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Gregory Discher

Of Counsel

Washington +1 202 662 5485

  • About
  • Representative Matters
  • Credentials
  • About

    Gregory Discher's practice focuses on inter partes and ex parte post grant trials and proceedings, and complex patent prosecution before the U.S. Patent and Trademark Office, and patent infringement, invalidity, freedom-to-operate, and due diligence investigations and opinions. Gregory provides strategic advice to clients in connection with developing, obtaining, protecting, managing, and enforcing intellectual property rights in accordance with business objectives, and has represented clients in United States District Courts, the U.S. International Trade Commission, and the U.S. Court of Appeals for the Federal Circuit.

    Gregory’s extensive experience in Inter Partes Review (IPR) trials includes having served as counsel for over forty post grant matters, representing both petitioners and patent owners through oral argument. Gregory has also successfully represented clients in ex parte and inter partes reexamination proceedings, and patent reissue proceedings.

    Gregory’s technical background and experience encompasses a variety of Internet, telecommunications, networking, and messaging technologies and protocols, software and software-related inventions, semiconductor device and fabrication technologies, display technologies, electronics, electronic commerce, and mechanical technologies.

    Areas of Expertise

  • Practices and Industries
  • Representative Matters
    • Representation of Texas Instruments Incorporated as petitioner in three IPR proceedings pertaining to graphics texture caching, processing using multiple graphics pipelines, and memory controllers. The IPR proceedings were settled and terminated prior to institution.
    • Representation of The New York Times Company and CBS Interactive, Inc. as petitioners in one inter partes review (IPR) trial and as requesters in seven inter partes reexamination proceedings in connection with patents held by Helferich Patent Licensing, LLC. The patents relate to cell phone messaging and have been asserted in District Court litigations. The PTAB found all 41 challenged claims unpatentable in the IPR trial, which was confirmed by the Federal Circuit in April 2015. All of the inter partes reexamination requests have been granted, with every requested claim rejected in all seven proceedings.
    • Representation of Samsung Electronics Company, Ltd. as petitioner in nine IPR proceedings in connection with patents owned by Black Hills Media relating to mobile communications and network-enabled audio/video devices and players. Black Hills requested adverse judgment on all challenged claims in five IPR trials, and filed motions to amend to cancel the challenged claims in two other trial. Conducted oral argument at PTAB on behalf of Samsung for one IPR.
    • Representation of Shoe Show, Inc. as requester in two inter partes reexamination proceedings currently on appeal before the Federal Circuit. The PTAB rejected 23 out of 26 claims, and a District Court stayed a litigation in which the patent owner asserted both patents. DSW Inc. and DSW Shoe Warehouse, Inc. v. Shoe Show, Inc. 11cv01797 (N.D. Ohio). Conducted oral argument at PTAB on behalf of Shoe Show for both inter partes reexaminations.
    • Representation of Knowles Electronics, LLC as patent owner in three IPR proceedings relating to silicon microphone packages and MEMS microphones. The IPR proceedings were terminated pursuant to favorable settlement just prior to the one year deadline for Final Written Decisions that the PTAB would have issued for two of the IPRs. Conducted oral argument at PTAB on behalf of Knowles for one IPR.

    • Representation of Samsung Electronics Company, Ltd. as petitioner in two IPR proceedings in connection with patents owned by Boston University relating to gallium nitride semiconductor devices. The IPR proceedings were terminated pursuant to favorable settlement.
    • Representation of Peregrine Semiconductor as patent owner in an IPR proceeding brought by RF Micro Devices in connection with a patent directed to high frequency RF switches for 4G access technologies. The IPR proceeding was terminated pursuant to favorable settlement.
    • Representation of Bockstar Technologies LLC as patent owner in IPR proceedings brought by Cisco Systems Inc., challenging the validity of four patents related to routers, switches, and computerized telephony. The PTAB denied institution of trial for one IPR, and instituted trial of a second IPR for only a single claim of sixteen challenged claims. The IPR proceedings were terminated pursuant to favorable settlement.
    • Representation of Verizon Long Distance LLC as requester in two inter partes reexamination proceedings relating to patents directed to Voice over Internet Protocol (“VoIP”) technology. The USPTO terminated the reexamination proceedings pursuant to favorable settlement of underlying District Court litigation.
    • Representation of Ariba, Inc. as patent owner in a Covered Business Method trial relating to an operating resource management system for the automated purchase of goods, which was terminated pursuant to favorable settlement.
    • Representation of Ariba, Inc. as requester in two inter partes reexamination proceedings relating to patents held by Supply Chain Connect, Inc. and asserted in litigations. Favorable settlement for client obtained pursuant to filing of reexamination requests. The USPTO issued reexamination certificates cancelling all requested claims.
    • Representation of Return Mail, Inc. in obtaining issuance of reexamination certificate for US Patent No. 6,826,548 in a merged ex parte reexamination and reissue proceeding. The ‘548 patent is currently asserted against the United States in the Court of Federal Claims. Return Mail, Inc. v. The United States (11-130C).
    • Representation of Out RAGE, LLC in obtaining issuance of reissue patent RE44,144, which was asserted in litigation. Out RAGE, LLC v. New Archery Products, Corp. 13cv240) (W.D. Wis.).
    • Representation of Out RAGE, LLC as patent owner in inter partes reexamination proceeding relating to a patent directed to archery equipment. The USPTO terminated the reexamination proceeding pursuant to favorable settlement of underlying District Court litigation.
    • Representation of Trend Micro Incorporated, and Fujitsu Limited in ex parte reexamination proceedings.
     Patent Litigation
    • Represented and secured favorable settlement for JP Morgan in patent litigation pertaining to check processing and electronic funds transfer technology. LML Patent Corp. v. JP Morgan Chase & Co. et al., 08cv448 (E.D. Tex).
    • Represented and secured favorable settlement for Samsung Electronics Co. Ltd. and Samsung Electronics America, Inc. in a patent infringement matter involving digital micromirror devices and digital light processing technology. Genoa Color Technologies, Ltd. v. Mitsubishi Electric Corp. et al. 07cv6233) (S.D.N.Y).
    • Represented and secured favorable settlement for JP Morgan Chase Bank, N.A. in multi-patent litigation pertaining to customized marketing and provision of financial products. Phoenix Licensing, L.L.C., et al. v. Chase Manhattan Mortgage Corporation et al. 07cv387) (E.D. Tex.).
    • Represented and secured favorable settlement for Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America in a multi-patent ITC proceeding involving memory architecture that provides improved information transfer between processor devices and enhances the speed of inter-processor communication in a multi-processor architecture. In the Matter of Certain Electronic Devices, Including Handheld Wireless Communications Devices (337-TA-667 and 337 TA 673).
    • Represented of Broadcom Corporation as complainant against respondent Qualcomm Incorporated in a multi-patent ITC proceeding involving wireless technology and chipsets, resulting in limited exclusion order and cease and desist order. Baseband Processor Chips and Chipsets, Transmitter and Receiver (Radio) Chips, Power Control Chips, and Products Containing Same, Including Cellular Telephone Handsets (337-TA-543).
    • Represented and secured favorable settlement for Skyworks Solutions, Inc. as defendant and counter-claim plaintiff in a multi-patent litigation involving wireless circuit technology for use in digital cellular and global positioning systems. Qualcomm Inc. v. Conexant Systems Inc. et al. 02cv02002 (S.D. Cal.).

    Patent Prosecution

    • Representation of company in obtaining patent protection for archery products.
    • Representation of company in obtaining patent protection for data mining techniques for use in determining suitable chemical probes in connection with drug development.
    • Representation of company in obtaining patent protection for recycling techniques for glass, plastic and paper-based articles and for transport and management of liquids and gasses in landfill management system.
    • Representation of company in obtaining patent protection for transport and management of liquids and gasses in landfill management system.
    • Strategic patent prosecution advice and representation of various software, internet, media, telecommunication, semiconductor, medical and financial companies before the U.S. Patent and Trademark Office.

    Areas of Expertise

  • Credentials
    Education
    • George Mason University School of Law, J.D.
    • George Mason University, M.S.
    • University of Michigan, B.S.
    • Purdue University, B.S.
    Bar Admissions
    • District of Columbia
    • U.S. Court of Appeals for the Federal Circuit
    • U.S. Patent and Trademark Office
    • Virginia
    Pro Bono
    • Representation of individual inventor in obtaining patent pertaining to use of eye movements to communicate.
    • Representation of individual inventor in obtaining business method patent.
    Memberships and Affiliations
    • American Intellectual Property Law Association
    • Phi Kappa Phi
    • Beta Gamma Sigma
    Previous Experience
    • Gregory worked as an engineer for over thirteen years in both private sector and government positions, where he gained experience in a number of engineering and software disciplines including systems engineering and integration, communication systems engineering, test and evaluation, and modeling and simulation.
    • Immediately prior to beginning his career in intellectual property law, Gregory was employed by The MITRE Corporation, where he conducted analyses concerning the feasibility and utility of using computer models and distributed hardware-in-the-loop simulation to reduce risk and assess performance and interoperability of theater ballistic missile defense systems.

    Areas of Expertise

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