Knobbe/Martens: Intellectual Property Law

Nathanael Luman, Ph.D.

Partner

At a Glance

  • J.D. University of San Diego - School of Law
  • Ph.D. Chemistry, Boston University
  • B.S. Chemistry, Grove City College

  • State Bar of California
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court - Southern District of California
  • U.S. Patent and Trademark Office

Cases, Articles, Speeches & Seminars

Representative Matters

  • Complete Genomics, Inc. v. Illumina Cambridge Ltd., Case Nos. IPR2017-02172 and IPR2017-02174 (2018). Defended Illumina against petitions for IPR regarding a patent directed to DNA sequencing-by-synthesis.  Obtained decisions denying petitions and rejecting all challenges raised against Illumina’s claims.
  • Illumina, Inc. v. Cornell Research Foundation, Inc., Case IPR2016-00557 (2017). Represented Illumina in an IPR proceeding challenging a patent relating to assays for DNA detection. Achieved favorable case-dispositive settlement for client after institution of the IPR.
  • Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359 (Fed. Cir. 2016). Represented Illumina and obtained affirmance of IPR final written decision upholding the validity of all challenged claims from a patent directed to DNA sequencing-by-synthesis.
  • Ariosa Diagnostics, Inc. v. Illumina, Inc., Case IPR2014-01093 (2016). Represented Illumina in an IPR proceeding defending a patent directed to noninvasive prenatal screening methods.  Obtained final written decision upholding the validity of all challenged claims.
  • Roche Molecular Systems Inc. v. Illumina, Inc., Case IPR2015-01091 (2015). Defended Illumina against a petition for IPR regarding a patent for noninvasive prenatal screening methods.  Obtained decision denying petition and rejecting all challenges raised against Illumina’s claims.
  • Eisai Co., Ltd., et al. v. Lupin Ltd., et al., Case Nos. 13-civ-1279 and 13-civ-1281 (2015). Represented the Lupin defendants in a patent infringement action in the District of Delaware on patents relating to rufinamide (the active ingredient in Eisai’s Banzel® product). Achieved favorable case-dispositive settlement for client.
  • Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., Case IPR2013-00517 (2015). Represented Illumina in an IPR proceeding defending a patent directed to DNA sequencing-by-synthesis. Obtained final written decision upholding the validity of all challenged claims.
  • Ranbaxy Labs., Ltd. and Ranbaxy, Inc. v. Vertex Pharmaceuticals, Inc., Case IPR2013-00024 (2013). Represented Ranbaxy in an IPR proceeding challenging a patent relating to fosamprenavir (the active ingredient in Lexiva®). Achieved favorable case-dispositive settlement for client after institution of the IPR.

Articles

PTAB Blog Entries and Legal Alerts

  • USPTO Proposes Phillips-Tye Claim Construction For Post Grant Proceedings at the PTAB
  • PTAB Designates Informative Decisions on Discretionary Denial of Institution for Prior Art Previously Presented to the Office
  • PTAB Issues Order Proposing Claim Amendments to Patent Owner
  • USPTO to increase IPR fees by 33% and PGR fees by 27% in 2018
  • PTAB Designates as “Informative” Three Discretionary Denials of IPR Institution Decisions
  • PTAB Releases September 2017 Stats
  • PTAB Extends Deadline to Decide IPR Motion to Amend in view of Aqua Products
  • Federal Circuit Places The Burden Of Persuasion For Motions To Amend In IPRs On Petitioners
  • Standing to Appeal PTAB Decision to Federal Circuit is Measured for the Appellant, Not the Appellee
  • PTAB Designates As Precedential A Decision Finding Assignor Estoppel Is Not A Defense in IPRs
  • USPTO Director Grants Extension for Missed IPR Appeal to Federal Circuit
  • PTAB Expunges Non-Compliant Motions for Observations on Cross-Examination 
  • Defect in Patent Assignment Results in IPR Challenge Effectively Going Unopposed
  • PTAB Grants-in-Part Motions to Amend in Three Related IPRs
  • PTAB Weighs Five Factors in Discretionary Denial of Xactware’s Second IPR Petition
  • PTAB Grants Rare Motion to Amend
  • PTAB Denies Institution of Sixth IPR Petition Filed Against Adaptive Headlamp’s Patent
  • Final Written Decision Relies on Unexpected Results To Uphold Pozen’s Ulcer Reducing Vimovo® Claims Over Kyle Bass’s IPR Challenge
  • IPR Denied after Board Finds Asserted PCT Publication Not Entitled to Priority Application’s Filing Date under Pre-AIA 35 U.S.C. § 102(e) Prior Art Theory
  • PTAB Grants Rare IPR Request for Rehearing in WesternGeco LLC v. PGS Geophysical AS
  • The USPTO Amends AIA Trial Rules: 4 Changes That You Need To Know

Litigation Blog Entries

  • In Re: Erik Brunetti
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