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Patent Post-Issuance Proceedings

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Post-issuance review and reexamination proceedings are frequently used to address patent validity issues in the United States Patent and Trademark Office (PTO) in parallel with, or as an alternative to, district court proceedings. The interplay between litigation, post-issuance review and reexamination is complex and extensive. Choosing an appropriate strategy may involve issues with conflicting priorities where each proceeding may impact another, including claim construction, intervening rights, admissions impacting both infringement and invalidity, estoppels against further validity contests, entitlement to injunctive relief, potential vacatur of related district court judgments, and enhanced damages. 

Given this substantial interrelationship, it is essential to hire a legal team that seamlessly integrates in-depth experience in patent post-issuance review, reexamination and litigation. Irell & Manella offers this unique combination. Our practice combines one of the nation’s premier litigation practices with extensive experience in Patent Office proceedings, including inter partes review (IPR), covered business method review and ex parte reexamination.

Irell & Manella's post-issuance proceedings team includes Michael Fleming, former Chief Administrative Patent Judge of the Patent Trial and Appeal Board (PTAB) of the PTO. As chief judge, Mr. Fleming assisted Congress in drafting the post-grant provisions of the America Invents Act (AIA) and played a critical role in the creation of the IPR statute. During his 30+ years with the PTO, including 17 years as an administrative patent judge and four years as a supervisory patent examiner, Mr. Fleming helped establish many of the present patent procedures and policies of the PTO, including several of the examination guidelines and the federal rules for patent office examination. Mr. Fleming was responsible for many of the precedential opinions that are presently binding on Administrative Patent Judges of the PTAB. He also instituted the official standard operating procedure for issuing precedential opinions that establish binding precedent on issues before the Board and aid in developing best examination practices. In addition to Mr. Fleming, Irell’s team includes 21 registered patent attorneys, many of whom hold advanced technical degrees in areas such as computer engineering, computer science, chemical engineering, electrical engineering, mechanical engineering, inorganic chemistry, molecular pharmacology and pharmacy.

Representative Post-Issuance Review Matters

  • Apple Inc. v. Immersion Corporation (Patent Trial and Appeal Board, IPR2016-01371, IPR2016-01777, IPR2017-00887, IPR2017-00896, IPR2017-00897). Irell represented Immersion in IPRs brought by Apple over patents related to haptics technology used in the current generation of iPhones, MacBooks and the Apple Watch. Irell persuaded the PTAB to deny institution.
  • Apple v. Papst Licensing GMBH & Co. (Patent Trial and Appeal Board, IPR2016-01840, IPR2016-01841, IPR2016-01843, IPR2016-01844, IPR2016-01849, IPR2016-01862, IPR2017-01154, IPR2017-01156 and IPR2017-00158). Irell represents Papst Licensing in IPRs concerning an interface device for communication between a computer host device and a data transmit/receive device. Irell persuaded the PTAB to deny institution on nine petitions for IPR thus far.
  • Samsung Electronics Co, LTD. v. KAIST IP US LLC (Patent Trial and Appeal Board, IPR2017-01046, IPR2017-01047). Irell & Manella represented KAIST, the licensing representative for the Korean Advanced Institute of Science and Technology, in IPR petitions filed against its FinFET technology patent by Samsung. Irell convinced the PTAB not to institute IPR on any of the claims.
  • Symantec Corp. v. Trustees of Columbia University (Patent Trial and Appeal Board, IPR2015-00372, IPR2015-00378, IPR2015-00374, IPR2015-00370, IPR2015-00371). Irell & Manella prevailed at trial before the PTAB on five Symantec IPRs challenging the validity of four Columbia patents. Irell also prevented institution on two Columbia patents.
  • Nipro Corporation v. NxStage Medical (Patent Trial and Appeal Board, IPR2016-00744). Irell & Manella secured a win on behalf of client NxStage Medical Inc., a pioneer in low-cost and high-efficiency blood tubing sets for extracorporeal blood handling applications, such as hemodialysis, defeating a challenge by competitor Nipro Corporation. Nipro sought to invalidate NxStage’s ‘414 patent, asserting that over a dozen claims of the ‘414 patent were anticipated and/or rendered obvious by various prior art references. In its preliminary response, the Irell team strategically employed recently adopted PTAB rules governing the early submission of expert testimony to argue that Nipro’s proposed constructions were unreasonably broad. The PTAB agreed that Nipro’s constructions were unreasonable and denied institution of the IPR in its entirety on claim construction grounds. 
  • Kite Pharma v. Sloan Kettering Institute for Cancer Research (Patent Trial and Appeal Board, IPR2015-01719). Irell & Manella secured an IPR win on behalf of its clients, Sloan Kettering Institute for Cancer Research, an affiliate of Memorial Sloan Kettering Cancer Center, and its exclusive licensee, Juno Therapeutics, a clinical-stage biotechnology company developing cellular immunotherapies for the treatment of cancer. Kite sought to invalidate all claims of U.S. Patent No. 7,446,190, titled “Nucleic Acids Encoding Chimeric T Cell Receptors.” The patent covers, among other things, a construct for a chimeric T cell receptor that targets the antigen CD-19 for the treatment of B-cell cancers, such as leukemia and lymphomas. The PTO instituted a review of the patent and on December 16, 2016 issued a final written decision upholding all the claims of the patent.
  • The General Hospital Corp. v. Sienna Biopharmaceutical, Inc. (Patent Interference No. 106,037 (DK)). Irell & Manella secured a win on behalf of client Sienna Biopharmaceutical, Inc., a developer of groundbreaking products to treat acne and hair removal, which incorporates several innovations protected by Sienna’s U.S. Patent 8,821,941. Without provocation from Sienna, competitor General Hospital Corp. (GHC) sought to invalidate Sienna’s ‘941 patent by having an interference declared with GHC’s patent application in which GHC copied Sienna’s claims, presumably to clear the way for GHC hair removal products. Irell was successful in convincing the PTAB that the interfering GHC patent application lacked written description support under 35 U.S.C. 112, first paragraph on Decision on Motion. This led the PTAB to enter a judgment of validity for Sienna and to find GHC's patent application unpatentable.
  • B/E Aerospace, Inc. v. MAG Aerospace Industries LLC (Patent Trial and Appeal Board, IPR2014-01510, IPR2014-01511, IPR2014-01513). Irell & Manella represented B/E Aerospace in IPRs filed against a competitor in the field of aircraft water and waste systems. The IPRs were requested on patents that MAG asserted in a concurrent patent infringement action against B/E in District Court. B/E prevailed on non-infringement in Court. Regardless, on March 18, 2016, the PTO also invalidated all of the challenged claims of the three patents, concluding that they were obvious based on prior art. This was a complete victory for B/E, in both the courts and Patent Office.
  • Juniper Networks, Inc. v. Brixham Solutions, LTD. (Patent Trial and Appeal Board, IPR2014-00425 and IPR2014-00431). Irell & Manella represented Juniper in two IPR proceedings involving router technology. On July 27, 2015, the PTAB invalidated each of the claims from the two patents that Brixham Solutions Ltd. had asserted against Juniper in a case in Northern California. In two final written decisions, the PTAB found that all of the asserted claims of Brixham’s patents were obvious over the prior art Juniper had identified in its petitions. The PTAB also denied Brixham’s motions to exclude the declarations of Juniper’s technical expert in both proceedings.
  • Apple, Inc. v. Wisconsin Alumni Research Foundation. (Patent Trial and Appeal Board, IPR2014-1567). Irell & Manella represented patent owner Wisconsin Alumni Research Foundation (WARF) in an IPR proceeding brought by Apple, Inc. Apple filed the petition as part of the on-going litigation between the parties on Apple’s unauthorized use of WARF’s memory disambiguation technology. WARF defeated Apple’s attempt to shield from the Board highly relevant and damaging admissions from its own witnesses. On April 15, 2015, the PTAB declined to authorize an IPR on any grounds asserted in Apple’s petition, finding that Apple has not demonstrated a likelihood of success on any of the nine challenged claims.
  • Cisco Systems, Inc. v. Constellation Technologies LLC. (Patent Trial and Appeal Board, IPR2014-00871; IPR2014-00914; IPR2014-01085; and IPR2014-01179). Irell & Manella secured a series of wins for patent owner Constellation Technologies LLC (Constellation). Constellation managed a patent portfolio on fundamental networking technologies that were developed by Nortel Networks Ltd. Between December 2014 and February 2015, the PTAB declined to institute on four IPR petitions brought by Cisco Systems, Inc., ruling that Cicso has not shown a reasonable likelihood of prevailing on the asserted grounds.
  • Mylan Pharmaceuticals Inc. v. Gilead Sciences, Inc. (Patent Trial and Appeal Board, IPR2014-00885; IPR2014-00886; IPR2014-00887; and IPR2014-00888). Irell & Manella secured wins for biotechnology company Gilead Sciences Inc., defeating challenges brought by Mylan Pharmaceuticals to four Gilead patents related to the HIV drug tenofovir disoproxil fumarate. In December 2014, the PTAB rejected Mylan Pharmaceuticals’ petitions for IPR of the four Gilead patents. The PTAB declined to institute IPR proceedings on all four petitions, ruling Mylan was unlikely to prevail on any of the claims challenged in the petitions.
  • Amkor Technology, Inc. v. Tessera, Inc. (Patent Trial and Appeal Board, IPR2013-00242). Irell & Manella secured a victory in an IPR trial before the PTAB. In an attempt to void an arbitration award, Amkor filed an IPR of the key semiconductor patent responsible for the majority of damages. In October 2014, the three-judge panel at the PTO affirmed the patentability of every one of the 14 claims that Tessera contended was patentable and on every one of the claims that the ICC panel found Amkor had used.
  • Palo Alto Networks (PAN) v. Juniper Networks, Inc. (Patent Trial and Appeal Board, IPR2013-00369, IPR2013-00466). Irell & Manella represented Juniper in these two IPRs filed by a competing provider of networking hardware. These IPRs were part of a long-running dispute with a competing company founded by former employees who left Juniper to compete in the same field. The IPRs were resolved by settlement favorable for Juniper, resulting in a payment to Juniper of $175 million, and termination of the IPRs with Juniper’s patents fully intact.
  • MaxLinear, Inc v. Cresta Technology Corp. (Patent Trial and Appeal Board, IPR2015-00591) Irell & Manella secured a win on behalf of Cresta in this IPR by defeating a challenge by Maxlinear. The PTAB declined to institute the IPR proceeding based upon the petition, which raised substantially the same prior art or arguments previously presented to the PTO.
  • MaxLinear, Inc. v. Cresta Technology Corp. (Patent Trial and Appeal Board, IPR2015-00593). Irell & Manella represented Cresta in this IPR proceeding related to multi-format television tuners. The PTAB declined to institute IPR proceedings. 
  • Boehringer Ingleheim Int’l GmbH and Boehringer Ingelheim Pharm., Inc. v. Biogen, Inc. (Patent Trial and Appeal Board, IPR2015-00418) Irell & Manella represented Biogen in this IPR proceeding related to the use of the drug Rituximab for the treatment of cancer and rheumatoid arthritis. The PTAB declined to institute IPR proceedings. 
  • Ardagh Glass, Inc. v. Culchrome, LLC (Patent Trial and Appeal Board, IPR2015-00943, IPR2015-00944). Irell & Manella represented Culchrome in IPR proceedings related to the production of recycled glass products. The PTAB declined to institute IPR proceedings. 

Representative Reexamination Matters

  • Represented Juniper Networks in connection with inter partes reexamination involving network security.
  • Represented TiVo in connection with ex parte reexamination proceedings brought against multiple patents owned by EchoStar and asserted by EchoStar against TiVo in co-pending litigation. 
  • Represented co-owner City of Hope in connection with multiple reexaminations of one of the most important biotechnology patents in history – the coexpression of an antibody in a cell.
  • Represented Chimei Optoelectronics in connection with inter partes reexamination and ex parte reexamination involving liquid crystal displays.
  • Represented a Fortune 500 chemical company in connection with ex parte reexamination of four patents involving chemical mechanical polishing of semiconductor substrates.
  • Represented inventor Bruce Finn in connection with ex parte reexamination involving lighting fixture for motion picture industry.

As pioneers in the field, Irell & Manella attorneys regularly publish and speak on the topics of review and reexamination. Recent articles and presentations include:

  • “Limitations on Standing in IPRs,” Westlaw Journal Intellectual Property (May 2016) by Michael Fleming
  • "The Role of the PTAB in District Court Patent Litigation," LAIPLA’s Spring Patent Luncheon (April 2016) presented by Michael Fleming
  • "Indefiniteness In Inter Partes Review Proceedings," Journal of the Patent & Trademark Office Society, (March 2016) by Andrei Iancu, Michael Fleming and Maclain Wells
  • “End Game: The Oral Hearing, Final Written Decision, Rehearing and Appeals to the CAFC”, PLI’s USPTO Post-Grant Patent Trials 2016 (March 2016) presented by Jason Sheasby
  • "Patent Trial and Appeal Board: Trends and Predictions, Challenges and Opportunities," D.C. Bar Intellectual Property Law Section (February 2016) presented by Michael Fleming
  • "Retrospective Review: Post Issuance PTO Proceedings,” The George Washington University Law School’s “Symposium on Intellectual Property” (May 2015) presented by Michael Fleming
  • "Unpack Inter Partes Review's First Review," Daily Journal, (April 2015) by Andrei Iancu and Benjamin Haber
  • "Patent Invalidity after the America Invents Act," University of San Diego School of Law's 5th Annual Patent Conference (January 2015) presented by Morgan Chu
  • “Inter Partes Review is the New Normal: What has been Lost? What has been Gained?” American Intellectual Property Law Association (AIPLA) Quarterly Journal (January 2013) by Andrei Iancu and Benjamin Haber
  • "Challenging Validity of Issued Patents Before the PTO: Inter Partes Reexam Now or Inter Partes Review Later?" Journal of the Patent & Trademark Office Society (Summer 2012) by Andrei Iancu and Benjamin Haber
  • "Post-Issuance Proceedings in the America Invents Act," Journal of the Patent and Trademark Office Society (February 2012) by Andrei Iancu and Benjamin Haber.
  • “Implementing Reexam in Litigation Panel Discussion,” 2010 AIPLA Electronics & Computer Law Summit (June 2010) presented by Gary Frischling
  • “Reexamination and Concurrent Patent Litigation,” 2010 Advanced Patent Law Institute (UTCLE) (January 2010) presented by Gary Frischling