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Post-Grant Trial Practice

Tenacious. Trusted. Talented.

Visit our new blog at www.ptablaw.com for updates, articles and analysis about the Patent Trial and Appeal Board (PTAB), the Court of Appeals for the Federal Circuit, and the America Invents Act (AIA).

Rothwell Figg’s Patent Trial and Appeal Board (PTAB) Trial Practice Group has considerable experience handling inter partes review (“IPR”), covered business method (CBM) review, and post-grant review (PGR) proceedings before the PTAB.  Our depth of knowledge and expertise with handling matters before the PTAB is unique, as many of the attorneys in our group have substantial experience handling interference proceedings, as well as reexaminations before the Office.

Our prosecution experience before the Office encompasses a wide range of technologies and fields, including biotechnology and pharmaceutical fields; plant science; medical devices; computer hardware and software; the Internet; advanced electronics; semiconductor devices and manufacturing; advanced telephony equipment and circuits; and a wide variety of mechanical systems and devices. 

Our post-grant practice has been recognized by IAM1000 as “a great comparative value and renowned expertise in post-grant procedures." To date, we have represented or are currently representing clients in numerous post grant proceedings under the procedures created by the AIA.  You may find detailed descriptions of our experience in the following section.

Experience in interference practice is essential to obtaining a favorable outcome in a PGR or IPR.  According to the Office’s rules and practice guide, PGRs and IPRs are “trials,” conducted in a manner similar to how interferences have been conducted in the past.  Rothwell Figg’s knowledge of and experience with the way administrative patent judges in the trial section of the PTAB have conducted interferences is invaluable to those wanting to petition for review of an issued patent and to patentees whose patents have been challenged in a review proceeding. Over the last five (5) years, Rothwell Figg has represented clients in ten (10) interferences and 62 reexam cases.   

Our PTAB Trial Practice Group also has extensive litigation experience in the federal courts, including experience handling cases brought against the Office.  That experience is essential to successfully handling post-grant procedures in the USPTO, including PGRs and IPRs, in that it undoubtedly will be necessary from time to time to (i) challenge certain PTAB decisions in district court under the Administrative Procedure Act and (ii) appeal to the U.S. Court of Appeals for the Federal Circuit when dissatisfied with a final determination of the PTAB.

Rothwell Figg’s PTAB Trial Practice Group’s litigation experience also will serve its clients well during a PGR or an IPR, as the review procedures involve many procedures similar to those involved in district court litigation.  For example, while direct testimony is by declaration or affidavit in PGRs and IPRs, cross-examination of the declarant or affiant will be conducted by deposition in a manner substantially the same as in district court litigation.  Further, the PTAB insists that motion practice by utilized when seeking relief of almost any kind (similar to that done in federal court). 

In addition, Rothwell Figg’s PTAB Trial Practice Group has extensive prosecution experience before the Office across a broad range of technical fields, including electrical, computer, mechanical, chemical, biotechnological, pharmaceutical and business methods fields.  Thus, its members have the technical expertise to handle all substantive issues raised in any post-grant proceeding, including any PGR or IPR. 

Rothwell Figg has represented Versata Development Group Inc. in the following Covered Business Method hearings:

CBM2012-00001 - Petition for Covered Business Method Patent Review by SAP America, Inc. (September 2012); Patent Number: 6,553,350 - Method and apparatus for pricing products in multi-level product and organizational groups

CBM2013-00017 - Petition for Covered Business Method Patent Review by Volusion, Inc. (April 2013); Patent Number: 6,834,282 - Logical and constraint based browse hierarchy with propagation features

CBM2013-00018 - Petition for Covered Business Method Patent Review by Volusion, Inc. (April 2013); Patent Number: 7,426,481 – Method and apparatus for sorting products by features

CBM2013-00042 Petition for Covered Business Method Patent Review by SAP America, Inc. (August 2013); Patent Number: 5,878,400 - Method and apparatus for pricing products in multi-level product and organizational groups

Rothwell Figg has represented Board of Trustees of the Leland Stanford Junior University in the following Inter Partes Reviews:

IPR2013-00308 Petition for Inter Partes Review by Ariosa Diagnostics, Inc. (May 2013); Patent Number: 8,296,076 - Noninvasive diagnosis of fetal aneuoploidy by sequencing

IPR2013-00390 Petition for Inter Partes Review by Sequenom, Inc. (June 2013); Patent Number: 8,195,415 - Noninvasive diagnosis of fetal aneuploidy by sequencing

Rothwell Figg has represented Board of Trustees of the Leland Stanford Junior University and Verinata Health Inc. in the following Inter Partes Review:

IPR2014-00337 - Petition for Inter Partes Review by Sequenom, Inc. (January 2014); Patent Number: 8195415: Noninvasive diagnosis of fetal aneuploidy by sequencing

Rothwell Figg has represented LG Electronics, Inc. in the following Inter Partes Reviews:

LG Electronics, Inc. et al.  v.  Cypress Semiconductor Corp., Case IPR2014-1386 (Patent Trial and Appeal Board), involving U.S. Patent No. 6,012,103

LG Electronics, Inc. et al.  v.  Cypress Semiconductor Corp., Case IPR2014-1396 (Patent Trial and Appeal Board), involving U.S. Patent No. 6,249,825

LG Electronics, Inc. et al.  v.  Cypress Semiconductor Corp., Case IPR2014-1405 (Patent Trial and Appeal Board), involving U.S. Patent No. 6,493,770

LG Electronics, Inc. et al.  v.  Cypress Semiconductor Corp., Case IPR2014-1302 (Patent Trial and Appeal Board), involving U.S. Patent No. 8,059,015

LG Electronics, Inc. et al.  v.  Cypress Semiconductor Corp., Case IPR2014-1342 (Patent Trial and Appeal Board), involving U.S. Patent No. 8,004,497

Rothwell Figg has represented Software Rights Archives, LLC in the following Inter Partes Reviews:

IPR2013-00479 - Petition for Inter Partes Review by Facebook, Inc. (July 2013); Patent Number: 5,832,494 - Method and apparatus for indexing, searching and displaying data

IPR2013-00481 - Petition for Inter Partes Review by Facebook, Inc. – (July 2013); Patent Number: 6,233,571 - Method and apparatus for indexing, searching and displaying data

IPR2013-00478 Petition for Inter Partes Review by Facebook, Inc.  (July 2013); Patent Number: 5,544,352 - Method and apparatus for indexing, searching and displaying data

IPR2013-00480 Petition for Inter Partes Review by Facebook, Inc. (July 2013); Patent Number: 5,832,494 - Method and apparatus for indexing, searching and displaying data

Rothwell Figg has represented Chicago Board Options Exchange, Inc. in the following Covered Business Method hearings:

CBM2013-00050 Petition for Covered Business Method Patent Review by International Securities Exchange, LLC (September 2013) - Patent Number: 7,980,457; Automated trading exchange system having integrated quote risk monitoring and integrated quote modification services.

CBM2013-00049 Petition for Covered Business Method Patent Review by International Securities Exchange, LLC  (September 2013); Patent Number: 7,356,498; Automated trading exchange system having integrated quote risk monitoring and integrated quote modification services 

CBM2013-00051 Petition for Covered Business Method Patent Review by International Securities Exchange, LLC (September 2013); Patent Number: 8,266,044; Automated trading exchange system having integrated quote risk monitoring and integrated quote modification services

We are currently representing SecureBuy, LLC in the following Covered Business Method hearings:

CBM2014-00037 Petition for Covered Business Method Patent Review by SecureBuy, LLC (November 2013) Patent Number: 7,693,783: Universal merchant platform for payment authentication

CBM2014-00035 Petition for Covered Business Method Patent Review by SecureBuy, LLC (November 2013) Patent Number: 7,051,002: Universal merchant platform for payment authentication

CBM2014-00036 Petition for Covered Business Method Patent Review by SecureBuy, LLC (November 2013) Patent Number: 8,140,429: Universal merchant platform for payment authentication