Electrical & Mechanical Patent Prosecution, Opinions, & Co-Chair Post-Grant Proceedings
Apple Inc. v. Omni MedSci. Inc., (PTAB): Defending Omni (Patent Owner) in multiple inter partes review (IPR) proceedings challenging patent claims related to wearable devices that monitor physiological parameters, three of which were denied institution. Representative Case Nos. IPR2019-00913, IPR2019-00910, IPR2019-00911.
IEE Sensing, Inc. v. Delphi Technologies, Inc. (PTAB): Represented IEE (Petitioner) in an IPR challenging patent claims related to vehicle occupant detection systems, resulting in all claims being found unpatentable. Patent Owner filed a contingent motion to amend during the IPR, and the PTAB found all the substitute claims unpatentable as well. IPR2018-00179
Google LLC v. Seven Networks, LLC (PTAB): Defended Seven (Patent Owner) in multiple IPRs challenging patent claims related to telecommunications, resulting in a favorable outcome for the client. Representative Case No. IPR2018-01115
Ford Motor Company v. Paice LLC, (PTAB): Represented Ford (Petitioner) in 22 IPRs challenging many claims across five separate patents related to hybrid vehicles, resulting in hundreds of claims being found unpatentable. Representative Case Nos.: IPR2014-00570, IPR2014-00875, IPR2014-01415, IPR2015-00785, IPR2015-00801
Paice LLC v. Ford Motor Company, (Fed. Cir. 2016-2018): Successfully represented Ford in numerous appeals challenging the PTAB decisions that had found hundreds of patent claims unpatentable. Representative Case Nos.: 2016-1411, 2016-1647, 2017-1387
In re Certain Hybrid Electric Vehicles (ITC): Trial counsel for Ford in multi-patent investigation directed to hybrid electric vehicles. Settlement after trial. Inv. No. 337-TA-1042
Co-Presenter, “PTAB Year in Review: New Designated Decisions and Procedures Impact AIA Trial Strategies,” BK Hosted Webinar, January 2021
Panelist, “Claim Amendments Under the PTAB Pilot Program,” PTBA Bar Association Annual Conference, September 2020
Co-Presenter, “PTAB Year in Review – Designated Decisions, Constitutional Challenges, and AIA Procedures,” BK Hosted Webinar, February 2020
Speaker, Student Alumni Association (SAC), Kettering University, September 2019
Panelist, “Interview with the Chief,” PTAB Judicial Conference, July 2018
Moderator, “Evolving procedural challenges associated with AIA,” Managing Intellectual Property PTAB Forum, May 2018
Presenter, “IP Clinic,” Detroit Fintech Challenge, April 2018
Co-Presenter, “2017 IP Litigation and PTAB Year in Review,” BK Webinar, February 2018
Co-Author, “Federal Circuit Rules that PTAB May Not Cancel ‘Challenged’ Claims for Indefiniteness in an IPR Proceeding (but ‘New’ Substitute Claims are Fair Game),” Blog Post, February 2020
Co-Author, “PTAB Precedential Opinion Clarifies Standard for Establishing Public Accessibility of a Reference,” Blog Post, January 2020
Co-Author, “Federal Circuit Finds PTAB Judges to be Unconstitutionally-Appointed ‘Principal’ Officers,” Blog Post, November 2019
Co-Author, “USPTO Proposes New Rules for Amending Claims During AIA Trial Proceedings,” Blog Post, November 2019
Co-Author, “USPTO Proposes New Procedures to Expand Availability of Claim Amendments During AIA Post Grant Proceeding,” Client Alert, November 2018
Co-Author, “Is Uncle Sam a ‘Person’? Supreme Court Grants Cert to Consider Government Standing in CBM Proceedings,” Blog Post, November 2018
Co-Author, “PTAB Releases Revised AIA Trial Guide,” Blog Post, August 2018
Co-Author, “PTAB Designates Two New Informative Decisions Addressing Its Discretion to Deny Review under 35 U.S.C. § 325(d) Based on Prior Examination,” Client Alert, March 2018
Co-Author, “Federal Circuit Rules That PTAB Rejection of IPR Time-Bar Defense Is Reviewable,” Client Alert, January 2018
Co-Author, “PTAB Designates Two New Informative Decisions Addressing IPR Filing Issues,” Blog Post, January 2018
Co-Author, “Supreme Court To Review PTAB Practice Of Partial Review,” Client Alert, June 2017
