Patent Office Litigation

Knobbe Martens is a recognized PTAB “top firm” with the most patent attorneys in the U.S. We know the technology, the law and the Patent Office. Period.

Our firm is a leader in Patent Office litigation before the Patent Trial and Appeal Board (PTAB). With more registered patent attorneys than any other U.S. law firm, we are uniquely positioned to represent both patent owners and challengers in these highly technical disputes. Our firm has been successfully litigating before the Patent Office for over 20 years — long before the PTAB’s founding in 2012.

Our track record speaks for itself. We have represented petitioners and patent owners in hundreds of PTAB litigation cases, including inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) reviews. Our deep experience in patent law and technical litigation prowess is demonstrated in achieving success rates that far exceed the industry average.

Representing patent owners, we effectively prevent the institution of PTAB challenges in the first case, and save claims where trial is ordered. For petitioners, we kill patent claims after trial. On appeal, we deliver a deep bench of experienced appellate advocates and former clerks at the U.S. Court of Appeals for the Federal Circuit. Our experience in representing both patent owners and petitioners makes us particularly effective advocates. As a result, we are able to position disputes to realize a favorable result.

Follow recent developments in our PTAB Blog.

Awards

  • “Tier 1 Nationwide for Patent Litigation”, U.S. News – Best Lawyers® “Best Law Firms”, 2018
  • "Top 15 Firm Representing Petitioners and Patent Owners Combined"Managing IP, 2018
  •  “IP STAR” in PTAB Litigation, Managing IP, 2018
  • “Top IP Boutique Law Firm” in California, Daily Journal, 2018
  • “Best IP Boutique Law Firm,” Vault’s “Best Law Firms by Practice Area”, 2018
  • “Recommended IP Litigation Firm,” Benchmark Litigation, 2018
  • “Top Firm” representing patent owners, Lex Machina report, 2017
  • “#3 Largest IP Boutique Firm,” Law360, 2017

Successes

PTAB Appeals

Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., No. IPR2013-00517 & 821 F.3d 1359 (Fed. Cir. 2016)

Represented the patent owner in obtaining a rare IPR victory of a PTAB final written decision and Federal Circuit precedential affirmance of the decision upholding the validity of all challenged claims from a patent directed to DNA sequencing-by-synthesis.

Amazon.com v. Personalized Media Communications, No. IPR2014-1527, IPR2014-1528, IPR2014-1530, IPR2014-1531, IPR2014-1532, IPR2014-1533, IPR2014-1534 & Nos. 2016-2606, 2017-1441 (Fed. Cir.)

Represented Amazon in filing seven IPR petitions challenging patents asserted in litigation and obtaining final written decisions invalidating all seven patents. On appeal, represented Amazon in the two cases appealed by the patent owner in which it unsuccessfully sought to amend the claims. The Federal Circuit affirmed both decisions denying the amendments.

Redline Detection, LLC v. Star EnviroTech, Inc., No. IPR2013-00106 & No. 2015-1047 (Fed. Cir.)

Represented the patent owner in successfully defending a patent in IPR and becoming one of only a small percentage of patent holders to survive an IPR with all claims intact. Also represented the patent owner in the Federal Circuit appeal, which affirmed the judgment in a 33-page precedential decision.

Stephenson v. Game Show Network, No. IPR2013-00289 & No. 2015-1359 (Fed. Cir.)

Represented the petitioner, Game Show Network, in challenging a patent directed to computer gaming tournaments and obtaining a PTAB finding that all 19 claims were unpatentable, a decision summarily affirmed by the Federal Circuit.

Spectrum Brands, Inc. v. Assa Abloy AB, No. IPR2015-01562 & No. 2017-1817 (Fed. Cir.)

Successfully represented the petitioner, Spectrum Brands, in obtaining a final written decision after a full trial canceling 16 patent claims relating to electronic locks asserted by a competitor in litigation. Represented Spectrum Brands on appeal to the Federal Circuit, winning summary affirmance of the PTAB’s decision.

Petitioner Representation

Smith & Nephew, Inc. v. ConforMIS, Inc., Nos. IPR2016-01874, IPR2017-00115

Represented the petitioner in strategically filing 16 IPRs and two ex parte reexaminations as part of a defensive litigation strategy in a dispute relating to patient-specific instruments for knee replacement surgery. Following a full PTAB trial, we successfully obtained a final written decision cancelling all patent claims in the patent owner’s foundational patent. Following that success and another full PTAB trial, we obtained the same result on a related patent.

Ranbaxy v. Vertex Pharms, Inc., No. IPR2013-00024

Represented Ranbaxy in one of the first IPR proceedings challenging a patent relating to fosamprenavir (the active ingredient in ViiV's Lexiva® product) and achieved a favorable case-dispositive settlement for the client after institution of the IPR.

Amazon.com v. Personalized Media Communications, No. IPR2014-1527, IPR2014-1528, IPR2014-1530, IPR2014-1531, IPR2014-1532, IPR2014-1533, IPR2014-1534

Represented Amazon in filing seven IPR petitions challenging patents asserted in litigation and obtaining final written decisions invalidating all seven patents.

Spectrum Brands, Inc. v. Assa Abloy AB, No. IPR2015-01562 & No. 2017-1817 (Fed. Cir.)

Successfully represented the petitioner, Spectrum Brands, in obtaining a final written decision after a full trial canceling 16 patent claims relating to electronic locks asserted by a competitor in litigation, a decision summarily affirmed by the Federal Circuit.

Game Show Network v. Stephenson, No. IPR2013-00289 & No. 2015-1359 (Fed. Cir.)

Represented the petitioner, Game Shown Network, in challenging a patent directed to computer gaming tournaments and obtaining a PTAB finding that all 19 claims were unpatentable, a decision summarily affirmed on appeal.

Patent Owner Representation

Ariosa Diagnostics, Inc. v. Illumina, Inc., No. IPR2014-01093

Represented Illumina in an IPR proceeding defending a patent directed to noninvasive prenatal screening methods and successfully obtained a rare final written decision after a full trial upholding the validity of all challenged claims.

BioGatekeeper, Inc. v. Kyoto University, No. IPR2014-01286

Represented Kyoto University in defending against an IPR petition regarding a patent co-invented by Nobel Prize laureate, Professor Shinya Yamanaka, directed to induced pluripotent stem cells. Obtained a decision denying the institution and rejecting the challenge raised against the university’s patent.

ResMed Ltd. v. Fisher & Paykel Healthcare, No. IPR2016-01723

Represented Fisher & Paykel in defending against an IPR petition regarding a patent relating to CPAP technology. Obtained a decision denying petition and rejecting all challenges raised against Fisher & Paykel’s patent claims.

Canon Inc. v. Intellectual Ventures I LLC, No. IPR2014-00757

Successfully defended a patent by achieving a rare victory of convincing the PTAB to uphold the validity of all 20 challenged claims after a full trial. The petitioner did not appeal, and an inter partes review certificate was issued confirming the challenged claims. In related proceedings, IPR2014-00536 and IPR2014-00537, we successfully defended the patents by persuading the PTAB not to institute IPR proceedings in the first instance, and in IPR2014-00787, we prevailed after a full trial in validating challenged claims.

Kinetic Technologies v. Skyworks Solutions, Nos. IPR2014-00529, IPR2014-00530, IPR2014-00690

Successfully defended the patent owner by protecting all claims in all patents asserted in litigation relating to integrated circuits by defeating three separate IPR petitions, including obtaining an extraordinary judgment upholding the validity of all claims in instituted IPR proceedings after a full trial.

Roche Molecular Systems Inc. v. Illumina, Inc., No. IPR2015-01091

Defended Illumina against an IPR petition regarding a patent for noninvasive prenatal screening methods. Obtained a decision denying the petition and rejecting all challenges raised against Illumina’s claims.

Complete Genomics, Inc. v. Illumina Cambridge Ltd., Nos. IPR2017-02172, IPR2017-02174

Defended Illumina against IPR petitions regarding a patent directed to DNA sequencing-by-synthesis. Obtained decisions denying petitions and rejecting all challenges raised against Illumina’s claims.

Instradent USA, Inc. v. Nobel Biocare Services, No. IPR2015-01784

Successfully defended Nobel Biocare in a challenge to a pioneering medical device patent for dental implants by defeating the institution of an IPR petition brought by a competitor that was filed after the patent had been found infringed in a co-pending ITC action.

Seabery North America Inc. v. Lincoln Global, Inc., Nos. IPR2016-00749, IPR2016-00840, IPR2016-00905

Represented the patent owner in successfully defending the challenged patents by convincing the PTAB not to institute any IPR proceedings. In a fourth proceeding, IPR2016-01568, the petitioner withdrew the petition after receiving our preliminary response.

International Business Machines Corp. v. Intellectual Ventures I LLC, Case IPR2014-01516

Successfully defended a patent by convincing the PTAB to not institute the IPR proceedings and rejecting all challenges raised against the claims.

CBM Reviews

Commvault Systems, Inc. v. Realtime Data LLC, Nos. CMB2017-00061, IPR2017-01710

Represented the petitioner in filing an IPR and CBM petition challenging the patentability of a data compression patent asserted in litigation. In response, the patent owner voluntarily canceled 23 of its patent claims and IPR proceedings were instituted on all remaining claims.

Motorola Mobility LLC, v. Intellectual Ventures I LLC, No. CBM2015-00174

Successfully defended a patent by convincing the PTAB not to institute the CBM proceeding and rejecting all challenges raised against the patent.

Game Show Network v. Bally Gaming, No. CBM2015-0155

Represented the petitioner in obtaining an institution of a CBM petition on all challenged claims of a gaming patent where others had failed. The case settled thereafter.

Great West Casualty Company et al. v. Intellectual Ventures II LLC, No. CBM2015-00171

Successfully defended a patent by convincing the PTAB not to institute a CBM proceeding.

Shoutpoint and Victory Solutions v. Broadnet Teleservices, CBM2015-00176, CBM2015-00177

Successfully represented the defendant in a long-running patent case related to teleconferencing technology. The case settled soon after the defendant/petitioner filed two CBM petitions challenging the asserted patents in the Patent Office.

Reexamination and Interferences

National Institutes of Health
Knobbe Martens successfully represented the National Institutes of Health in a lengthy and complex patent interference regarding the vaccine for the human papillomavirus, now marketed by Merck as Gardisil®.

Johnson Safety, Inc.
The firm successfully defended Johnson Safety in an inter partes reexamination proceeding in front of the United States Patent and Trademark Office (PTO). Johnson Safety manufactures audio and video equipment and Audiovox Corporation requested an inter partes reexamination of a Johnson Safety patent on a mobile video system. The firm’s representation in the reexamination resulted in a confirmation by the Examiner that all claims in the patent are valid. The Examiner’s decision is currently being appealed by the requester.

Kontron America, Inc.
The firm represented Kontron America in litigation and successfully requested an inter partes reexamination of the patent asserted against Kontron in federal court. Kontron designs and manufactures embedded computer systems in Europe, America, and Asia. Epicenter alleged that Kontron infringed Epicenter’s patent on a computer control switching system. In 2006, Kontron was able to successfully secure a stay of the litigation pending the outcome of the reexamination. During reexamination, the examiner’s rejection based on grounds cited by the firm forced Epicenter to submit narrowing amendments of the patent

Knobbe Martens is pleased to announce that it has once again received top recognition in The Legal 500 “United States Guide.” The annual publication, which recognizes leading law firms and attorneys...
Partner John Sganga was quoted in, "Is It A Printed Publication? PTAB Panel May Give Answers," an article published by Law360. Excerpt: The panel that sets precedent for the Patent Trial and Appeal...
Partner Michelle Armond was quoted in "Pendulum Swings Toward Patent Owners in Agency Challenges," an article published by Bloomberg Law . Excerpt : A Patent and Trademark Office pilot program making...