB decisions.

In addition, Baker Botts IP lawyers are already recognized as skilled practitioners in the field. We were involved in the rulemaking regarding the creation of the PTAB following passage of the AIA, including post-grant review, inter partes review, and covered business method review. For example, an Intellectual Property partner in the Palo Alto office testified before the House Judiciary Committee in May 2012 during its hearing on the implementation of the AIA regarding the importance of these new procedures and the associated PTO rulemaking that implemented them.

Baker Botts consistently ranks highly in the top industry surveys of both IP litigation and patent prosecution.

"Terrific patent litigators” and are “a very good team - excellent trial lawyers.”

Chambers USA 2014

This is why companies big and small turn to Baker Botts for their complex, high level intellectual property needs.

Final Rules:
On August 14, 2012, the USPTO published final rules in the Federal Register to implement various Sections of the AIA, which became effective on September 16, 2012. 

These rules address the following:

PTAB Trials Committee

Luke Pedersen
+1.202.639.7730
luke.pedersen@bakerbotts.com

Paula Heyman
+1.512.322.2555
paula.heyman@bakerbotts.com

Eliot Williams
+1.650.739.7511
eliot.williams@bakerbotts.com

Steve Lendaris
+1.212.408.2535
steven.lendaris@bakerbotts.com

Chad Walters
+1.214.953.6511
chad.walters@bakerbotts.com

Liz Flannery
+1.713.229.2104
liz.flannery@bakerbotts.com

Brian Oaks
+1.512.322.5470
brian.oaks@bakerbotts.com

 

Featured Experience

Post-Grant Proceedings Experience

Unlike most general practice law firms, Baker Botts offers a full-service IP Practice. Our knowledge of patent prosecution, familiarity with the operations of the U.S. Patent & Trademark Office ("USPTO"), and our patent litigation experience and courtroom skills differentiate us from our competitors. This combination of skills makes Baker Botts a natural choice for our clients who are interested in taking advantage of post-grant proceedings at the USPTO. Below are representative examples of our experience:

Inter Partes Review

  • Global networking and communication technology services provider (IPR2014-00914) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 8,464,299 titled "Resource Conservation for Packet Television Services."
  • Computer peripheral equipment manufacturer (IPR2014-00780) − Representing Petitioner, who request an inter partesreview of certain claims of U.S. Patent No. 6,603,835 titled "System for Text Assisted Telephony."
  • Global transaction processing and consulting services provider (IPR2014-00543) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 8,036,988 titled "System and Method for Performing Secure Credit Card Transactions."
  • Global transaction processing and consulting services provider (IPR2014-00544) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 7,840,486 titled "System and Method for Performing Secure Credit Card Purchases."
  • Scientific research & development service provider(IPR2014-00512) - Representing Petitioner, who requests aninter partes review of certain claims of U.S. Patent No. 8,673,550 titled "MSP Nanopores and Related Methods."
  • Scientific research & development service provider(IPR2014-00513) − Representing Petitioner, who requests aninter partes review of certain claims of U.S. Patent No. 8,673,550 titled "MSP Nanopores and Related Methods." This is a companion case to IPR2014-00512.
  • Computer peripheral equipment manufacturer (IPR2013-00542) − Representing Petitioner, who requests an inter partesreview of certain claims of U.S. Patent No. 7,319,740 titled "System for Text Assisted Telephony."
  • Computer peripheral equipment manufacturer (IPR2013-00540) − Representing Petitioner, who requests an inter partesreview of certain claims of U.S. Patent No. 6,233,314 titled "Relay for Personal Interpreter."
  • Computer peripheral equipment manufacturer (IPR2013-00543) − Representing Petitioner, who requests an inter partesreview of certain claims of U.S. Patent No. 7,555,104 titled "Relay for Personal Interpreter."
  • Computer peripheral equipment manufacturer (IPR2013-00541) − Representing Petitioner, who requests an inter partesreview of certain claims of U.S. Patent No. 5,909,482 titled "Relay for Personal Interpreter."
  • Computer peripheral equipment manufacturer (IPR2013-00550) − Representing Petitioner, who requests an inter partesreview of certain claims of U.S. Patent No. 7,003,082 titled "System for Text Assisted Telephony."
  • Computer peripheral equipment manufacturer (IPR2013-00544) − Representing Petitioner, who requests an inter partesreview of certain claims of U.S. Patent No. 8,213,578 titled "System for Text Assisted Telephony."
  • Computer peripheral equipment manufacturer (IPR2013-00549) − Representing Petitioner, who requests an inter partesreview of certain claims of U.S. Patent No. 6,603,835 titled "System for Text Assisted Telephony."
  • Computer peripheral equipment manufacturer (IPR2013-00545) − Representing Petitioner, who requests an inter partesreview of certain claims of U.S. Patent No. 6,594,346 titled "Relay for Personal Interpreter."
  • Electronic computer manufacturer (IPR2013-00440) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 6,948,021 titled "Cluster component network appliance system and method for enhancing fault tolerance and hot-swapping."
  • Electronic computer manufacturer (IPR2013-00443) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 6,948,021 titled "Cluster component network appliance system and method for enhancing fault tolerance and hot-swapping."
  • Pharmaceutical preparation manufacturer (IPR2013-00365) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 6,747,002 titled "Pharmacokinetic and Pharmacodynamic Modeling of Erythropoietin Administration."
  • Computer peripheral equipment manufacturer (IPR2013-00288) − Representing Patent Owner in an inter partes review of certain claims of U.S. Patent No. 8,379,801 titled "Methods and Systems Related to Text Caption Error Correction."
  • International semiconductor manufacturer (IPR2013-00236) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 6,791,298 titled "Monolithic Battery Charging Device."
  • International semiconductor manufacturer (IPR2013-00190) − Represented Petitioner, who requested an inter partes review of certain claims of U.S. Patent No. 7,167,731 titled "Emoticon Input Method and Apparatus." Shortly thereafter in response to the filing, the Patent Holder agreed to dismiss the district court complaint, and our client, the Petitioner, agreed to dismiss the inter partes review. This case is an example of defensive use of one of the new post-grant reexamination procedures available under the AIA, which led to a more efficient resolution of the case that was brought by a non-practicing entity for infringement of a patent of questionable validity.
  • Household appliance manufacturer (IPR2014-01257) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 7,311,037 titled "Disposable Brew Basket for Electric Coffee Maker."
  • Household appliance manufacturer (IPR2014-01260) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 7,258,884 titled "Method Employing a Disposable Brew Basket for an Electric Coffee Maker."
  • Household appliance manufacturer (IPR2014-01258) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 7,770,512 titled "Disposable Brew Basket for Electric Coffee Maker."
  • Global networking and communication technology services provider (IPR2014-01194) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 6,233,245 titled "Method and Apparatus for Management of Bandwidth in a Data Communication Network."
  • Global networking and communication technology services provider (IPR2014-01193) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 6,684,241 titled "Apparatus and Method of Configuring a Network Device."
  • Global networking and communication technology services provider (IPR2014-01192) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 6,069,895 titled "Distributed Route Server."
  • Global networking and communication technology services provider (IPR2014-01167) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 6,778,653 titled "Storing Information about a Telephony Session."
  • Computer peripheral equipment manufacturer (IPR2014-01132) − Representing Petitioner, who requests an inter partesreview of certain claims of U.S. Patent No. 7,215,962 titled "Method for an Intersystem Connection Handover."
  • Computer peripheral equipment manufacturer (IPR2014-01136) − Representing Petitioner, who requests an inter partesreview of certain claims of U.S. Patent No. 8,055,820 titled "Apparatus, System, and Method for Designating a Buffer Status Reporting Format Based on Detected Pre-Selected Buffer Conditions."
  • Computer peripheral equipment manufacturer (IPR2014-01134) − Representing Petitioner, who requests an inter partesreview of certain claims of U.S. Patent No. 7,941,174 titled "Method for Multicode Transmission by a Subscriber Station."
  • Computer peripheral equipment manufacturer (IPR2014-01131) − Representing Petitioner, who requests an inter partesreview of certain claims of U.S. Patent No. 6,819,923 titled "Method for Communication of Neighbor Cell Information."
  • Computer hardware manufacturer (IPR2014-01071) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 7,811,421 titled "High Deposition Rate Sputtering."
  • Computer hardware manufacturer (IPR2014-01069) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 7,811,421 titled "High Deposition Rate Sputtering."
  • Computer hardware manufacturer (IPR2014-01037) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 7,811,421 titled "High Deposition Rate Sputtering."
  • Computer hardware manufacturer (IPR2014-01075) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 6,853,142 titled "Methods and Apparatus for Generating High-Density Plasma."
  • Computer hardware manufacturer (IPR2014-01065) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 7,604,716 titled "Methods and Apparatus for Generating High-Density Plasma."
  • Computer hardware manufacturer (IPR2014-01067) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 7,604,716 titled "Methods and Apparatus for Generating High-Density Plasma."
  • Computer hardware manufacturer (IPR2014-01074) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 6,805,779 titled "Plasma Generation Using Multi-Step Ionization."
  • Computer hardware manufacturer (IPR2014-01063) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 6,853,142 titled "Methods and Apparatus for Generating High-Density Plasma."
  • Computer hardware manufacturer (IPR2014-01066) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 6,806,652 titled "High-Density Plasma Source Using Excited Atoms."
  • Computer hardware manufacturer (IPR2014-01061) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 7,808,184 titled "Methods and Apparatus for Generating Strongly-Ionized Plasmas with Ionizational Instabilities."
  • Computer hardware manufacturer (IPR2014-01072) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 6,805,779 titled "Plasma Generation Using Multi-Step Ionization."
  • Computer hardware manufacturer (IPR2014-01070) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 6,805,779 titled "Plasma Generation Using Multi-Step Ionization."
  • Computer hardware manufacturer (IPR2014-01042) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 7,808,184 titled "Methods and Apparatus for Generating Strongly-Ionized Plasmas with Ionizational Instabilities."
  • Computer hardware manufacturer (IPR2014-01047) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 7,147,759 titled "High-Power Pulsed Magnetron Sputtering."
  • Computer hardware manufacturer (IPR2014-01057) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 6,853,142 titled "Methods and Apparatus for Generating High-Density Plasma."
  • Computer hardware manufacturer (IPR2014-01046) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 6,853,142 titled "Methods and Apparatus for Generating High-Density Plasma."
  • Computer hardware manufacturer (IPR2014-01059) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 7,147,759 titled "High-Power Pulsed Magnetron Sputtering."
  • Computer peripheral equipment manufacturer (IPR2014-01318) − Representing Petitioner, who requests an inter partesreview of certain claims of U.S. Patent No. 6,810,019 titled "Reducing Interference in Inter-Frequency Measurement."
  • Computer peripheral equipment manufacturer (IPR2014-01287) − Representing Petitioner, who request an inter partesreview of certain claims of U.S. Patent No. 7,660,398 titled "Captioned Telephone Service."
  • Computer peripheral equipment manufacturer (IPR2014-01227) − Representing Patent Owner in an inter partes review of certain claims of U.S. Patent No. 8,478,700 titled "Opportunity Identification and Forecasting for Search Engine Optimization."
  • Wireless communications equipment manufacturing(IPR2014-01406) – Representing Petitioner, who requests aninter partes review of certain claims of U.S. Patent No. 6,947,748 titled "OFDMA with Adaptive Subcarrier-Cluster Configuration and Selective Loading."
  • Wireless communications equipment manufacturing(IPR2014-01408) − Representing Petitioner, who requests aninter partes review of certain claims of U.S. Patent No. 7,454,212 titled "OFDMA with Adaptive Subcarrier-Cluster Configuration and Selective Loading."
  • Internet content provider (IPR2014-01455) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 8,468,099 titled "Digital Entertainment Service Platform."
  • Internet content provider (IPR2014-01456) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 8,479,246 titled "System and Method for Interactive Video Content Programming."
  • Farm product raw material merchant wholesalers (IPR2014-01491) - Representing Petitioner, who requests an inter partesreview of certain claims of U.S. Patent No. 7,090,873 titled "Hop Acids as a Replacement for Antibiotics in Animal Feed."
  • Farm product raw material merchant wholesalers (IPR2014-01490) - Representing Petitioner, who requests an inter partesreview of certain claims of U.S. Patent No. 8,197,863 titled "Hop Acids as a Replacement for Antibiotics in Animal Feed."
  • Wired telecommunications carrier (IPR2015-00151) - Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 6,259,381 titled "Method of Triggering an Event."
  • Satellite system operator (IPR2015-00081) - Representing Petitioners, who request an inter partes review of certain claims of U.S. Patent No. 8,284,833 titled "Serial Concatenation of Interleaved Convolutional Codes Forming Turbo-like Codes."
  • Satellite system operator (IPR2015-00060) - Representing Petitioners, who request an inter partes review of certain claims of U.S. Patent No. 7,421,032 titled "Serial Concatenation of Interleaved Convolutional Codes Forming Turbo-like Codes."
  • Satellite system operator (IPR2015-00068) - Representing Petitioners, who request an inter partes review of certain claims of U.S. Patent No. 7,116,710 titled "Serial Concatenation of Interleaved Convolutional Codes Forming Turbo-like Codes."
  • Satellite system operator (IPR2015-00067) - Representing Petitioners, who request an inter partes review of certain claims of U.S. Patent No. 7,116,710 titled "Serial Concatenation of Interleaved Convolutional Codes Forming Turbo-like Codes."
  • Satellite system operator (IPR2015-00059) - Representing Petitioners, who request an inter partes review of certain claims of U.S. Patent No. 7,916,781 titled "Serial Concatenation of Interleaved Convolutional Codes Forming Turbo-like Codes."
  • Scientific research & development service provider(IPR2015-00057) - Representing Petitioner, who requests aninter partes review of certain claims of U.S. Patent No. 8,673,550 titled "MSP Nanopores and Related Methods."
  • Computer programming services provider (IPR2014-01517) - Representing Patent Owner in a PTAB matter. Petitioner Searchmetrics, Inc., has requested an inter partes review of certain claims of U.S. Patent No. 8,478,746 titled "Operationalizing Search Engine Optimization."
  • Computer programming services provider (IPR2015-00257) - Representing Patent Owner in a PTAB matter. Petitioner Searchmetrics, Inc., has requested an inter partes review of certain claims of U.S. Patent No. 8,135,706 titled "Operationalizing Search Engine Optimization."
  • Direct broadcast services provider (IPR2015-00499) - Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 5,930,444 titled “Simultaneous Recording and Playback Apparatus.”
  • Direct broadcast services provider (IPR2015-00627) - Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 7,191,233 titled “System for Automated, Mid-Session, User-Directed, Device-to-Device Session Transfer.”
  • Internet content provider (IPR2015-00625) − Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 7,047,482 titled "Automatic Directory Supplementation."
  • Computer peripheral equipment manufacturer (IPR2015-00636) − Representing Petitioners, who request an inter partesreview of certain claims of U.S. Patent No. 8,917,822 titled "System for Text Assisted Telephony."
  • Computer peripheral equipment manufacturer (IPR2015-00637) – Representing Petitioners, who request an inter partesreview of certain claims of U.S. Patent No. 8,908,838 titled "System for Text Assisted Telephony."
  • Satellite system operator (IPR2015-00061) - Representing Petitioner, who requests an inter partes review of certain claims of U.S. Patent No. 8,284,833 titled “Serial Concatenation of Interleaved Convolutional Codes Forming Turbo-like Codes.”
  • Covered Business Method Review Experience
  • Internet content provider (CMB2014-00052) − Representing Petitioner, who requests a covered business method patent review of certain claims of U.S. Patent No. 8,479,246 titled "System and Method for Interactive Video Content Programming."
  • Internet content provider (CBM2014-00053) − Representing Petitioner, who requests a covered business method patent review of certain claims of U.S. Patent No. 8,468,099 titled "Digital Entertainment Service Platform."
  • Internet service provider (CBM2014-00014) − Representing Petitioner, who requests a covered business method patent review of certain claims of U.S. Patent No. 8,146,077 titled "Information Management and Synchronous Communications System with Menu Generation, and Handwriting and Voice Modification of Orders."
  • Internet service provider (CBM2014-00016) − Representing Petitioner, who requests a covered business method patent review of certain claims of U.S. Patent No. 6,871,325 titled "Information Management and Synchronous Communications System with Menu Generation."
  • Internet service provider (CBM2014-00015) − Representing Petitioner, who requests a covered business method patent review of certain claims of U.S. Patent No. 6,384,850 titled "Information Management and Synchronous Communications System with Menu Generation."
  • Global transaction processing and consulting services provider (CBM2013-0057) − Representing Petitioner, who requests a covered business method patent review of certain claims of U.S. Patent No. 8,036,988 titled "System and Method for Performing Secure Credit Card Transactions."
  • Global transaction processing and consulting services provider (CBM2013-00058) − Representing Petitioner, who requests a covered business method patent review of certain claims of U.S. Patent No. 7,840,486 titled "System and Method for Performing Secure Credit Card Purchases."
  • Global transaction processing and consulting services provider (CBM2015-00013) - Representing Petitioner, who requests a covered business method patent review of certain claims of U.S. Patent No. 5,793,302 titled "Method for Securing Information Relevant to a Transaction."
  • Global transaction processing and consulting services provider (CBM2015-00044) - Representing Petitioner, who requests a covered business method patent review of certain claims of U.S. Patent No. 5,793,302 titled “Method for Securing Information Relevant to a Transaction.”