Andrew B. Turner

Electrical & Software Patent Prosecution & Post-Grant Proceedings

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Andrew is a registered patent attorney, with degrees in both electrical and mechanical engineering, and focuses his practice on patent prosecution and post-grant proceedings. His practice also includes intellectual portfolio management and opinion preparation. Andrew has extensive experience with hybrid electric vehicles, LED lighting systems, audio systems, electric machines, controls, electronics, telecommunications, augmented reality and virtual reality technology.

Andrew has worked with clients of various sizes, from individual entrepreneurs to Fortune 500 companies. He particularly enjoys working with innovative people in different sectors and helping clients solve complex issues. He excels at developing  strategies for prosecuting patent applications and challenging patents.

Prior to his legal career, Andrew was an engineer in the automotive industry. He worked on the development of several electro-mechanical systems including: adjustable pedals, brake systems and battery charging systems. Andrew utilizes his engineering industry experience to counsel clients in view of their business concerns, and to communicate with inventors and patent examiners on technical issues.

Representative Matters

IEE v. Aptiv Technologies, Limited (PTAB): Representing IEE in an inter partes review proceeding challenging the validity of a patent related to occupant detection systems. IPR2018-00179

Google LLC v. Seven Networks, LLC (PTAB): Defended Seven in multiple inter partes review proceedings related to telecommunications. Representative Case No. IPR2018-01115

Ford Motor Company v. Paice, Representative (PTAB): Represented Ford during the pendency of 22 inter partes review proceedings challenging the validity of hundreds of claims across five separate patents related to hybrid vehicles.  Managed proceedings through final written decision where the Patent Trial and Appeal Board held 273 patent claims were unpatentable. Case Nos.:  IPR2014-00570, IPR2014-00875, IPR2014-01415, IPR2015-00785, IPR2015-00801

Paice LLC v. Ford Motor Company, Representative (Fed. Cir. 2016-2018): Successfully represented Ford in numerous appeals challenging the Patent Trial and Appeal Board decisions that had found hundreds of patent claims as being unpatentable. Case Nos.: 2016-1411, 2016-1647, 2017-1387

In re Certain Hybrid Electric Vehicles (ITC):  Trial counsel for Ford Motor Company in multi-patent investigation directed to hybrid electric vehicles. Settlement after trial. Inv. No. 337-TA-1042

Organizations and Affiliations

Michigan Intellectual Property Law Association (MIPLA)

PTAB Bar Association – Young Lawyers & Agents Committee

State Bar of Michigan

U.S. Court of Appeals for the Federal Circuit

U.S. Patent and Trademark Office

Webinars

    Publications

    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

    Presentations

    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

    Education

    J.D., Wayne State University

    B.S., Mechanical Engineering, GMI Engineering & Management Institute (now Kettering University)

    B.S., Electrical Engineering, Oakland University