Knobbe/Martens: Intellectual Property Law

Successes

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.

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