Inter Partes Review
Inter Partes Review challenges made possible by the 2012 America Invents Act have had a seismic impact on the course patent infringement litigation – giving defendants in infringement litigation the ability to pause litigation and immediately challenge a patent’s validity to the U.S. Patent and Trademark Office.
Heim, Payne & Chorush has developed deep experience representing clients in IPR proceedings before the U.S. Patent Trial and Appeal Board. Our team was the first to prevail on behalf of a patent owner in Inter Partes Review proceedings before the USPTO (ABB v Roy-G-Biv 2014). The firm has an active and growing IPR practice and has secured numerous IPR wins for patent holders and accused infringers.
Representative Cases
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.
HPC successfully defended multiple memory device-related patents owned by Advanced Memory Techs. LLC, persuading the PTAB to deny institution of all five challenges.
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.
HPC successfully defended multiple patents owned by Arigna Technology Ltd., confirming patentability of all but 5 claims of 8 patents challenged by multiple petitioners across multiple proceedings.
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.
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.
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 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.
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.
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.
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.
Practice Areas
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