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 and in reexaminations before the Central Reexamination Unit.
Following the inception of the America Invents Act, our post-grant practice chair, Jason Mudd, successfully argued the first ever inter partes review. To date, Shook’s team has handled hundreds of PTAB cases and reexaminations on behalf of both patent challengers and patent owners with success rates well above national averages. Our 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 post-grant proceedings.
Proven Success
Our team boasts an impressive track record:
• Representing petitioners, the Shook team has a nearly 90% institution rate and greater than a 90% claim cancellation rate post-institution.
• Representing patent owners, our team has a remarkable 70% denial of institution rate and 45% claim confirmation rate post-institution.
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, PGRs and reexamination requests as part of our defense strategy for clients accused of patent infringement. Additionally, we regularly represent patent owners in defending against IPRs and reexaminations for clients asserting infringement claims against others. However, clients also seek out Shook’s post-grant and 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.
Reexamination Experience
Recent policy shifts at the PTAB under the new administration have caused institution rates to fall. Our team has adapted by filing reexamination requests as an alternative when advisable. We have substantial reexamination experience representing both requesters and patent owners that spans both the pre-AIA era as well as the past several years. Michelle Aspen joined our team from Unified Patents, which has continued to be the leading filer of reexamination requests by a large margin. Our team has also briefed and advised on issues relating to many of the challenges that have been raised regarding the new policy shifts at the PTAB and remains on the cutting edge of these issues.
Integrated Litigation Approach
Our post-grant 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 before the Patent Office.
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
PTAB proceedings frequently lead to appeals. Our team regularly represents clients in such appeals 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.
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.
Trove Brands, LLC v. CamelBak Products, LLC | Obtained denial of institution of three IPRs and confirmation of all claims as patentable for patent owner in two instituted IPRs relating to popular, market-leading consumer drink bottle designs.
Valve Corporation v. Ironburg Inventions Ltd. | Obtained unpatentability finding for all remaining claims at issue in a rare second remand of IPR from Federal Circuit for petitioner against patent relating to video game controller technology.
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, including a rare grant of a rehearing request of a decision instituting the fifth IPR that reversed the decision and denied institution of the IPR. Obtained confirmation of all claims as patentable in instituted 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.
