PTO Contested Proceedings

Venable's Patent and Trademark Office (PTO) Contested Proceedings Group is dedicated to representing both patent challengers and patent owners before the Patent Trial and Appeal Board (PTAB). Our multidisciplinary post-grant lawyers offer backgrounds and experience that cover a wide range of technology areas.

Our seasoned attorneys have successful track records in U.S. Patent and Trademark Office (USPTO) proceedings including reissues, re-exams, and interferences. We have handled PTAB proceedings in all technology areas and are familiar with all aspects of the practice, with experience dating back to before the advent of inter partes reviews (IPR).

Post-Issuance Challenges

Venable's post-grant attorneys offer the technical knowledge, prosecution experience, and litigation skills necessary for effective advocacy before the PTAB. We handle all phases, from petition filing to oral hearing, and Federal Circuit appeal. With our comprehensive knowledge and experience, Venable can provide highly effective and efficient representation before the PTAB. For us, there is no learning curve.

Interferences and Derivation Proceedings

We are one of the country's leading firms in this specialized area of the law. We have handled interferences in a wide array of technology areas, including chemistry, biochemistry, pharmacology, computers, electronics, and optics, to name a few, and are familiar with all aspects of the practice. This experience makes us an ideal fit for the burgeoning field of derivation proceedings.

Experience
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  • Successfully litigated an IPR against a patent being asserted against a client that manufactured and sold leading smart thermostats. The subject matter related to the use of smart thermostats in programs—controlled by energy providers—that reduce consumer power consumption during periods of peak demand. During the trial, Venable defended against discovery requests and arguments pertaining to alleged real parties in interest, prevailed on various claim construction issues, and ultimately obtained a decision finding all of the challenged claims unpatentable
  • Successfully defended against IPRs brought against three of its client’s patents, which patents were being asserted in a related district court case also handled by Venable. The technology related to improved optical filters used in smartphone screens. For two of the IPRs, Venable obtained decisions denying institution by, in part, establishing that the law pertaining to "inherency" precluded a finding of motivation to modify the prior art as proposed. For the IPR that was instituted, Venable obtained a final written decision that no challenged claim was unpatentable. In particular, Venable leveraged statements in the applied prior art to establish the non-obviousness of the invention. Venable subsequently obtained an affirmance of the decision at the Federal Circuit
  • Successfully litigated IPRs against five patents directed to medical fixation devices for use in anchoring tissue within the human body. In all five IPRs, Venable obtained judgments finding all challenged claims unpatentable. The patent owner appealed to the Federal Circuit three of those PTAB decisions, and Venable successfully opposed the appeals
  • Successfully defended against an IPR filed by a client’s competitor, in what was likely a move by the competitor to pressure licensing negotiations for the patented technology, inasmuch as there was no counterpart litigation. The technology involved novel coatings used on the surfaces of wheel bearings for the automotive industry. Venable obtained a decision denying institution of the IPR by establishing clear deficiencies in the interpretation and application of the prior art against the claims
  • Successfully brought IPRs against four patents on behalf of a chemical company offering proprietary catalyst products. Venable adeptly explained why, to a person of ordinary skill, complicated prior art references rendered obvious claims relating to the use of carriers in the epoxidation of olefins. In doing so, Venable maneuvered through legal issues related to the criticality of claimed ranges and purported unexpected results, prevailing on each issue to obtain decisions finding unpatentable all claims challenged across the IPRs

Recognition
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  • U.S. News – Best Lawyers
    • Law Firm of the Year, Technology, 2017, 2022
    • Best Law Firms, Litigation – Intellectual Property (Tier 1), Washington, DC, 2012 – 2020, 2022 – 2023
    • Best Law Firms, Litigation – Patent (Tier 1), National, 2020, 2022 – 2023
    • Best Law Firms, Litigation – Patent (Tier 1), Washington, DC, 2012 – 2020
    • Best Law Firms, Litigation – Intellectual Property (Tier 1), New York, 2020, 2022 – 2023
    • Best Law Firms, Litigation – Patent (Tier 1), New York, 2020, 2022 – 2023
  • Chambers USA
    • Intellectual Property: Litigation, 2016
    • Intellectual Property: Patent, 2016 – 2023
  • Legal 500
    • Intellectual Property – Patents: Litigation, 2016 – 2023
    • Intellectual Property – Patents: Prosecution, 2016 – 2020
  • The Best Lawyers in America, 2012, 2014, 2017, 2019 (Venable attorneys selected for inclusion)
  • Intellectual Property Today, 2012 – 2015 (Venable attorneys selected for inclusion)
  • IAM Patent 1000, 2012 – 2021 (Venable attorneys selected for inclusion)
  • World Trademark Review, 2017 – 2022 (Venable attorneys selected for inclusion)