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- Patent Office (PTAB) Trials
Covington’s Patent Office Trials practice draws upon the expertise of two former Patent Trial and Appeal Board (PTAB) Administrative Patent Judges, the firm’s deep bench of patent litigators with expertise in complex, multi-forum patent disputes and appeals, and Covington’s long history of success in reexamination proceedings before the U.S. Patent and Trademark Office (PTO). No other PTAB trial team offers Covington's combination of experienced PTAB litigators and PTAB insiders.
Covington has handled over 150 PTAB proceedings for petitioners and patent owners, many through final decision. Covington attorneys represent clients in all fields of technology, and regularly advise clients on combined litigation and PTAB strategies.
The practice is led by Peter Chen in Palo Alto, and David Garr in Washington. Mr. Chen is a former Lead Administrative Patent Judge (APJ), as well as a first-chair patent litigator with over three decades of trial experience. He presided over more than 200 PTAB proceedings while serving as a PTAB judge from 2013 to 2017 at the West Coast Regional Office of the PTO. Mr. Garr is an experienced patent litigator who has handled over 50 PTAB proceedings, and specializes in complex patent disputes spanning U.S. District Courts, the PTO, and the ITC. They are joined by Dr. Scott Kamholz, a former APJ who served at PTO headquarters in Alexandria, Virginia and handled over 120 PTAB proceedings, as well as numerous other experienced Patent Office litigators across Covington’s U.S. offices.
This unique combination of Patent Office and litigation talent, on both the East and West Coasts, puts Covington’s clients in position to successfully undertake Inter Partes Review (IPR), Covered Business Method (CBM), and Post Grant Review (PGR) proceedings, while efficiently managing simultaneous litigation.
Successful Representation of Samsung at the District Court, PTAB, and the U.S. Court of Appeals
Representation of Samsung as a third-party intervenor in the District Court of Delaware in a case instituted by Gold Charm. Gold Charm sued Toshiba, a customer of Samsung Display Co., asserting a dozen unrelated patents relating to LCD technologies. Many of the accused products contained components manufactured by Samsung Display. Samsung decided to intervene to protect its customer. The result was a decisive victory based on a broad effort comprised of: IPRs that knocked out several patents; a motion for partial summary judgment on licensing that knocked out another patent and drastically reduced the plaintiff's alleged damages; and further summary judgment motions on the two most significant remaining patents were filed and granted by the court. The U.S. Court of Appeals for the Federal Circuit summarily affirmed the IPR victory on one of the patents. None of the other IPR victories were appealed.
Representation of Eli Lilly, ImClone, and BMS
Representation of Eli Lilly and Company, ImClone, and BMS in an IPR proceeding challenging the validity of a patent owned by the Trustees of the University of Pennsylvania (Penn). In concurrent district court litigation (in which we also represented Eli Lilly), Penn alleged that its patent covered methods of using Eli Lilly’s biologic Erbitux® for treating cancer patients. The PTAB instituted trial on all challenged claims, and its final decision found the challenged claims to be unpatentable. On appeal, the Federal Circuit summarily affirmed the PTAB’s decision.
Multiple IPRs for Aristocrat Technologies Inc.
Representation of Aristocrat Technologies Inc. in patent infringement litigation brought by IGT on an array of patents directed to gaming devices. Covington prepared and filed IPR petitions on 11 patents, and Covington represented Aristocrat as the patent owner in four IPR proceedings initiated by IGT. The parties reached a favorable settlement ahead of the litigation.
Victory for UCB against multiple Plaintiffs at District Court and Federal Circuit
Representation of UCB in patent litigation trial against over a dozen generic drug companies in the District of Delaware. The generic drug companies contended that the patent covering UCB's blockbuster anti-epileptic drug, Vimpat®, was invalid. Chief Judge Stark ruled in UCB’s favor in a 95-page opinion. The decision was later affirmed by the U.S. Court of Appeals for the Federal Circuit.
Successful Settlement of IPR Proceedings for Knowles Electronics, LLC
Representation of Knowles Electronics, LLC as patent owner in four IPR proceedings relating to silicon microphone packages and MEMS microphones, all of which were successfully terminated by settlement. Covington also represented Knowles in the co-pending litigation, which successfully settled.
Successful Resolution of Peregrine IPR Proceeding and Litigation
Representation of Peregrine Semiconductor as patent owner in an IPR proceeding brought by RF Micro Devices. The patent is directed to high frequency RF switches for 4G access technologies. Covington also represented Peregrine in the co-pending litigation. Both the IPR and the litigation were settled successfully for Peregrine.
Precedential Opinion Seals Victory for Bristol-Myers Squibb in Patent Dispute
Representation of Bristol-Myers Squibb (BMS), as a patent owner in an IPR proceeding instituted by Momenta Pharmaceuticals (Momenta), challenging the validity of a patent covering the formulation of BMS’s biological product, Orencia. The PTAB entered a final written decision entirely rejecting Momenta’s challenges and upholding all claims of the patent. Momenta appealed the decision to the Federal Circuit, even though Momenta had not yet filed a biosimilar application for Orencia with FDA. In a precedential opinion, the Federal Circuit dismissed Momenta's appeal for lack of standing and mootness because the company had failed to establish standing and in any event stopped developing a biosimilar version of the product, rendering the appeal moot.
Successful Resolution for Bockstar Technologies in an IPR Proceeding
Representation of Bockstar Technologies LLC as patent owner in an IPR proceeding brought by Cisco Systems Inc., challenging the validity of four patents related to routers, switches, and computerized telephony. Covington filed substantive initial responses for three of the four petitions. The PTAB rejected one of the petitions in its entirety, and instituted only as to a single patent claim in a second petition—effectively eliminating half of Cisco’s petitions at a single stroke. The proceedings were terminated shortly thereafter as part of a global settlement.
Representation of Knappco in PTAB Proceedings
Representing Knappco, a subsidiary of Dover Corporation, in an IPR against CHS Inc. regarding systems and methods to reduce the potential for unintentional mixing of liquid types in tank systems. In The PTAB instituted proceedings on all claims on all grounds. The patent owner failed to file any responsive papers, and the PTAB entered adverse judgment against CHS cancelling all challenged claims.
Defense of VIMPAT Patent for Research Corporation Technologies Inc., Harris FRC Corporation, and UCB, Inc.
Represented Research Corporation Technologies, Inc., and licensees Harris FRC Corporation, and UCB, Inc. in a series of six IPR proceedings filed by various generics companies, challenging the patent claiming Vimpat®, UCB’s anti-epileptic drug. The first petition, filed by Actavis, Inc. in 2014, was denied institution. The second petition, filed by Argentum Pharmaceuticals LLC in 2015, was later joined to another four IPR petitions filed by Alembic Pharmaceuticals, Breckenridge Pharmaceutical, and Mylan Pharmaceuticals. The PTAB entered a final written decision on March 22, 2017 entirely rejecting all the challenges and upholding all claims of the patent. In concurrent district court litigation (in which we also represented UCB), the court rejected all the generics’ invalidity arguments in August 2016.
Reexamination, CBM and Litigation Victories for Ariba, Inc.
Representation of Ariba, Inc. as patent owner in a CBM proceeding relating to operating resource management systems. Covington also represents Ariba in the co-pending litigation. The CBM proceeding was terminated following successful settlement of the patent infringement aspect of the litigation. We have also represented Ariba as requester in two inter partes reexamination proceedings relating to a business-to-business electronic clearinghouse. All original patent claims, as well as claims added during both reexamination proceedings, were rejected. Favorable settlement for Ariba was promptly obtained pursuant to filing of the reexamination requests.
Representation of Samsung Electronics Company, Ltd. in Two IPR Proceedings
Representation of Samsung Electronics Company, Ltd. as petitioner in two IPR proceedings adverse to patent owner Boston University relating to gallium nitride semiconductor devices. The two proceedings were terminated following successful settlement of the underlying litigation, in which Covington represented Samsung.
Representation of JPMorgan Chase in CBM Proceedings
Representation of JPMorgan Chase as petitioner in four CBM proceedings for patents owned by Maxim Integrated Products relating to secure electronic transactions, which were terminated by settlement of the co-pending litigation.
IPR Proceeding Victory on Behalf of Texas Instruments
Representation of Texas Instruments Incorporated (TI) as petitioner in an IPR proceeding relating to monolithic battery chargers. In a clean sweep victory in a patent office trial, the patent owner, Unifi Scientific Batteries (USB) ultimately requested judgment in TI’s favor. USB had sued TI in the Eastern District of Texas, alleging infringement of its patent directed to monolithic battery chargers. Covington filed a petition on behalf of TI in the Patent Office seeking invalidation of 16 claims. One week before oral argument, USB filed a Request for Adverse Judgment, disclaiming all of the 16 challenged claims. The Patent Office granted the Request and entered the judgment, successfully ending the trial. Covington also represented TI in the co-pending litigation, which settled successfully.
Invalidation of 41 Claims in Victory for Media Clients
Representation of multiple petitioners, including The New York Times Company and CBS Interactive, in an IPR proceeding (and in seven inter partes reexamination proceedings) for patents held by Helferich Patent Licensing, LLC. The patents relate to cell phone messaging and were the subject of co-pending litigation in which the requesters were defendants. The PTAB provided another clean sweep IPR victory when it invalidated all 41 challenged claims of the patent. Following Covington’s argument in April 2015, the Court of Appeals for the Federal Circuit affirmed the PTAB’s decision, securing the clients’ victory.
Multiple IPR Proceedings on Behalf of Biogen
Represented Biogen in defeating Swiss Pharma’s attacks on three patents covering TYSABRI®, an antibody biologic for treating patients with multiple sclerosis. The PTAB declined to institute a trial on all three of Biogen’s patents. The PTAB adopted the detailed reasoning from Covington’s briefs, finding that Swiss Pharma’s evidence and expert testimony did not demonstrate a reasonable likelihood of prevailing at trial.
Representation of Elbit Systems of America, LLC in IPR Proceeding
Representation of Elbit Systems of America, LLC as petitioner in an IPR proceeding relating to a patent directed toward a system and method for tracking the motion or orientation of an object relative to a moving reference frame, such as in a head-mounted display. The patent is owned by Thales Visionix, Inc., and Covington also represents Elbit in the co-pending litigation in the Court of Federal Claims. The PTAB issued its final written decision holding as unpatentable more than half of the challenged claims.
Representation of LifeCell as Petitioner in an IPR Proceeding
Achieved a complete victory for LifeCell Corporation as petitioner in an IPR proceeding challenging a patent owned by LifeNet Health directed to soft tissue graft compositions. Trial was instituted and the PTAB granted the patent owner’s request for adverse judgment, cancelling all claims in the patent.
Representation of Indivior in Challenge to Patent for SUBOXONE
Represented Indivior UK Limited (f/k/a RB Pharmaceuticals Limited), as patent owner in an IPR proceeding, brought by Teva Pharmaceuticals USA, Inc., challenging one of three Orange Book listed patents for Suboxone® sublingual film, a treatment for opioid dependence. Tthe PTAB denied Teva’s petition in its entirety, adopting the rationale presented in Covington’s patent owner preliminary response.
Representation of Warner Chilcott in an IPR Proceeding
Representation of Warner Chilcott as patent owner in an IPR proceeding, brought by the generic company Mylan Pharmaceuticals, challenging the patent claiming LO LOESTRIN, Warner Chilcott’s oral contraceptive. After Mylan filed its petition, the parties settled favorably without a single claim being invalidated or the PTAB instituting review on a single claim of the LO LOESTRIN Patent. Covington successfully represented Warner Chilcott in ANDA litigation against prior generic filers on LO LOESTRIN, obtaining a favorable judgment after a bench trial which was upheld by the Federal Circuit.
Covington Avoids IPR Trial for AstraZeneca SYMBICORT® Patent
Represented AstraZeneca in defeating Complex Innovations’ attack on a patent covering SYMBICORT® inhalation aerosol for asthma and COPD. The PTAB denied institution of an IPR trial as to every challenged claim. The PTAB largely followed the arguments Covington presented in the preliminary response when determining that the petition failed to demonstrate a reasonable likelihood of prevailing at trial.
Successful Representation of Samsung at the ITC, District Court, and PTAB
Representation of Samsung as petitioner in an ITC action and related district court action instituted by Black Hills Media, involving nine patents. In the ITC, Black Hills sought to preclude Samsung from importing hundreds of products into the U.S., including cell phones, tablets, smart TVs, Blu-ray players, and home theater systems. Following an evidentiary hearing, the ITC agreed that no Section 337 violation by Samsung had been proven and terminated the Investigation. While the ITC case was pending, the team also obtained a strategically important stay of the parallel E.D. Texas district court litigation, over the plaintiff’s objection, and despite the fact that the district court case involved several patents not at issue in the ITC. The district court case was ultimately dropped by Black Hills. Covington also prepared and prosecuted nine related inter partes review petitions. After oral argument in two of the proceedings, the PTAB issued a Final Written Decision finding all challenged claims unpatentable.
Success Before ITC and PTAB on Behalf of Tessera
As recognized by The National Law Journal, Covington successfully represented Tessera at the ITC regarding a patent infringement dispute with Broadcom over semiconductor chips. This victory came on the heels of its effective represented before the PTAB. Tessera (Complainant): Certain Semiconductor devices, semiconductor device packages, and products containing same, USITC Inv. No. 337-TA-1010.
April 9, 2019, Bloomberg Law
Scott Kamholz spoke with Bloomberg Law about upcoming PTAB trials. Mr. Kamholz says, “What we have is a whole lot of new evidence coming in at the very end of the proceeding.” He said the PTAB is “doing its best” to balance competing demands in setting up a motion to amend the system, but petitioners now have “a relevant complaint” because of the compressed ...
Shutdown Could Disrupt A Number Of ITC Patent Cases
January 24, 2019, Law360
Sturgis Sobin is quoted in Law360 regarding the government shutdown’s effect on U.S. International Trade Commission cases. Mr. Sobin says, “It’s unfortunate for a complainant that has worked hard to keep its case moving forward and came to the ITC because of the speed of the process, but it is the reality that we are looking at right now.” He adds, Overall, for ...
November 15, 2018
WASHINGTON—Covington's patent litigation team successfully petitioned the U.S. Supreme Court to hear a case on behalf of its client, Return Mail, Inc., which saw its patent on a system for handling undeliverable mail invalidated in 2015 after the U.S. Postal Service petitioned for Covered Business Method Review. The case, which will involve interpretation of ...
October 8, 2018
WASHINGTON—The Thomson Reuters Foundation has named Rick Longton its “TrustLaw Lawyer of the Year.” The award recognizes the commitment demonstrated in supporting pro bono clients over the last year on projects undertaken through TrustLaw, Thomson Reuters Foundation's global pro bono program that connects high-impact NGOs with law firms and corporate legal teams ...
April 26, 2018, Intellectual Asset Management
Scott Kamholz is quoted in an Intellectual Asset Management article regarding the Supreme Court's decision in Oil States Energy Services v. Greene’s Energy Group. In this case, the Court decided that inter partes review does not violate Article III or the Seventh Amendment of the U.S. Constitution. “I have to say that Justice Thomas engaged in Supreme Court best ...
Lawyers Weigh In On PTAB Cases At The High Court
April 24, 2018, Law360
Scott Kamholz is quoted in a Law360 article providing opinions about the Supreme Court's recent decisions in two patent cases, Oil States Energy Services LLC v. Greene’s Energy Group LLC and SAS Institute Inc. v. Iancu. According to Kamholz, “The Oil States decision has no significance at all on practicing before the PTAB. It concerned a constitutionality ...
April 23, 2018, Law360
Scott Kamholz is quoted in a Law360 article regarding speculation that the Patent Trial and Appeal Board may switch to the claim construction standard used in district court. Kamholz says that by having courts and the PTAB work on the same standard, there is a stronger basis for judges in one forum to rely on claim constructions rulings in the other. "By ...
Depositions At PTAB Vs. District Court: What To Know
April 18, 2018, Law360
Scott Kamholz is quoted in a Law360 article regarding differences between depositions at the Patent Trial and Appeal Board and district court. According to Kamholz, the purpose and execution between the two are quite distinct. “About the only thing in common between the two is the court reporter,” he says. “Lawyers cannot come into a PTAB deposition expecting it ...
April 11, 2018, The Recorder
Scott Kamholz is quoted by The Recorder in an article regarding USPTO Director Andrei Iancu's ideas for reforming the patent system. “My sense is that [Iancu] is not focused on harmonizing outcomes at the PTAB and district court, but rather to give both the PTAB and district judges more basis to rely on each other’s claim constructions,” Kamholz says. “That will ...
What To Know Before Asking The PTAB To Exclude Evidence
March 14, 2018, Law360
Scott Kamholz is quoted in a Law360 article examining what to know before asking the PTAB to exclude evidence. According to Kamholz, "Their preference is to have it in and make of it what they will, rather than go through the formal process of deciding whether to exclude it from the record." Kamholz adds that establishing that a piece of evidence is a printed ...
4 Ideas For How The PTAB Could Provide More Guidance
February 2, 2018, Law360
Scott Kamholz is quoted in a Law360 article examining how the Patent Trial and Appeal Board [PTAB] can improve its guidance. Commenting on streamlining the process, Kamholz says it could assign much of the responsibility of designating precedential opinions to the board's lead judges, with the rest of the members having more of an advisory role. "The board ...
August 15, 2017
SILICON VALLEY—Covington secured a significant patent infringement victory on behalf of Elbit Systems Ltd. over its groundbreaking patent relating to high-speed satellite communications. A jury in the Unites States District Court for the Eastern District of Texas awarded Elbit Systems $21,075,000 in damages, exclusive of pre-judgment interest and post-verdict ...
July 5, 2017, The National Law Journal
The National Law Journal highlights Covington's successful representation of Tessera at the ITC regarding a patent infringement dispute with Broadcom over semiconductor chips. According to Sturgis Sobin, who led the Covington team, "They tried for more than two years to work out a deal, but were unsuccessful."
Patently Scott Kamholz
July 3, 2017, Human Proof of Concept
Scott Kamholz participated in an interview with Human Proof of Concept to discuss inter partes review within the biotech industry.
PTAB: no longer a death squad
May 15, 2017, World Intellectual Property Review
Scott Kamholz and Peter Chen are quoted in a World Intellectual Property Review article examining the current landscape of the U.S. Patent Trial and Appeal Board. According to Kamholz, the PTAB has never been “out to get” patents. Kamholz also believes that trial procedures have changed "remarkably little." He says, “I remember discussing all sorts of issues in ...
Laterals of note
April 10, 2017, Commercial Dispute Resolution
Andrea Reister is quoted in a Commercial Dispute Resolution article regarding the arrival of Peter Chen and Scott Kamholz to the firm’s Patent Office Trials Practice. According to Reister, “Virtually all significant patent litigation matters involve co-pending IPRs, so having a strong patent office trials practice with a deep bench of senior attorneys is ...
Lateral Report: The Few, the Proud, the March Movers
April 3, 2017, Litigation Daily
Andrea Reister is quoted in a Litigation Daily article regarding the arrival of Peter Chen and Scott Kamholz to Covington’s Patent Office Trials Practice. According to Reister, “We are thrilled to add Peter and Scott to our team as we expect the demand for patent office trials to continue to grow in the coming years.”
Pair of Ex-PTAB Judges Join Covington
March 31, 2017, The Recorder
Scott Kamholz, Peter Chen, and Andrea Reister are quoted by The Recorder in an article regarding the recent additions to the firm’s Patent Office Trials Practice Group. According to Kamholz, Covington’s team stood out for its sophistication. “I was very impressed with their level of skill and preparation, and I found through working that case with them that we ...
March 30, 2017
SILICON VALLEY—Former Patent Trial and Appeal Board (PTAB) judges Peter Chen and Scott Kamholz have joined Covington’s Patent Office Trials Practice. Mr. Chen and Dr. Kamholz are the only former PTAB judges to enter private practice who have overseen Leahy-Smith America Invents Act of 2011 (AIA) trial proceedings from institution through final decision. Peter ...
Covington Adds Two Former PTAB Judges To Patent Group
March 30, 2017, Law360
Andrea Reister, Peter Chen, and Scott Kamholz are quoted in a Law360 article regarding the recent additions to the firm’s Patent Office Trials Practice Group. According to Reister, “We are thrilled to add Peter and Scott to our team as we expect the demand for Patent Office trials to continue to grow in the coming years. Their experience in the high-tech and ...
March 30, 2017, Daily Journal
Simon Frankel and Peter Chen are quoted in a Daily Journal article regarding the arrival of Chen and Scott Kamholz to the firm’s Patent Office Trials Practice. According to Frankel, while the firm’s patent litigation activity spans the coasts, most of its patent office practice has been based in Washington D.C. Chen’s addition will help expand the firm’s patent ...
Expert Testimony Not Helping IP Owners Avoid AIA Review
March 8, 2017, Law360
Scott Kamholz is quoted in a Law360 article regarding the impact of allowing patent owners to present expert testimony in their responses to America Invents Act review petitions. According to Kamholz, “Generally speaking, if the patent owner's witness is just contradicting the petitioner’s witness ... then the [Patent Trial and Appeal Board] would tend to order ...
Fall 2016, AIPLA Quarterly Journal, Vol. 44, No. 4
The Brainy Bunch
Fall 2015, Corporate Counsel
Peter Chen and Scott Kamholz were featured in Corporate Counsel’s Intellectual Property supplement highlighting judges on the Patent Trial and Appeal Board who are “shaking up patent law.”
Sotomayor Joins Conservatives in Key Patent Ruling
Beth Brinkmann spoke with The Recorder about her argument on behalf of Return Mail, Inc. before the Supreme Court. Ms. Brinkmann says, “The court’s decision confirms that federal agencies do not get an extra chance to challenge privately held patents under the AIA.”
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