Patent Office Litigation

The validity of patents may be challenged in several different types of proceedings that take place before the Patent Trial and Appeal Board (PTAB), which is an arm of the United States Patent and Trademark Office (USPTO). These proceedings include post grant reviews, inter partes reviews, covered business method patent reviews, derivation proceedings, and interferences.  Our patent and trial attorneys have handled numerous PTAB proceedings.  These proceedings are often a critical part of an overall litigation strategy.  For example, inter partes reviews have been used to obtain a stay of litigation in court, stopping the litigation until a decision is reached by the USPTO on the patentability of the claims.  If successful, the inter partes review can terminate or settle the overall litigation between the parties.  Some examples of inter partes reviews and interferences handled by our attorneys are set forth below.


Samsung Electronics Co., Ltd. v. Arendi S.A.R.L. (IPR2014-00214.) Samsung attacked our client’s patent in the Patent Trial and Appeal Board (PTAB) on grounds of obviousness. We persuaded the PTAB that an element of the claims was not disclosed by the cited references and thus prevented the inter partes review from even being instituted.

Motorola Mobility LLC, Google Inc., and Apple Inc. v. Arendi S.A.R.L. (IPR2014-00203.) Motorola, Google and Apple attacked the same patent as Samsung raising several additional grounds. Our arguments carried the day and the inter partes review was not instituted, freeing our client’s patent for unfettered assertion in court.

Arendi S.A.R.L. v. Apple Inc., Google Inc., Motorola Mobility LLC (Federal Circuit 15-2073, appeal of IPR2014-00208.) Sunstein scored a victory on behalf of its client Arendi by obtaining a reversal of a PTAB decision that had invalidated Arendi’s patent. The court warned against using so-called common sense as a wholesale substitute for reasoned analysis to show how prior art combined with extraneous knowledge or insight might invalidate a patent claim. The Federal Circuit reversed the PTAB’s finding of unpatentability outright rather than remand the case for further consideration because it found no evidence in the record to suggest that Arendi’s technique was obvious

Analog Devices, Inc. (IPR2013-00108) – We filed a petition for inter partes review against U.S. Patent No. 7,439,616. Earlier, we had filed inter partes reexaminations in rapid response to a district court action for patent infringement. We followed up with several more reexaminations. Worldwide litigation involving these and other patents was settled a couple months after the inter partes review was filed. The inter partes review was terminated upon submission of the settlement agreement.

New Bay Capital, LLC (IPR2013-375, 376, 377, 378) – We filed four petitions for inter partes review attacking four patents owned by VirnetX Inc. These patents are all involved in litigation used by VirnetX to obtain a jury award of over $360 million against Apple, Inc.

Source MDx (No. 95/001,032.) – We handled inter partes reexamination of a patent pioneering the use of gene expression profiles to detect presence of biological conditions.

Surmodics and its exclusive licensee Abbott Laboratories (No. 90/006,785) – We defended an ex parte reexamination related to a method for conducting an immunoassay. We won a reexamination certificate to amended patent claims that roughly corresponded to the claim scope successfully asserted against an infringer in earlier litigation. We formulated a question of first impression for the Federal Circuit as to when a reexamination can be brought on prior art previously considered by the federal courts. In re Swanson, 540 F.3d 1368 (Fed. Cir. 2008).

Prosensa B.V. (No. 90/011,320) – We filed a request for reexamination of Prosensa’s U.S. Patent 7,534,879 for exon skipping oligonucleotides to treat Duchenne muscular dystrophy to confirm patentability over additional prior art, and obtained a certificate of reexamination without amending the claims.

Color Coded Label Apparatus (No. 90/005,316) – Our careful amendments to the claims achieved an allowance and a reexamination certificate. Most importantly a District Court later ruled that the claims did not change in substance thereby allowing our client to claim infringement damages back to the issuance of the patent. Engineered Data Products v. GBS Corp., 506 F.Supp.2d 461 (D. Colo. 2007).

Caching on a Network (No.90/009,108, No. 90/009,110, No. 90/009,111, No.90/009,385) – The Superspeed software patents were successfully litigated to settlements with Oracle and then IBM. We defended the reexaminations filed by IBM and obtained allowance of minimally amended claims. Some of the patents are now asserted against Google.

JPEG reexamination (No. 90/007,808) – We handled reexamination of a patent relating to JPEG technology.

Video Game inter partes reexaminations (No. 95/000,408, No. 95/000409 and No. 95/000,410) – In addition to filing ex parte reexamination requests for some older related patents, inter partes reexaminations were instituted against three patents of interest.


University of Western Australia v. Academisch Ziekenhuis Leiden (Patent Interference No. 106,013.) We obtained a judgment in favor of its client. The technology concerns antisense oligonucleotides.

Kotowski et al. v. Mastronardi et al. (Patent Interference No. 105,890), United States Patent and Trademark Office, Patent Trial and Appeal Board. We obtained a win for our client American Science and Engineering in an interference proceeding against its competitor Rapiscan Systems. AS&E’s invention concerns backscatter x-ray technology.

Thompson et al. v. Normand et al. (Patent Interference No. 103,347) United States Patent and Trademark Office, Board of Patent Appeals and Interferences. We obtained a win for our client Deka Research and Development in an interference proceeding. The invention concerns a medical device for delivery fluid at constant pressure.

Schmieding v. McGuire et al. (Patent Interference No. 104,007) United States Patent and Trademark Office, Board of Patent Appeals and Interferences. We obtained a win for our client Dr. David McGuire in an interference proceeding. The invention concerns a surgical instrument and method.

Bioactive Laboratories v. BTG International Inc. This IPR involved a snake antivenom. The preliminary response persuaded the PTAB to decline to institute an IPR of its patent.

Cooper v. Goldfarb. This patent interference involved enormously valuable vascular graft technology, and was the longest-running patent interference in USPTO history. The client prevailed in three Board of Patent Appeals and Interferences decisions and two Federal Circuit appeals. The resulting patent issued in 2002 and has been litigated with success.

Regents of the University of California v. University of Iowa Research Foundation. This patent interference involved a client’s core biotechnology IP. The client prevailed because the Court found that the competition failed to comply with the statutory requirements of 35 U.S.C. § 135(b). In a decision appealed to the Federal Circuit, the victory not only preserved the client’s valuable patent rights, but also significantly expanded the existing law and provided additional protection to all patent holders by restricting the ability of patent applicants to provoke an interference with an issued patent.

Raz v. Krieg. The client inventor prevailed in two related patent interferences regarding patent applications for methods of treating asthma. In the first interference, the client prevailed in the preliminary motions period, and the other side appealed. During the appeal, the other side abandoned the appeal. In the second interference, the other side conceded and requested that judgment be entered in the client’s favor.

Massachusetts Institute of Technology v. Catalyst Assets. In this patent interference, the client obtained a dismissal of an interference provoked by one of MIT’s competitors for failure to meet the statutory requirements of 35 U.S.C. § 135(b). This decision confirmed and extended the holding that he had previously secured for a different client in the Regents of the University of California v. University of Iowa Research Foundation.

Bestfoods v. Barber Foods. This patent interference involved food processing technology, in which the applicant discovered a former collaborator had filed for, and had obtained, a patent on subject matter the client believed had been derived from its inventors. A strategy was developed that caused the patentee to concede the interference, resulting in the collaborator’s patent being cancelled and the client to obtain a patent on that subject matter.

Landers v. Sapolsky. This interference involved inventions for the Massachusetts Institute of Technology for methods for detecting genetic defects. MIT prevailed on 35 U.S.C. § 112 grounds as Sapolsky’s claims were not supported because they were broader in scope than the method disclosed in the patent specification.

Conopco v. Vrije Universiteit Brussel.  This interference involved immunoglobulins devoid of light chains.  The interference was settled on terms that allowed the client to obtain a patent covering the commercially valuable embodiment of the invention.

Adimab v. Dyax. This interference related to a method of displaying a library of antibodies on the surface of yeast cells. The client provoked the interference and invalidated claims of a competitor’s patent based upon the prior art while successfully avoiding the same prior art to obtain a patent on the claimed method.

Bison v. Crabtree. This interference related to organic liquid fertilizer. The client successfully provoked an interference against a competitor who, it believed, had stolen his clients invention  The interference settled on grounds in which the competitor requested adverse judgment and the client  obtained a patent on the technology.