REPRESENTATIVE EXPERIENCE
Post-Grant Patents
Filed and prosecuted an inter partes reexamination of a Baker Hughes patent related to the crude oil desalting process. Successfully cancelled claims asserted in companion district court action. The decision was affirmed on appeal to the PTAB and the Federal Circuit.
Served as counsel for a provider of alternative aftermarket, specialty salvage, and recycled auto parts in a patent infringement action. The technology involved was a method for refurbishing headlamp surfaces. Defeated motion to amend, and half of the claims were found unpatentable at IPR and affirmed by the Federal Circuit. The remaining claims were found invalid on summary judgment by the District Court.
Counseled an industrial gas and engineering company in an IPR involving an ion implantation system for semiconductor manufacturing. All claims were found unpatentable. A Federal Circuit appeal was not pursued.
Served as counsel for a rail technology company in a competitor law suit involving 13 patents regarding positive train control and other train-based technologies. Received unpatentability decisions on six of the patents-in-suit (in addition to one non-asserted patent). Case settled following district court trial.
Served as counsel to a provider of distributed-capture check scanners for branch automation and remote deposit capture applications in a multi-patent infringement action. The technology involved was a digital microform imaging apparatus. Numerous challenged claims were found unpatentable. The District Court case settled favorably following the IPR process.
Served as counsel for a provider of visual collaboration solutions in a dispute regarding image capture and processing technology. Successfully defeated a motion to amend;13 of 15 instituted claims were found unpatentable.
Represented a developer of medical devices for minimally invasive and open surgical procedures in litigation involving a bipolar electrosurgical instrument. All claims were invalidated. Federal Circuit appeal was withdrawn.
Served as counsel to a manufacturer of products for optical communications networks as Petitioner in an IPR involving technology regarding optical switching for fiber. Successfully navigated the proceeding through the cancellation of the majority of the instituted claims while defeating a motion to amend in the process.
Filed an IPR petition on behalf of an aviation and aerospace component manufacturer against a developer of aircraft configurations and enabling technologies that improve the safety and sustainability of flight.
Served as counsel for a multinational technology company and a cloud data services and data management company as Petitioners in a multi-defendant multi-patent litigation involving a variety of storage and networking-related patents. Successfully reduced the scope of the case from six patents to two by way of IPR decisions and elicited claim construction language that assisted in the co-pending district court litigation.
Served as counsel for a financial services, merchant services aggregator, and mobile payment company as Petitioner in a two-patent IPR challenge involving location-based notification technology. Successfully navigated the IPR proceedings, leading to a finding of unpatentability for all challenged claims. No appeal was pursued.