Andrew B. Turner

Co-Chair Post-Grant Proceedings

Michigan OfficeP (248) 226-2707

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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, and telecommunications.

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/defending 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

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

Organizations and Affiliations

Michigan Intellectual Property Law Association (MIPLA)

PTAB Bar Association – Young Lawyers & Agents Committee

State Bar of Michigan

 

Recognitions

“Ones to Watch,” Best Lawyers, 2021-2022

Press Releases

    Client Alerts

      Webinars

        Media Coverage

        Quoted, “A Look Back At The PTAB’s Summer Of Precedent,” Law360, September 2019

        Publications

        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

        Presentations

        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

        Education

        J.D., Wayne State University

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

        B.S., Electrical Engineering, Oakland University

        Admissions

        U.S. Patent and Trademark Office

        U.S. District Court, Eastern District of Michigan

        U.S. District Court, Western District of Texas

        U.S. Court of Appeals, Federal Circuit 

        Practice Area and Industries