PTAB Trials

By combining the strengths of leading practices in USPTO post-grant proceedings with our long history of handling ex parte and inter partes reexaminations, patent litigation, and prosecution with deep technical breadth, our PTAB Trials attorneys can help you navigate PTAB trial proceedings, including those involving parallel litigation in district court.

Foley’s PTAB Trials attorneys have: 

  • Handled more than 180 post-grant proceedings since the implementation of Leahy-Smith America Invents Act (AIA) in 2012, including the precedent-setting Idle Free IPR and one of the earliest AIA post-grant proceedings to be decided by the Federal Circuit 
  • Represented clients in high-stakes cases, including the landmark Oil States Energy Services, LLC v. Greene’s Energy Group where the Foley team prevailed on behalf of the client Greene’s Energy at the Supreme Court of the United States
  • Prevailed on more than 90 percent of inter partes review (IPR) cases for petitioners that have been instituted and have received a final determination 
  • Achieved rare wins for patent owners, including successful defense of the first IPRs involving Orange Book-listed pharmaceutical patents 
  • Deep knowledge of underlying technologies across tech centers — ranging from vehicle air conditioning systems, computer systems, and specialized chemicals to biologics, DNA sequencing and pharmaceutical products

In addition, they: 

  • Offer seamless collaboration between experienced patent attorneys and patent litigators 
  • Offer clients a high degree of flexibility and efficiency for USPTO post-grant proceedings where IPR/CBM/PGR is the only proceeding or where there is parallel litigation;
  • Provide practical knowledge on the ins and outs of USPTO post-grant proceedings to enable clients to avoid costly mistakes 

Representative Matters

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Represented the senior party patentee, Idemitsu Kosan Co., Ltd., in two interferences before the USPTO. Each interference was based on a different application owned by a competitor. The USPTO ruled in favor of Idemitsu Kosan in both interferences.
Represented the petitioner, Idle Free, in an inter partes review involving a patent directed to an air conditioning system for vehicles, such as long-haul trucks. Idle Free’s petition was granted by the PTAB after the Board made a preliminary finding that all of the claims of the patent were unpatentable. Following the PTAB’s decision to institute the inter partes review, the Northern District of Illinois granted Idle Free’s motion to stay the parallel litigation. Following the Board’s decision to institute trial on all claims of the patent, the patent owner conceded that the claims being asserted in the district court were invalid. Thus, the inter partes review was limited to the remaining claims of the patent. The PTAB then issued a decision regarding the inter partes review stating that all the claims were canceled and the motion to amend was denied.
Represented Groupon, Inc. in patent infringement case filed by Blue Calypso in E.D. Tex. involving five business method patents related to targeting advertising and providing incentives to users in a network. On behalf of Groupon, filed five related covered business method (CBM) proceedings at the PTAB with respect to the asserted patents and all five petitions were granted by the PTAB wherein the PTAB agreed with Groupon that most of the challenged claims (including all of the asserted claims) were likely to be deemed invalid in view of the prior art and arguments raised. The CBM proceedings are pending, and the district court case has been stayed pending the PTAB decision.

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