Patent Office Trials


Practice Areas

The Leahy-Smith America Invents Act (AIA) transformed the landscape of patent litigation, making the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) the busiest venue in the country for new patent validity challenges. Osha Liang’s attorneys have from the earliest days of the AIA been at the forefront of post-grant practice. Our practice covers all aspects of dealing with administrative patent disputes, including:

  • Covered business method (CBM) review proceedings
  • Inter partes review (IPR) proceedings
  • Post-grant reviews (PGR) proceedings
  • Ex parte reexaminations
  • Supplemental examinations
  • Patent interferences
  • Derivation proceedings

Our experienced Patent Office Litigation team, representing both patent challengers and patent owners, is among the busiest in the country among comparably sized IP firms. Our attorneys have been involved in 40 post-grant proceedings, to date.  Combining decades of collective experience in patent disputes at the USPTO, U.S. federal courts, and the International Trade Commission (ITC), our patent attorneys guide patent owners and challengers through the strategic use of post-grant proceedings to maximize their advantage and leverage in both business and U.S. district court litigation settings. Because most Patent Office litigation is related to and concurrent with infringement litigation in the district courts, we carefully devise and execute a coordinated approach that will serve our clients’ interests in all possible outcomes and situations, whether or not the court litigation is suspended for the duration of the post-grant proceeding. Our team members are frequent conference speakers and article authors on not only the basics, but also regarding the finer, more subtle, yet often critically important strategic considerations that must be dealt with throughout any post-grant proceeding.

Whether serving patent owners or challengers, we always maintain our focus on the achievement of our clients’ underlying business goals, bearing in mind that patents are simply a means to an end for one side or the other. By carefully understanding the entire context of our client’s status in the marketplace and position vis-à-vis its competitors, and continuously formulating, reevaluating and adjusting strategies according to always-evolving circumstances, we are able to avoid both the ordinary and complex traps and pitfalls that other less experienced firms often fall into. As a direct result of our knowledge, skill, and experience, we always maximize the likelihood of the best possible outcome for our clients.

TOTAL # OF CBMs/IPRs
(as of 2017-08/15)
 

Side
Represented

Number of Cases

Petitioner

27

Patent Owner

16

Total

43

 

REPRESENTATIVE POST-GRANT PROCEEDINGS EXPERIENCE

On Behalf of Petitioners

  • Bloomberg Inc. et al. v. Markets-Alert Pty Ltd., CBM2013-00005: Represented Petitioners The Charles Schwab Corporation, Charles Schwab & Co., Inc., OptionsXpress Holdings, Inc., OptionsXpress, Inc., in Covered Business Method review challenging all 4 claims of U.S. Patent No. 7,941,357.  Board instituted trial in March 2013 and cancelled all claims in March 2014.
  • Lumondi Inc. d/b/a Luminox Watch Company v. Lennon Image Technologies LLC, IPR2013-00432: Represented Petitioner Lumondi Inc. in an inter partes review challenging 13 claims in U.S. Patent No. 6,624,843.  After the Board instituted trial in January 2014, the parties settled the IPR as well as concurrent district court litigation, and the Board terminated proceedings in March 2014.
  • Lorex Canada, Inc. v. e-Watch, Inc., IPR2013-00521: Represented Petitioner Lorex Canada, Inc. in an inter partes review challenging 7 claims in U.S. Patent No. 7,839,926.  After the Board instituted trial in February 2014, the parties settled the IPR as well as concurrent district court litigation, and the Board terminated proceedings in June 2014.
  • FLIR Systems, Inc. v. e-Watch, Inc., IPR2014-00130: Represented Petitioner FLIR Systems, Inc. in an inter partes review challenging 16 claims in U.S. Patent No. 6,970,183.  After the Board instituted trial in March 2014, the parties settled the IPR as well as concurrent district court litigation, and the Board terminated proceedings in June 2014.
  • Standard Innovation Corporation v. LELO, Inc., IPR2014-00148: Represented Petitioner Standard Innovation Corporation in an inter partes review challenging 26 claims of U.S. Patent No. 7,749,178.  The Board instituted trial in May 2014 and Final Written Decision issued May 2015.
  • Standard Innovation Corporation v. LELO, Inc., IPR2014-00907: Represented Petitioner Standard Innovation Corporation in an inter partes review challenging 5 claims of U.S. Patent No. 7,749,178.  Motion for joinder with prior instituted IPR denied in December 2014.
  • Valeo, Inc. et al. v. Magna Electronics, Inc., IPR2014-00220: Represented Petitioners Valeo North America, Inc., Valeo S.A., Valeo Gmbh, Valeo Schalter Und Sensoren Gmbh, and Connaught Electronics Ltd. in an inter partes review challenging 49 claims of U.S. Patent No. 7,859,565.  Final Written Decision cancelling majority of instituted claims issued in May 2015.
  • Valeo, Inc. et al. v. Magna Electronics, Inc., IPR2014-00221: Represented Petitioners Valeo North America, Inc., Valeo S.A., Valeo Gmbh, Valeo Schalter Und Sensoren Gmbh, and Connaught Electronics Ltd. in an inter partes review challenging 50 claims of U.S. Patent No. 7,991,522.  Final Written Decision cancelling all instituted claims issued in May 2015.
  • Valeo, Inc. et al. v. Magna Electronics, Inc., IPR2014-00222 (filed with IPR2014-00223): Represented Petitioners Valeo North America, Inc., Valeo S.A., Valeo Gmbh, Valeo Schalter Und Sensoren Gmbh, and Connaught Electronics Ltd. in an inter partes review challenging a total of 68 claims of U.S. Patent No. 8,386,114 in multiple petitions.  The Board instituted trial with respect to claims in one petition in May 2014 (proceedings pending).  Final Written Decision cancelling all instituted claims issued in May 2015.
  • Valeo, Inc. et al. v. Magna Electronics, Inc., IPR2014-00223 (filed with IPR2014-00222): Represented Petitioners Valeo North America, Inc., Valeo S.A., Valeo Gmbh, Valeo Schalter Und Sensoren Gmbh, and Connaught Electronics Ltd. in an inter partes review challenging a total of 68 claims of U.S. Patent No. 8,386,114 in multiple petitions.  The Board instituted trial with respect to claims in one petition in May 2014 (proceedings pending).  Final Written Decision cancelling all instituted claims issued in May 2015.
  • Valeo, Inc. et al. v. Magna Electronics, Inc., IPR2014-00227 (consolidated with IPR2014-00228): Represented Petitioners Valeo North America, Inc., Valeo S.A., Valeo Gmbh, Valeo Schalter Und Sensoren Gmbh, and Connaught Electronics Ltd. in an inter partes review challenging a total of 68 claims of U.S. Patent No. 7,877,175 in multiple petitions.  The Board instituted trial with respect to claims in both petitions and consolidated proceedings in May 2014.  Final Written Decision cancelling all instituted claims issued in May 2015.
  • Valeo, Inc. et al. v. Magna Electronics, Inc., IPR2014-00228 (consolidated with IPR2014-00227): Represented Petitioners Valeo North America, Inc., Valeo S.A., Valeo Gmbh, Valeo Schalter Und Sensoren Gmbh, and Connaught Electronics Ltd. in an inter partes review challenging a total of 68 claims of U.S. Patent No. 7,877,175 in multiple petitions.  The Board instituted trial with respect to claims in both petitions and consolidated proceedings in May 2014.  Final Written Decision cancelling all instituted claims issued in May 2015.
  • Parrot S.A., et al. v. Drone Technologies, Inc., IPR2014-00730: Represented Petitioners Parrot S.A., and Parrot, Inc. in an inter partes review challenging 15 claims of U.S. Patent No. 7,584,071.  The Board instituted trial on all claims.  Final Written Decision cancelled nearly all instituted claims in October 2015; CAFC Appeal pending.
  • Parrot S.A., et al. v. Drone Technologies, Inc., IPR2014-00732: Represented Petitioners Parrot S.A., and Parrot, Inc. in an inter partes review challenging 12 claims of U.S. Patent No. 8,106,748.  The Board instituted trial on all claims.  Final Written Decision issued in October 2015; CAFC Appeal pending.
  • Valeo, Inc. et al. v. Magna Electronics, Inc., IPR2014-01203: Represented Petitioners Valeo North America, Inc., Valeo S.A., Valeo Gmbh, Valeo Schalter Und Sensoren Gmbh, and Connaught Electronics Ltd. in a second round inter partes review challenging 17 claims of U.S. Patent No. 7,859,565.  Board instituted trial in January 2015.   Final Written Decision cancelling all instituted claims issued in January 2016.
  • Valeo, Inc. et al. v. Magna Electronics, Inc., IPR2014-01204: Represented Petitioners Valeo North America, Inc., Valeo S.A., Valeo Gmbh, Valeo Schalter Und Sensoren Gmbh, and Connaught Electronics Ltd. in a second round inter partes review challenging 23 claims of U.S. Patent No. 8,386,114. Board instituted trial in January 2015.  Final Written Decision cancelling all but two instituted claims issued in January 2016.
  • Valeo, Inc. et al. v. Magna Electronics, Inc., IPR2014-01206: Represented Petitioners Valeo North America, Inc., Valeo S.A., Valeo Gmbh, Valeo Schalter Und Sensoren Gmbh, and Connaught Electronics Ltd. in a second round inter partes review challenging 23 claims of U.S. Patent No. 7,877,175.  Board denied institution.
  • Valeo, Inc. et al. v. Magna Electronics, Inc., IPR2014-01208: Represented Petitioners Valeo North America, Inc., Valeo S.A., Valeo Gmbh, Valeo Schalter Und Sensoren Gmbh, and Connaught Electronics Ltd. in an inter partes review challenging 28 claims of U.S. Patent No. 7,991,522.  Board instituted trial in January 2015.  Final Written Decision cancelling all instituted claims issued in December 2015.
  • Valeo North America, Inc. et al. v. Magna Electronics, Inc., IPR2015-00250: Represented Petitioners Valeo North America, Inc., Valeo S.A., Valeo Gmbh, Valeo Schalter Und Sensoren Gmbh, and Connaught Electronics Ltd. in an inter partes review challenging all 89 claims of U.S. Patent No. 8,543,330.  Board instituted trial in June 2015.  Final Written Decision cancelling all instituted claims issued in May 2016.
  • Valeo North America, Inc. et al. v. Magna Electronics, Inc., IPR2015-00251: Represented Petitioners Valeo North America, Inc., Valeo S.A., Valeo Gmbh, Valeo Schalter Und Sensoren Gmbh, and Connaught Electronics Ltd. in an inter partes review challenging all 20 claims of U.S. Patent No. 8,676,491.  Board instituted trial in June 2015.  Final Written Decision cancelling all instituted claims issued in May 2016.
  • Valeo North America, Inc. et al. v. Magna Electronics, Inc., IPR2015-00252 (filed with IPR2015-00253): Represented Petitioners Valeo North America, Inc., Valeo S.A., Valeo Gmbh, Valeo Schalter Und Sensoren Gmbh, and Connaught Electronics Ltd. in an inter partes review challenging all 86 claims of U.S. Patent No. 8,643,724 in multiple petitions.  Board denied institution.
  • Valeo North America, Inc. et al. v. Magna Electronics, Inc., IPR2015-00253 (filed with IPR2015-00252): Represented Petitioners Valeo North America, Inc., Valeo S.A., Valeo Gmbh, Valeo Schalter Und Sensoren Gmbh, and Connaught Electronics Ltd. in an inter partes review challenging all 86 claims of U.S. Patent No. 8,643,724 in multiple petitions.  Board denied institution.
  • Valeo North America, Inc. et al. v. Magna Electronics, Inc., IPR2015-01410 (filed with IPR2015-01414): Represented Petitioners Valeo North America, Inc., Valeo S.A., Valeo Gmbh, Valeo Schalter Und Sensoren Gmbh, and Connaught Electronics Ltd. in an inter partes review challenging all 86 claims of U.S. Patent No. 8,643,724 in multiple petitions.  Board instituted trial in December 2015.  Final Written Decision cancelling claims 1, 3–12, 14, 15, 17, 19–52, 54–67, 69–79, and 81–86 issued in December 2016.
  • Valeo North America, Inc. et al. v. Magna Electronics, Inc., IPR2015-01414 (filed with IPR2015-01410): Represented Petitioners Valeo North America, Inc., Valeo S.A., Valeo Gmbh, Valeo Schalter Und Sensoren Gmbh, and Connaught Electronics Ltd. in an inter partes review challenging all 86 claims of U.S. Patent No. 8,643,724 in multiple petitions.  Board instituted trial in December 2015.  Final Written Decision cancelling claims 1, 3–12, 14, 15, 17, 19–52, 54–67, 69–79, and 81–86 issued in December 2016.
  • Valeo North America, Inc. et al. v. Magna Electronics, Inc., IPR2015-01415: Represented Petitioners Valeo North America, Inc., Valeo S.A., Valeo Gmbh, Valeo Schalter Und Sensoren Gmbh, and Connaught Electronics Ltd. in an inter partes review challenging 29 claims of U.S. Patent No. 8,543,330.  Board denied institution.
  • Valeo North America, Inc. et al. v. Magna Electronics, Inc., IPR2015-01413: Represented Petitioners Valeo North America, Inc., Valeo S.A., Valeo Gmbh, Valeo Schalter Und Sensoren Gmbh, and Connaught Electronics Ltd. in an inter partes review challenging 17 claims of U.S. Patent No. 8,676,491.  Board denied institution.
  • Preciseley Microtechnology Corp. v. Dicon Fiberoptics Inc., IPR2015-01728: Represented Petitioner Preciseley Microtechnology Corp. in an inter partes review challenging all 50 claims of U.S. Patent No. 6,838,738.   Board instituted trial in February 2016 on all claims.  Shortly thereafter the parties settled the IPR as well as concurrent district court litigation, and the Board terminated proceedings.

On Behalf of Patent Owners

  • Temporal Power Ltd. v. Beacon Power, LLC, IPR2015-00146: Represented Patent Owner Beacon Power, LLC in an inter partes review challenging 26 claims of U.S. Patent 8,008,804.  Succeeded in persuading Board not to institute trial on any ground (Decision Denying Institution issued April 2015).
  • Temporal Power Ltd. v. Beacon Power, LLC, IPR2015-00147: Represented Patent Owner Beacon Power, LLC in a second inter partes review challenging 26 claims of U.S. Patent 8,008,804.  Succeeded in persuading Board not to institute trial on any ground (Decision Denying Institution issued April 2015).
  • Shenzhen Huiding Technology Co., Ltd. v. Synaptics Incorporated, IPR2016-01739: Represented Patent Owner Synaptics Incorporated in an inter partes review challenging all 25 claims of U.S. Patent No. 8,558,811.  IPR was terminated in May 2016 after parties reached global settlement ending concurrent district court litigation, International Trade Commission investigation, and multiple IPRs.
  • Shenzhen Huiding Technology Co., Ltd. v. Synaptics Incorporated, IPR2016-01740: Represented Patent Owner Synaptics Incorporated in an inter partes review challenging all 20 claims of U.S. Patent No. 8,952,916.  IPR was terminated in May 2016 after parties reached global settlement ending concurrent district court litigation, International Trade Commission investigation, and multiple IPRs.
  • Shenzhen Huiding Technology Co., Ltd. v. Synaptics Incorporated, IPR2016-01741: Represented Patent Owner Synaptics Incorporated in an inter partes review challenging all 26 claims of U.S. Patent No. 8,338,724.  IPR was terminated in May 2016 after parties reached global settlement ending concurrent district court litigation, International Trade Commission investigation, and multiple IPRs.
  • Shenzhen Huiding Technology Co., Ltd. v. Synaptics Incorporated, IPR2016-01742: Represented Patent Owner Synaptics Incorporated in an inter partes review challenging all 68 claims of U.S. Patent No. 7,868,874.  IPR was terminated in May 2016 after parties reached global settlement ending concurrent district court litigation, International Trade Commission investigation, and multiple IPRs.
  • Shenzhen Huiding Technology Co., Ltd. v. Synaptics Incorporated, IPR2016-01743: Represented Patent Owner Synaptics Incorporated in an inter partes review challenging all 25 claims of U.S. Patent No. 7,868,874.  Parties settled the IPR, concurrent district court litigation, and a pending International Trade Commission Investigation in March 2016.
  • Shenzhen Huiding Technology Co., Ltd. v. Synaptics Incorporated, IPR2016-00463: Represented Patent Owner Synaptics Incorporated in an inter partes review challenging all 26 claims of U.S. Patent No. 8,338,724.  IPR was terminated in May 2016 after parties reached global settlement ending concurrent district court litigation, International Trade Commission investigation, and multiple IPRs.
  • Shenzhen Huiding Technology Co., Ltd. v. Synaptics Incorporated, IPR2016-00464: Represented Patent Owner Synaptics Incorporated in an inter partes review challenging all 25 claims of U.S. Patent No. 8,558,811.  IPR was terminated in May 2016 after parties reached global settlement ending concurrent district court litigation, International Trade Commission investigation, and multiple IPRs.
  • Shenzhen Huiding Technology Co., Ltd. v. Synaptics Incorporated, IPR2016-00465: Represented Patent Owner Synaptics Incorporated in an inter partes review challenging claims 1-20 of U.S. Patent No. 8,952,916.  IPR was terminated in May 2016 after parties reached global settlement ending concurrent district court litigation, International Trade Commission investigation, and multiple IPRs.
  • Shenzhen Huiding Technology Co., Ltd. v. Synaptics Incorporated, IPR2016-00563: Represented Patent Owner Synaptics Incorporated in an inter partes review challenging claims 1, 5-6, 11, 16, 23-26, 39, 50-51, 56-57, 61-62, and 64 of U.S. Patent No. 7,868,874.  IPR was terminated in May 2016 after parties reached global settlement ending concurrent district court litigation, International Trade Commission investigation, and multiple IPRs.
  • CPI Card Group Inc. v. Gemalto S.A., IPR2016-01092: Represent Patent Owner Gemalto in an inter partes review filed in May 2016, challenging all claims of U.S. Patent No. 5,944,833 (proceedings pending).
  • Iradion Laser, Inc. v. Novanta Corp. (formerly GSO Group Corp.), IPR2017-00241. Represent Patent Owner Novanta in an inter partes review filed November 2016, challenging claims 1, 4, 5, 26, 34-36, 38 and 39 of U.S. Patent No. 6,614,826.  IPR was terminated in April 2017 after parties reached global settlement ending concurrent district court litigation and multiple IPRs.
  • Iradion Laser, Inc. v. Novanta Corp. (formerly GSO Group Corp.), IPR2017-00244. Represent Patent Owner Novanta in an inter partes review filed November 2016, challenging claims 11, 14, 24, 26 and 28 of U.S. Patent No. 6,198,759.  IPR was terminated in April 2017 after parties reached global settlement ending concurrent district court litigation and multiple IPRs.
  • CPI Card Group Inc. v. Gemalto S.A., IPR2017-01320: Represent Patent Owner Gemalto in an inter partes review filed in May 2017, challenging all claims of U.S. Patent No. 6,786,418 (proceedings pending).
  • Luxshare Precision Industry Co., Ltd. v. Bing Xu Precision Co., Ltd., IPR2017-01404. Represent Patent Owner Bing Xu in an inter partes review filed in May 2017, challenging claims 1-20 of U.S. patent No. 8,512,071 (proceedings pending).
  • Luxshare Precision Industry Co., Ltd. v. Bing Xu Precision Co., Ltd., IPR2017-01492. Represent Patent Owner Bing Xu in an inter partes review filed in May 2017, challenging claims 1-20 of U.S. patent No. 8,758,044 (proceedings pending).
  • Luxshare Precision Industry Co., Ltd. v. Bing Xu Precision Co., Ltd., IPR2017-01657. Represent Patent Owner Bing Xu in an inter partes review filed in June 2017, challenging claims 1 and 2 of U.S. patent No. 8,740,631 (proceeding pending).