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Inter Partes Review

Heim, Payne & Chorush is one of the country’s busiest and top-performing firms before the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board. Our patent litigators have handled hundreds of PTAB matters, including winning one of the first inter partes review (IPR) proceedings on behalf of a patent owner in U.S. history.

IPR challenges have had a seismic impact on patent infringement lawsuits by giving defendants additional avenues to challenge patent validity, often delaying or avoiding district court trials. Heim, Payne & Chorush has successfully navigated IPRs for patent holders and accused infringers since the PTAB was launched in 2012.

Our experienced IPR professionals develop effective, coordinated strategies that align with underlying federal court litigation to provide maximum impact. This includes addressing prior art, drafting petitions and responses, managing expert witnesses, amending claims, conducting depositions, presenting evidence during oral hearings, negotiating settlements, and pursuing appeals from USPTO decisions.

The PTAB Intelligence Report, published by the respected intellectual property research firm Patexia Inc., consistently ranks Heim, Payne & Chorush among the nation’s leaders in IPR, most recently as one of the Top 10 Performing Law Firms and Top 25 Most Active Law Firms before the PTAB from 2020 to 2025.

The following matters represent the firm’s latest IPR matters and provide a clear example of our expertise in these cases. Contact us for more information about how we can help you navigate your next IPR.

Representative Cases

Taiwan Semiconductor Manufacturing Co., Ltd. v. Advanced Integrated Circuit Process LLC, IPR2025-00682, -00683, -00828, -00829, -00830, -00831, -00832, -01305, -01210, -01211, -01212, -01305; United Microelectronics Corp. v. Advanced Integrated Circuit Process LLC, IPR2025-01053, -01076, -01079, - 01090, -01091, -01092, -01093

HPC successfully defended multiple semiconductor patents owned by Advanced Integrated Circuit Process LLC against numerous IPR challenges, persuading the PTAB to deny institution in 18 out of 19 proceedings filed by defendants Taiwan Semiconductor Manufacturing Co., Ltd. and United Microelectronics Corp.

SK Hynix Inc. v. Advanced Memory Techs. LLC, IPR2025-01449 to -01453

HPC successfully defended multiple memory device-related patents owned by Advanced Memory Techs. LLC, persuading the PTAB to deny institution of all five challenges.

Samsung Electronics. Co. Ltd. v. Four Batons Wireless, LLC, IPR2025-00493 to - 00496

HPC successfully defended multiple wireless network communications-related patents owned by Four Batons Wireless, LLC, persuading the PTAB to deny institution of all four challenges.

Rockwell Automation, Inc. and Rockwell Automation Techs., Inc. v. Automation Middleware Solutions, Inc (IPR2017-00023; IPR2017-00048; IPR2017-00049; IPR2017-00469; IPR2017-00470)

Rockwell Automation challenged five different patents belonging to Automation Middleware Solutions. Attorneys for Heim, Payne & Chorush LLP were retained to assist with the inter partes review proceeding. In each of the five IPRs, the PTAB declined to institute trial, finding that Petitioners had failed to show a reasonable likelihood of success on their obviousness challenges for multiple reasons.

LG Electronics, Inc., et al. v. Wi-LAN Inc., et al., (IPR2018-00704)

Wi-LAN retained HPC to represent it in defending against an IPR petition challenging Wi-LAN’s patent relating to pre-allocating identifiers to wireless devices when handing over communications from one base station to another. The PTAB declined to institute trial, finding that Patent Owner had adequately established conception and diligence needed to antedate a reference that was part of the proposed obviousness combination.

LG Electronics, Inc., et al. v. Wi-LAN Inc., et al. (IPR2018-00709, IPR2018-00710)

Wi-LAN retained HPC to represent it in defending against two IPR petitions challenging Wi-LAN’s patent relating to methods of operating a mobile device by allocating available bandwidth to logical channel queues having differing qualities of service. The PTAB declined to institute trial in both IPRs, finding that Patent Owner had adequately established written description support in a parent application for the claims thus antedating asserted references and that Petitioner had failed to show that one asserted reference was entitled to its claimed provisional application priority date.

Weatherford International, LLC, et al. v. Packers Plus Energy Services Inc. (IPR2016-01509, IPR2016-01514, IPR2016-01517)

Weatherford retained HPC in partnership with another firm to represent it as Petitioner challenging several patents on which Weatherford had been sued. After a consolidated trial, the PTAB held in final written decisions that all challenged claims in the three challenged patents were unpatentable on two different obviousness grounds.

LG Electronics U.S.A., Inc. and LG Electronics, Inc. v. Rosetta-Wireless Corp., (IPR2016-01516)

Rosetta retained HPC to represent it in defending against an IPR petition challenging Rosetta’s patent concerning a wireless intelligent personal server. In its Petition, LG presented two grounds based on combinations of seven different references. The PTAB declined to institute trial, finding that LG’s evidence did not show that the references relied upon qualified as prior art.

Unified Patents Inc. v. Red Rock Analytics, LLC (IPR2017-01490)

Red Rock Analytics, LLC retained HPC to represent it in a patent infringement case against Samsung. Several months later, Unified Patents Inc. file an inter partes review petition challenging Red Rock’s patent. Red Rock retained a partnering law firm to serve as counsel-of-record in the Unified IPR. HPC attorneys worked closely with attorneys from the firm to plan and draft Red Rock’s preliminary response. The PTAB declined to institute trial, finding that Petitioner had failed to show a reasonable likelihood of success on their obviousness challenges for multiple reasons.

Samsung Electronics Co. Ltd. v. Red Rock Analytics, LLC (IPR2018-00555; IPR2018-00556; IPR2018-00557)

On February 5, 2018, Samsung filed three different IPRs challenging Red Rock’s patent relating to calibration of IQ imbalances in transceivers. Red Rock retained a partnering firm to serve as counsel-of-record in the Samsung IPRs. HPC attorneys worked closely with attorneys from the firm to plan and draft Red Rock’s preliminary responses. The PTAB declined to institute trial in all three proceedings, finding that Petitioner had failed to show a reasonable likelihood of success on their obviousness challenges for multiple reasons.

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