Patent Office (PTAB) Trials

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Covington’s Patent Office Trials practice draws upon the expertise of two former 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 seasoned PTAB insiders.

Covington has handled over 100 PTAB proceedings, achieving successful outcomes in nearly 100% of the cases that went to judgment. Covington attorneys represent both petitioners and patent owners in inter partes review (IPR) and other PTAB trials, in all fields of technology, and regularly advise clients on combined litigation and PTAB strategies.

The practice is led by Andrea Reister in Washington and Peter Chen in Silicon Valley. Ms. Reister has successfully litigated over 100 PTAB proceedings for Covington clients, dating back to October 2012 when these proceedings first became available. Mr. Chen is a former Lead Administrative Patent Judge 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. They are joined by Dr. Scott Kamholz, another former Administrative Patent Judge who served at PTO headquarters in Alexandria, Virginia and handled over 120 PTAB proceedings, as well as many other experienced Patent Office litigators across Covington’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 challenge and respond to IPR, Covered Business Method (CBM), and Post Grant Review (PGR) proceedings, while efficiently managing simultaneous litigation.

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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.

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 BMS as Patent Owner in an IPR Proceeding

Represented Bristol-Myers Squibb Company, as patent owner in an IPR proceeding brought by Momenta Pharmaceuticals, Inc., challenging the validity of a patent covering the formulation of BMS’s biologic ORENCIA. The PTAB entered a final written decision in December 2016 entirely rejecting Momenta’s challenges and upholding all claims of the patent.

Representation of Eli Lilly, ImClone, and BMS

Represented 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 represent Eli Lilly), Penn alleged that its patent covered methods of using Eli Lilly’s biologic Erbitux® for treating cancer patients. In July 2016, the PTAB instituted trial on all challenged claims, and later that month, the district court entered a stay of the litigation pending the IPR proceeding. The PTAB hearing took place in March 2017, and the final written decision found the challenged claims of Penn’s patent invalid.

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. In a decision rendered on June 10, 2016, the PTAB denied Teva’s petition in its entirety, adopting the rationale presented in Covington’s patent owner preliminary response.

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 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. In decisions on February 2 and 3, 2015, 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.

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.

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 June 2016, 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.

Fifteen IPR Proceedings 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. On behalf of Aristocrat, Covington prepared and filed IPR petitions on eleven 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, and have terminated all of the IPR proceedings.

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.

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 in March 2012, alleging infringement of its patent directed to monolithic battery chargers. In March 2013, 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. In June 2014, 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. In March 2014, 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.

Successful Resolution of Multiple IPR Proceedings on Behalf of Petitioner Samsung

Representation of Samsung Electronics Company, Ltd. as petitioner in nine IPR proceedings relating to mobile communications and network-enabled audio/video devices and players. Samsung prevailed in all nine of the IPR proceedings. After oral argument in two of the proceedings, the Board issued Final Written Decisions finding all challenged claims unpatentable. Black Hills requested adverse judgment on all challenged claims in five of the proceedings, and filed motions to amend to cancel the challenged claims in the remaining two proceedings.

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. On July 24, 2017, the Patent Trial and Appeal Board 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.

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. In October 2016, 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

Representing LifeCell Corporation as petitioner in an IPR proceeding challenging a patent owned by LifeNet Health directed to soft tissue graft compositions. Trial was instituted in March, with a final written decision due by March 2017, and the PTAB granted the patent owner’s request for adverse judgment in August 2016, cancelling all claims in the patent and handing our client LifeCell, a complete win.

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.

Representation of Elbit Against Petitions Filed by Hughes

Representation of Elbit Systems Land and C4I Ltd. in securing the PTAB’s denial of four separate Patent Office challenges over the course of 2016. In the latest decision, issued in mid-July 2016, the PTAB denied the fourth and final patent office challenge filed by Hughes Network Systems, LLC against Elbit’s patents. In November 2015, Hughes filed two petitions for inter partes review against Elbit’s ’073 patent, and one petition against Elbit’s ’874 patent, both of which are asserted against Hughes in the co-pending district court litigation. Hughes filed a second petition against the ’874 patent in January 2016. The PTAB denied the first challenge to the ’874 patent, and both challenges to the ’073 patent, in April. Hughes’s request for rehearing on the first petition also was rejected in July 2016.

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Covington Secures $21 Million Jury Trial Win for Elbit Systems in Patent Case

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 ...

Tessera, Covington Deal Blows to Broadcom in ITC and PTAB

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."

PTAB: no longer a death squad

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

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

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

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 ...

Two Former PTAB Judges Join Covington's Patent Office Trials Practice

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

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 ...

Two Former Patent Trial Board Judges Join Covington & Burling

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

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 ...

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