Working closely with our IP Litigation Practice, our Patent Office Trials attorneys have successfully assisted clients in defending patents in post-grant proceedings without amending the claims. This has resulted in invalidating competitors’ patents asserted in litigation, avoiding preliminary injunctions based on granted post-grant proceedings, and securing or preventing stays of litigation.
Foley represented Greene’s Energy Group in the landmark IPR case that was appealed to the Supreme Court where the constitutionality of IPR was at stake. On April 24th, 2018, the Court ruled in favor of Foley & Lardner and its client, affirming the decision of the Federal Circuit, where the Foley team prevailed on behalf of the client. The impacts of the decision would have been far reaching for the intellectual property rights of all patent holders across industries.
Foley represented petitioners Emerson and Micro Motion, filing nine IPRs encompassing over 150 claims involving digital signal processing for industrial flowmeters. The PTAB instituted each of the IPRs on all consequential claims. The institution of the IPRs played a large role in the successful settlement of the litigation between the parties in multiple US and foreign jurisdictions.
Daiichi Sankyo filed an IPR petition (IPR2015-00291) which was one of the first bio pharma IPRs to rely upon lack of enablement and lack of written description as a basis for applying intervening prior art between priority dates. PTAB instituted the IPR on all challenged claims and issued its final written decision on June 14, 2016, invalidating all challenged claims. In particular, the PTAB found that the Petitioner had provided sufficient evidence to establish lack of priority so that the claims were anticipated and that the Patent Owner did not present sufficient evidence to antedate the prior art.
Successfully defended Supernus as the owner of three pharmaceutical patents in three different inter partes reviews filed by a generic company, where there was parallel Hatch-Waxman patent litigation involving the same patents. The product covered by the three patents generated more than $1 billion in revenue. On December 9, 2014, the PTAB issued a final decision in favor of the patent owner. This was the first ANDA-related case to reach a final decision at the PTAB.
Represented Johnson Controls (“JCI”) in patent litigation brought by Wildcat over a patent relating to an assembly system for components, and prevailed for JCI in inter partes review proceedings brought to challenge the patents. The PTAB decided that all pertinent claims were invalid.
Foley secured complete victories on appeal in two cases at the Federal Circuit on behalf of Vibrant Media, Inc. The dispute concerned two patents on computer systems asserted in an infringement suit that General Electric filed against Vibrant Media in the District of Delaware. Vibrant Media filed two petitions for inter partes review at the PTAB and, after the petitions were granted, secured a stay of the underlying litigation. Vibrant then secured a complete win at trial on both IPRs at the Federal Circuit.