PTO Contested Proceedings

Venable's 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 meet the demands of PTAB practice.

Our team includes seasoned patent litigators with successful track records before the U.S. District Courts, the International Trade Commission, the Federal Circuit, and the U.S. Supreme Court as well as and numerous registered USPTO practitioners experienced in prosecuting patent applications before the USPTO—including reissues, re-exams, and interferences—and arguing appeals before the PTAB and its predecessor.

We have handled interferences in all technology areas and are familiar with all aspects of the practice, including count formulation, motion practice, discovery, and settlement. We have also been involved in the review of PTO interference decisions (in both civil actions under 35 U.S.C. 146 and direct appeals to the Court of Appeals for the Federal Circuit), inter partes reviews (IPR), post-grant reviews (PGR), and covered business method (CMB) reviews.

Post Issuance Challenges

Venable's post-grant attorneys offer the technical expertise, prosecution knowledge, and litigation skills necessary for effective advocacy before the PTAB. We handle all phases of PTAB practice, from petition filing to oral hearing, and Federal Circuit appeal and decision. We have a winning record before the PTAB at both the institution stages, having obtained institution of over 80% of the IPR petitions filed by the firm. In addition, we have obtained cancellation of over 95% of instituted claims that reached a final written decision.

With our expertise and experience, Venable can provide the most 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 all technology areas including chemistry, biochemistry, pharmacology, computers, electronics and optics to name a few, and are familiar with all aspects of the practice including count formulation, motion practice, discovery and settlement. We have also been involved in the review of PTO interference decisions both in civil actions under 35 U.S.C. 146 and direct appeals to the Court of Appeals for the Federal Circuit.

Client Focus

  • Biotechnology
  • Chemistry
  • Consumer products
  • Financial institutions
  • Manufacturing processes
  • Medical devices
  • Microprocessors
  • Pharmaceuticals
  • Research institutions
  • Satellites
  • Software
  • Sporting goods
  • Telecommunications

Experience
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  • Venable successfully litigated numerous IPRs in a multifaceted patent dispute in the energy industry on behalf of Stellar Energy Americas, Inc. (SEA). The dispute included two separate federal court actions involving large-scale power generation facilities located in Florida and Texas. As part of its strategy, Venable filed nine IPRs before the PTAB, challenging the validity of every one of the 160 claims of the four patents-in-suit. The PTAB instituted full review on 156 of the challenged claims. Following institution of the initial IPRs, on Venable's motion, both federal district courts stayed the litigations and administratively closed the cases pending the PTAB’s review. The PTAB entered final written decisions in the first four IPRs, finding all of the instituted claims – including the core elements of the patented system – to be unpatentable as obvious. After the initial PTAB decisions in favor of SEA, SEA and the patent owner reached a settlement granting SEA a full and complete (non-exclusive) license to practice the patents that extends to any SEA customer, contractor, or supplier. See IPR 2015-00882, IPR 2015-00886, IPR 2015-01212, and IPR 2015-01214
  • Venable invalidated two wireless technology patents on behalf of Verizon Wireless before the PTAB. In the first decision, the PTAB determined that certain claims were unpatentable based on patent owner’s disclaimer of them in the IPR briefing and found the remaining asserted claims to be unpatentable over the prior art asserted by Verizon. In the second decision, the PTAB credited Verizon’s expert declarant and agreed with Venable on key claim construction arguments, resulting in the challenged claims being found unpatentable over prior art. See IPR 2015-01466 and IPR 2015-01477
  • Venable successfully invalidated all asserted claims of a patent involving a claimed media delivery platform in another IPR proceeding before the PTAB. The decision put an end to a dispute that originated as three separate patent infringement lawsuits filed by a non-practicing entity against Venable clients in the federal court in Minnesota. Venable is currently representing the petitioners in the patent owner’s Federal Circuit appeal of the PTAB’s final written decision. See IPR 2014-01236
  • Venable also represented a major domestic automotive manufacturer in multiple IPRs relating to variable intake valve technology, in connection with a concurrent ITC investigation. Two IPRs were instituted on all requested grounds, and a third IPR resulted in a statutory disclaimer of all challenged claims by the patent owner. The IPRs and accompanying litigation ultimately settled on favorable terms to Venable’s client. See IPR 2015-01229, IPR 2015-01234, IPR 2015-01370
  • In another IPR on behalf of a major domestic automotive manufacturer, Venable challenged patent claims asserted against Venable’s client in a case in the Eastern District of Michigan involving a system and method for detecting and displaying tire pressure. The PTAB instituted review of all challenged claims based on two separate combinations of prior art. After institution of the IPR, two of the challenged claims were dropped from the co-pending litigation as invalid. The PTAB issued a final written decision invalidating the only remaining claim still asserted against Venable’s client in the district court proceedings, after which the patent owner agreed to drop the patent from suit. See IPR 2015-01118

Science and Technical Degrees
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  • Applied molecular biology
  • Astronomy-physics
  • Biochemistry
  • Biological sciences
  • Chemical engineering
  • Chemistry
  • Computer engineering
  • Computer science
  • Economics
  • Electrical engineering
  • Management information
  • Mathematics
  • Mechanical engineering
  • Microbiology
  • Molecular biology
  • Molecular genetics
  • Molecular parasitology
  • Natural science
  • Organic chemistry
  • Physics

Recognition
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  • Named Technology Law Firm of the Year by U.S. News-Best Lawyers "Best Law Firms," 2017
  • Ranked in U.S. News-Best Lawyers "Best Law Firms," 2012 – 2017
    • Tier 1 Litigation - Intellectual Property (National; DC)
    • Tier 1 Litigation - Patent (DC)
  • Attorneys and practices ranked in Chambers USA, Intellectual Property Today, IAM Patent 1000, and World Trademark Review