Ropes & Gray is gunning not just for SecureAuth with this Appeal response but to shut the door on this process for any other infringer. With a huge legal wave in its favor now from the Supreme Court validating PTAB decisions to 'Alice' being kicked to the curb, Ropes & Gray is ready for SHOCK & AWE.
When the challenge was much more difficult with the PTAB review last year, Ropes & Gray showed why they were 43-0 in IP cases in 2016 (taking three cases to the Supreme Court) and continued that incredible success last year. This is taken from their website:
PATENT TRIAL & APPEAL BOARD (PTAB) PROCEEDINGS
Ropes & Gray’s intellectual property litigation group is renowned for its PTAB expertise. Having successfully navigated hundreds of proceedings on behalf of patent owners and patent challengers alike — including some of the seminal cases on administrative trial practices — Ropes & Gray leverages unparalleled forum expertise, insights and resources for its clients.
Ropes & Gray is home to one the country’s most experienced and successful PTAB trial practice groups. We have been at the forefront of these proceedings since their inception, filing the first ever challenge to a business method software patent in CBM2012-00001. This CBM challenge resulted in a final written decision that ordered the cancellation of all challenged claims. Our attorneys have also successfully represented a client in the only IPR proceeding to date that included live testimony before the Board, and are, month-to-month, repeatedly before many of the same judges of the PTAB. On the technology side, the Group has experience across a wide-range of technologies, from complex signaling protocols and consumer electronics devices to high-value pharmaceuticals.
Deep Bench. Ropes & Gray has a deep bench of legal professionals who know the ins-and-outs of the PTAB and know how to win there. The IP litigation team consists of more than 70 attorneys and Ph.D.-level technical advisors who have contributed to our PTAB success, including at least a dozen attorneys who have argued before the Board.
Practical Firsthand Experience. Ropes & Gray’s team has been involved in PTAB trials since the moment of its inception and knows firsthand the strategies and arguments that work before the Board, and more importantly given our consistent presence, the evolution of the agency away from trial practices that are no longer effective. We are able to draw on our extensive library of briefs, petitions and decisions to address many of the questions that arise in our ongoing PTAB matters, as well as in related ITC and district court proceedings.
Success for Both Petitioners and Patent Owners. Ropes & Gray has a record of continuous success in final written decisions before the PTAB for both petitioners and patent owners that no other firm can match. On behalf of petitioners, our attorneys have invalidated 98% of claims ruled on by the Board. We have also prevailed on behalf of numerous patent-owner clients at the PTAB, preventing review and findings of unpatentability of key litigated claims. Our deep experience on both sides of the “v.” gives us invaluable insights that we leverage on behalf of our clients.
Cross-Forum Team. A successful PTAB defense must include tightly integrated, cross-forum strategy. Ropes & Gray’s PTAB team include patent-focused district court litigators who are also registered to practice at the USPTO and technical subject matter specialists. Our litigators are regular members of the courtroom and International Trade Commission (ITC) trial teams, and understand the issues that can arise in coordinating district court, ITC and PTAB challenges. This coordination has become crucial as PTAB proceedings become an increasingly critical phase of a patent dispute.
Industry Experience. Our attorneys have handled PTAB proceedings for clients in all industries including electronics, computer sciences, financial services, semiconductors, medical devices, and pharmaceuticals. For example, our attorneys were involved in some of the first challenges to semiconductor patents and were also involved in an IPR proceeding related to the first patent challenges concerning marketed biologics.
PTAB Appeals. With PTAB appeals approaching 50% of the Federal Circuit’s docket, successful advocates must not only stand out from the crowd, but also build winning trial records from Day 1. The Ropes & Gray PTAB team has extensive experience appearing before and winning at the Federal Circuit and understands how to create a record at the PTAB that will withstand appellate review.
Examples of post-grant experience:
Unified Patents (IPR2017-02167). We filed a petition for inter partes review against one patent related to a pen-based transponder identity verification system. The PTAB instituted review of all claims.
Seakeeper, Inc. (IPR2017-01931, IPR2017-01996). We successfully represented Seakeeper in dismissing two IPR petitions concerning two patents related to a cooling apparatus for transferring heat from and cooling one or more heat generating components that support or drive a flywheel or other spinning member.
Strikeforce Technologies, Inc. (IPR2017-01041, IPR2017-01064). We successfully defended one Strikeforce patent related to a network authentication system in two IPR proceedings. The PTAB denied institution of both petitions.
AstraZeneca (IPR2017-00900, IPR2017-00904, IPR2017-00905, IPR2017-01913, IPR2017-01910, IPR2017-01912). Defended three patents relating to a treatment for breast cancer. The PTAB denied institution of the petitions.
Emerson Electric (CBM2016-00095, IPR2016-01602, IPR2016-01895, IPR2017-00001, IPR2017-00007, IPR2017-00008). We filed petitions against five separate patents related to network routing. The Board found all challenged claims unpatentable.
Sioux Steel Company (IPR2016-01873). We successfully defended Sioux Steel in an IPR proceeding brought by competitor Prairie Land Millwright Services, Inc. The Board found all 28 claims of the patent unpatentable.
A Leading U.S. Multinational Technology Company (IPR2016-01522). We filed a petition for IPR review challenging a patent related to security in a communications network. The Board issued a final written decision finding all challenged claims unpatentable.
medac GmbH (IPR2014-01091, IPR2016-00649, IPR2016-01370). We defended a medac patent related to concentrated methotrexate solutions for the treatment of inflammatory autoimmune diseases in three separate IPRs filed by different petitioners. While the first two IPRs were settled by agreement of the parties, the third proceeded to final written decision, where the Board found all instituted claims not unpatentable—securing a win for medac.
Samsung Electronics (IPR2016-00652, IPR2016-00653, IPR2016-00654, IPR2016-00655). We filed four inter partes review petitions challenging four patents relating to touch screens. The Board issued final written decisions finding all challenged claims unpatentable on two separate grounds.
Advanced Media Networks (IPR2016-00628, IPR2016-00629, IPR2016-00795, & IPR2016-00796). We successfully defended patents directed to mobile WiFi technology. All challenges denied by the PTAB.*
ClearCorrect Operating LLC. (IPR2016-00270). All challenged claims of a patent directed to Invisalign® dental appliances canceled. Appeal pending before the CAFC.
A Leading Global Pharmaceutical Company (IPR2016-00102). We represented a global pharmaceutical company in an IPR challenging a patent relating to its blockbuster product. The Board found in favor of our client and invalidated as obvious all of the challenged claims of the asserted patent.
Samsung Electronics (IPR2015-01232, IPR2015-01233). We filed inter partes review petitions challenging two patents relating to lighting systems for digital images. The PTAB found all challenged claims unpatentable.
Senju (IPR2015-01205). Co-lead counsel in an inter partes review with a corresponding ANDA litigation for a leading biopharmaceutical company.*
Nevro Corp. (IPR2015-01204, IPR2015-01203). We successfully defended one Nevro patent relating to selective high-frequency spinal cord modulation for inhibiting pain with reduced side effects. The Board denied, in their entirety, a pair of petitions filed by Boston Scientific Neuromodulation Corporation.
A Leading Multinational Technology Company (IPR2015-00090, -00091, -00197, -00200-202, -00206-207, -00210-212, -00215, -00235-236). Filed 14 IPRs against the former Nortel patent portfolio relating to telecommunication methodologies and interfaces. Settled on behalf of client.*
Allscripts (CBM2015-00022). We filed a petition for CBM review challenging a patent related to a method and system for providing online records. The PTAB issued a final written decision finding all challenged claims unpatentable.
Samsung Electronics (IPR2014-00209, IPR2014-00212, IPR2014-00407, IPR2014-00408, IPR2014-01181, IPR2014-01182, IPR2014-01184, IPR2015-00820, IPR2015-00821). In matters adverse to Affinity Labs, we filed IPR petitions challenging three litigated patents generally relating to the delivery of Internet media content to a portable device. The PTAB issued final written decisions finding all challenged claims unpatentable, which were affirmed on appeal.
A Major Biopharmaceutical Company. (IPR2013-00537, IPR2013-00534). Counsel in an inter partes review for a leading biopharmaceutical company relating to the first patent challenges concerning marketed biologics.*
RR Donnelley & Sons Co. (IPR2013-00529, IPR2013-00538). We successfully defended two RR Donnelley patents relating to high resolution real time raster image processing in inter partes review petitions filed by petitioner Xerox Corp. The Board denied institution as to the majority of the challenged claims and the parties subsequently settled.
Liberty Mutual Insurance Company (CBM2012-00002, CBM2012-00003, CBM2012-00004, CBM2013-00003, CBM2013-00004, CBM2013-00009). We filed six petitions for covered business method review in defending Liberty Mutual against assertions of three different patents relating to determining a cost of insurance based on vehicle monitoring in Progressive Casualty Insurance Co. v. Safeco Insurance Co., et al. After our ex parte reexamination of the originally asserted patent resulted in Progressive’s amendment of every remaining claim while litigation was stayed, we filed CBM petitions challenging the amended claims and two later-asserted patents. The Board initiated CBM trials on every claim of these three patents, and we successfully stayed the related district court litigation – one of the first litigation stay decisions involving CBM proceedings. The Board issued final written decisions cancelling every challenged claim.
SAP AG (CBM2012-00001). We represented SAP, as co-counsel, in a CBM trial challenging a Versata patent involving product pricing in multi-level product and organizational groups. This CBM trial – the very first to be initiated – went to oral argument before the Board on April 17, 2013 on the issue of invalidity under 35 U.S.C. § 101, and the Board issued a final written decision in favor of SAP on June 11, 2013, finding every challenged claim invalid for failure to claim patentable subject matter under § 101.
We have also advised clients in numerous other post-AIA patent challenges where our participation has not been publicly disclosed, or where petitions have been prepared but have not yet been filed.
When the challenge was much more difficult with the PTAB review last year, Ropes & Gray showed why they were 43-0 in IP cases in 2016 (taking three cases to the Supreme Court) and continued that incredible success last year. This is taken from their website:
PATENT TRIAL & APPEAL BOARD (PTAB) PROCEEDINGS
Ropes & Gray’s intellectual property litigation group is renowned for its PTAB expertise. Having successfully navigated hundreds of proceedings on behalf of patent owners and patent challengers alike — including some of the seminal cases on administrative trial practices — Ropes & Gray leverages unparalleled forum expertise, insights and resources for its clients.
Ropes & Gray is home to one the country’s most experienced and successful PTAB trial practice groups. We have been at the forefront of these proceedings since their inception, filing the first ever challenge to a business method software patent in CBM2012-00001. This CBM challenge resulted in a final written decision that ordered the cancellation of all challenged claims. Our attorneys have also successfully represented a client in the only IPR proceeding to date that included live testimony before the Board, and are, month-to-month, repeatedly before many of the same judges of the PTAB. On the technology side, the Group has experience across a wide-range of technologies, from complex signaling protocols and consumer electronics devices to high-value pharmaceuticals.
Deep Bench. Ropes & Gray has a deep bench of legal professionals who know the ins-and-outs of the PTAB and know how to win there. The IP litigation team consists of more than 70 attorneys and Ph.D.-level technical advisors who have contributed to our PTAB success, including at least a dozen attorneys who have argued before the Board.
Practical Firsthand Experience. Ropes & Gray’s team has been involved in PTAB trials since the moment of its inception and knows firsthand the strategies and arguments that work before the Board, and more importantly given our consistent presence, the evolution of the agency away from trial practices that are no longer effective. We are able to draw on our extensive library of briefs, petitions and decisions to address many of the questions that arise in our ongoing PTAB matters, as well as in related ITC and district court proceedings.
Success for Both Petitioners and Patent Owners. Ropes & Gray has a record of continuous success in final written decisions before the PTAB for both petitioners and patent owners that no other firm can match. On behalf of petitioners, our attorneys have invalidated 98% of claims ruled on by the Board. We have also prevailed on behalf of numerous patent-owner clients at the PTAB, preventing review and findings of unpatentability of key litigated claims. Our deep experience on both sides of the “v.” gives us invaluable insights that we leverage on behalf of our clients.
Cross-Forum Team. A successful PTAB defense must include tightly integrated, cross-forum strategy. Ropes & Gray’s PTAB team include patent-focused district court litigators who are also registered to practice at the USPTO and technical subject matter specialists. Our litigators are regular members of the courtroom and International Trade Commission (ITC) trial teams, and understand the issues that can arise in coordinating district court, ITC and PTAB challenges. This coordination has become crucial as PTAB proceedings become an increasingly critical phase of a patent dispute.
Industry Experience. Our attorneys have handled PTAB proceedings for clients in all industries including electronics, computer sciences, financial services, semiconductors, medical devices, and pharmaceuticals. For example, our attorneys were involved in some of the first challenges to semiconductor patents and were also involved in an IPR proceeding related to the first patent challenges concerning marketed biologics.
PTAB Appeals. With PTAB appeals approaching 50% of the Federal Circuit’s docket, successful advocates must not only stand out from the crowd, but also build winning trial records from Day 1. The Ropes & Gray PTAB team has extensive experience appearing before and winning at the Federal Circuit and understands how to create a record at the PTAB that will withstand appellate review.
Examples of post-grant experience:
Unified Patents (IPR2017-02167). We filed a petition for inter partes review against one patent related to a pen-based transponder identity verification system. The PTAB instituted review of all claims.
Seakeeper, Inc. (IPR2017-01931, IPR2017-01996). We successfully represented Seakeeper in dismissing two IPR petitions concerning two patents related to a cooling apparatus for transferring heat from and cooling one or more heat generating components that support or drive a flywheel or other spinning member.
Strikeforce Technologies, Inc. (IPR2017-01041, IPR2017-01064). We successfully defended one Strikeforce patent related to a network authentication system in two IPR proceedings. The PTAB denied institution of both petitions.
AstraZeneca (IPR2017-00900, IPR2017-00904, IPR2017-00905, IPR2017-01913, IPR2017-01910, IPR2017-01912). Defended three patents relating to a treatment for breast cancer. The PTAB denied institution of the petitions.
Emerson Electric (CBM2016-00095, IPR2016-01602, IPR2016-01895, IPR2017-00001, IPR2017-00007, IPR2017-00008). We filed petitions against five separate patents related to network routing. The Board found all challenged claims unpatentable.
Sioux Steel Company (IPR2016-01873). We successfully defended Sioux Steel in an IPR proceeding brought by competitor Prairie Land Millwright Services, Inc. The Board found all 28 claims of the patent unpatentable.
A Leading U.S. Multinational Technology Company (IPR2016-01522). We filed a petition for IPR review challenging a patent related to security in a communications network. The Board issued a final written decision finding all challenged claims unpatentable.
medac GmbH (IPR2014-01091, IPR2016-00649, IPR2016-01370). We defended a medac patent related to concentrated methotrexate solutions for the treatment of inflammatory autoimmune diseases in three separate IPRs filed by different petitioners. While the first two IPRs were settled by agreement of the parties, the third proceeded to final written decision, where the Board found all instituted claims not unpatentable—securing a win for medac.
Samsung Electronics (IPR2016-00652, IPR2016-00653, IPR2016-00654, IPR2016-00655). We filed four inter partes review petitions challenging four patents relating to touch screens. The Board issued final written decisions finding all challenged claims unpatentable on two separate grounds.
Advanced Media Networks (IPR2016-00628, IPR2016-00629, IPR2016-00795, & IPR2016-00796). We successfully defended patents directed to mobile WiFi technology. All challenges denied by the PTAB.*
ClearCorrect Operating LLC. (IPR2016-00270). All challenged claims of a patent directed to Invisalign® dental appliances canceled. Appeal pending before the CAFC.
A Leading Global Pharmaceutical Company (IPR2016-00102). We represented a global pharmaceutical company in an IPR challenging a patent relating to its blockbuster product. The Board found in favor of our client and invalidated as obvious all of the challenged claims of the asserted patent.
Samsung Electronics (IPR2015-01232, IPR2015-01233). We filed inter partes review petitions challenging two patents relating to lighting systems for digital images. The PTAB found all challenged claims unpatentable.
Senju (IPR2015-01205). Co-lead counsel in an inter partes review with a corresponding ANDA litigation for a leading biopharmaceutical company.*
Nevro Corp. (IPR2015-01204, IPR2015-01203). We successfully defended one Nevro patent relating to selective high-frequency spinal cord modulation for inhibiting pain with reduced side effects. The Board denied, in their entirety, a pair of petitions filed by Boston Scientific Neuromodulation Corporation.
A Leading Multinational Technology Company (IPR2015-00090, -00091, -00197, -00200-202, -00206-207, -00210-212, -00215, -00235-236). Filed 14 IPRs against the former Nortel patent portfolio relating to telecommunication methodologies and interfaces. Settled on behalf of client.*
Allscripts (CBM2015-00022). We filed a petition for CBM review challenging a patent related to a method and system for providing online records. The PTAB issued a final written decision finding all challenged claims unpatentable.
Samsung Electronics (IPR2014-00209, IPR2014-00212, IPR2014-00407, IPR2014-00408, IPR2014-01181, IPR2014-01182, IPR2014-01184, IPR2015-00820, IPR2015-00821). In matters adverse to Affinity Labs, we filed IPR petitions challenging three litigated patents generally relating to the delivery of Internet media content to a portable device. The PTAB issued final written decisions finding all challenged claims unpatentable, which were affirmed on appeal.
A Major Biopharmaceutical Company. (IPR2013-00537, IPR2013-00534). Counsel in an inter partes review for a leading biopharmaceutical company relating to the first patent challenges concerning marketed biologics.*
RR Donnelley & Sons Co. (IPR2013-00529, IPR2013-00538). We successfully defended two RR Donnelley patents relating to high resolution real time raster image processing in inter partes review petitions filed by petitioner Xerox Corp. The Board denied institution as to the majority of the challenged claims and the parties subsequently settled.
Liberty Mutual Insurance Company (CBM2012-00002, CBM2012-00003, CBM2012-00004, CBM2013-00003, CBM2013-00004, CBM2013-00009). We filed six petitions for covered business method review in defending Liberty Mutual against assertions of three different patents relating to determining a cost of insurance based on vehicle monitoring in Progressive Casualty Insurance Co. v. Safeco Insurance Co., et al. After our ex parte reexamination of the originally asserted patent resulted in Progressive’s amendment of every remaining claim while litigation was stayed, we filed CBM petitions challenging the amended claims and two later-asserted patents. The Board initiated CBM trials on every claim of these three patents, and we successfully stayed the related district court litigation – one of the first litigation stay decisions involving CBM proceedings. The Board issued final written decisions cancelling every challenged claim.
SAP AG (CBM2012-00001). We represented SAP, as co-counsel, in a CBM trial challenging a Versata patent involving product pricing in multi-level product and organizational groups. This CBM trial – the very first to be initiated – went to oral argument before the Board on April 17, 2013 on the issue of invalidity under 35 U.S.C. § 101, and the Board issued a final written decision in favor of SAP on June 11, 2013, finding every challenged claim invalid for failure to claim patentable subject matter under § 101.
We have also advised clients in numerous other post-AIA patent challenges where our participation has not been publicly disclosed, or where petitions have been prepared but have not yet been filed.
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