At Shook, Hardy & Bacon, we have a dedicated team of skilled patent attorneys who bring extensive experience and a long track record of success in post-grant proceedings before the Patent Trial and Appeal Board. Following the inception of the America Invents Act, one of our Shook attorneys argued the first ever inter partes review. Since then, Shook’s team has handled hundreds of PTAB cases.
Proven Success
Our team boasts an impressive track record:
• Representing petitioners, the Shook team has a nearly 90% institution rate and more than a 90% claim cancellation rate post-institution.
• Representing patent owners, our team has a remarkable 70% denial of institution rate.
These metrics place us well above the national average, establishing Shook’s PTAB team as one of the most successful in the country.
Strategic Representation
We frequently file IPRs as part of our defense strategy for clients accused of patent infringement. Additionally, we regularly defend patents in IPRs for clients asserting infringement claims against others. However, clients also seek out Shook’s PTAB experience to strategically challenge or defend patents that may not yet be involved in litigation.
Diverse Technological Experience
Our team has obtained significant victories before the Board in cases spanning a wide array of technologies, including computer software, networking, wireless communications, mobile devices, digital encoding and serial data communications, computer memory, gaming systems, automotive technologies, fitness technologies, consumer products, location-based technologies, and many more. We pride ourselves on our ability to handle complex cases effectively, leveraging our deep understanding of various technological fields.
Our team uses a deep in-house bench of professionals having backgrounds in science and technology, including 60 professionals holding technical degrees, with 33 professionals holding degrees in engineering, and 20 of those technical degrees being master’s degrees and PhDs.
Representative Matters
Some representative matters handled by members of our team include the following:
Google, LLC v. Touchstream Technologies, Inc. | Obtained final written decisions for patent owner confirming patentability of all challenged claims in three IPRs relating to systems for controlling playback of content on a display device via a server system using a mobile device. This preserved a $339 million jury verdict Shook had obtained on behalf of the patent owner.
CSC ServiceWorks, Inc. v. PayRange, Inc. | Obtained institution of multiple IPRs relating to mobile-device-to-machine payment systems, which led to favorable resolution of PayRange’s district court lawsuits against CSC.
Comcast Cable Communications, LLC v. Touchstream Technologies, Inc. | Represented Touchstream as patent owner in six IPRs filed by Comcast. Obtained outright denial of institution in four of six IPRs, and obtained a rare grant of a rehearing request of a decision instituting the fifth IPR that reversed the decision and denied institution of the IPR.
Unified Patents, LLC v. Mobility Workx, LLC | Obtained cancellation of claims in patent directed to proactive allocation of wireless communication resources for the Mobile IP protocol, and obtained affirmance by the federal circuit.
Glideaway v. Bedgear, LLC | Obtained final written decisions in four IPRs for petitioner Glideaway, cancelling 80 challenged claims of patents pertaining to performance textile technologies.
HP, Inc. v. Universal Connectivity Technologies, Inc. | Representing HP in series of seven IPRs relating to digital encoding for serial data communications technologies and interfaces, including those relating to transmission of data for display and storage.
Unified Patents, LLC v. Universal Secure Registry, LLC | Obtained cancellation of claims and denial of patent owner’s motion to amend patent directed to authenticating users using encrypted biometric and other secret information where patent had been unsuccessfully challenged by other petitioners.
Sony Interactive Entertainment, Inc. v. Bot M8, LLC | Obtained cancellation for petitioner Sony of all 21 challenged claims across three patents relating to systems for memory fault detection and authentication of storage media.
Ford Motor Company v. Cruise Control Techs. | Obtained cancellation of all challenged claims in patent relating to adaptive cruise control.
Nissan North America, Inc. v. Signal IP, Inc. | Represented Nissan in IPR relating to air bag deployment technology and IPR and district court action settled on eve of oral hearing and district court trial.
Ford Motor Company v. Vehicle Operation Techs. | Obtained institution of three IPRs against patent relating to torque sensors and displays and obtained favorable settlement on eve of oral hearing.
Garmin International, Inc. v. Saris Equipment, LLC | Representing Garmin as petitioner in IPR against a competitor pertaining to bicycle trainer technology.
IEE Sensing v. Aptiv/Delphi | Represented patent owner Delphi (now Aptiv) in IPR relating to vehicle occupant detection systems using isolation circuits to enhance occupant detection by heating elements.
Unified Patents, LLC v. SISVEL S.P.A. | Obtained cancellation of claims of patent directed to recommendation systems using collaborative filtering algorithms with media browsers and search engines.
Integrated Litigation Approach
Our PTAB practitioners possess substantial experience in district court litigation, allowing us to craft strategies that align our clients’ interests across both venues. This integrated approach ensures that our clients benefit from coordinated efforts in both district court and PTAB proceedings.
We also recognize the importance of favorable settlements, including those that resolve co-pending district court litigation. Our strategic petitions and arguments before the PTAB regularly serve as leverage to achieve optimal resolutions for our clients in district courts, where we often handle cases with hundreds of millions of dollars at stake.
Federal Circuit Appeals
Post-grant challenges frequently lead to appeals. Our team regularly represents clients in appeals of PTAB final written decisions at the U.S. Court of Appeals for the Federal Circuit. Our team’s appellate experience helps us craft winning arguments that will not only succeed before the PTAB, but that will also be affirmed on appeal.
Shook’s team boasts a strong track record of success before the Federal Circuit. As one example, Shook secured a victory in a precedential Federal Circuit decision that determined, as a matter of first impression, that patent owners bear the burden of proof with regard to issues of estoppel arising from PTAB final written decisions.
Our PTAB team’s continual commitment to delivering exceptional service and results for our clients—including a dedication to challenging ourselves to ever-increasing levels of excellence—makes us a go-to firm for businesses wanting the best results before the PTAB.
