Womble Bond Dickinson (WBD) is a leader in PTAB trials and post-grant proceedings before the USPTO’s Patent Trial and Appeal Board (PTAB) with decades of experience in this practice area. Recent wins include a precedent-setting decision by the PTAB’s Precedential Opinion Panel for an energy sector client.
Our PTAB Trials team is situated within a broad-based Intellectual Property practice group, which includes more than 120 attorneys and approximately 20 patent agents and technical advisors. With a strong patent litigation practice and a powerful technical bench, we are able to assemble the perfect team for any dispute before the PTAB. Our attorneys and patent agents hold degrees (including many advanced degrees) in virtually all technical disciplines, have worked in-house for industry leaders, and have laboratory experience in and out of the university setting. WBD ranks as the 15th most active high tech patent law firm in Patexia’s 2021 survey, and Juristat ranks us within the top 20 firms for chemical and mechanical patent prosecution.
WBD’s court-tested team has been involved in over 75 recent Inter Partes Reviews, Post Grant Reviews, Covered Business Method Reviews, and Derivation proceedings before the PTAB, as well as numerous patent interference proceedings and ex parte reexaminations. In addition, we regularly handle ex parte appeals to the PTAB, as well as appeals of Board decisions to the U.S. Court of Appeals for the Federal Circuit.
Hunting Titan, Inc. v. DynaEnergetics GmbH & Co. KG, IPR2018-00600. Represented DynaEnergetics Europe GmbH in a precedent-setting decision by the PTAB’s POP in a patent validity dispute between two energy companies, concerning scope of the PTAB’s authority to consider arguments not advanced by the petitioner in opposing a motion to amend. The POP handed DynaEnergetics a complete victory in July 2020, ruling that the PTAB panel had overstepped its authority in the case and that no remand was necessary. Ultimately, the Federal Circuit affirmed this finding by the POP.
Smart Meter Technologies, Inc. v. Duke Energy Corp., D. Del. (C.A. No. 16-cv-00208-JFB-SRF). Represented Duke Energy Corp. as defendant in patent infringement action and as a real party-in- interest in an Inter Partes Review before the PTAB related to a method of measuring power consumption information. The district court action was stayed upon institution of the IPR (IPR2017-01199 filed by Itron, Inc.). The PTAB’s Final Written Decision finding claims 17-22 of the asserted patent unpatentable was affirmed by the Federal Circuit in December 2019, and the parties stipulated to a dismissal of the district court action in January 2020.
World Programming Ltd v. SAS Institute Inc., Case Nos. IPR2019-01457, -01458, -01459, -01460 (PTAB). Represented SAS Institute, Inc. in four petitions for Inter Partes Reviews in patent infringement action filed with the PTAB by World Programming Limited challenging the patentability of SAS’ asserted patents. Womble filed Patent Owner Preliminary Responses (POPRs) in all four IPRs, and the PTAB dismissed all of WPL’s petitions in December 2019.
Ex Parte Funada, Appeal No. 2018-005409 (PTAB). Represented Komori Corporation, a Japanese based global manufacturer of high-end presses, in a successful appeal to the USPTO’s PTAB. The ex parte appeal reversed the patent Examiner’s final rejection of client’s claimed invention.
Banilla Games, Inc. v. Savvy Dog Sys., LLC, Case No. CBM2020-00014 (PTAB). Represented Savvy Dog Systems, LLC and Pace-O-Matic, Inc. in asserting patent against electronic game products developed by Banilla Gaming resulting in a petition for Covered Business Method (CBM) review with the PTAB. After filing POPRs in August 2019, the case remains pending.
MonoSol Rx LLC v. Arius Two, Inc., Case No. IPR2014-00376 (PTAB). Represented patent owner Arius Two, Inc., in an action where the PTAB upheld all patent claims regarding patentable biochemistry/organic chemistry technology.
Diablo Technologies Inc. v. Netlist, Inc. Case No. IPR2014-00883 (PTAB). Represented petitioner Diablo Technologies in an action involving semiconductor technology where the PTAB found all claims unpatentable.
Womble Bond Dickinson (WBD) is a leader in PTAB trials and post-grant proceedings before the USPTO’s Patent Trial and Appeal Board (PTAB) with decades of experience in this practice area.
Recent wins include a precedent-setting decision by the PTAB’s Precedential Opinion Panel for an energy sector client.
Our PTAB Trials team is situated within a broad-based Intellectual Property practice group, which includes more than 120 attorneys and approximately 20 patent agents and technical advisors. With a strong patent litigation practice and a powerful technical bench, we are able to assemble the perfect team for any dispute before the PTAB. Our attorneys and patent agents hold degrees (including many advanced degrees) in virtually all technical disciplines, have worked in-house for industry leaders, and have laboratory experience in and out of the university setting. WBD ranks as the 15th most active high tech patent law firm in Patexia’s 2021 survey, and Juristat ranks us within the top 20 firms for chemical and mechanical patent prosecution.
WBD’s court-tested team has been involved in over 75 recent Inter Partes Reviews, Post Grant Reviews, Covered Business Method Reviews, and Derivation proceedings before the PTAB, as well as numerous patent interference proceedings and ex parte reexaminations. In addition, we regularly handle ex parte appeals to the PTAB, as well as appeals of Board decisions to the U.S. Court of Appeals for the Federal Circuit.
Our team is able to help provide solutions to you and your organization. Browse through our lawyers and professional staff to find the right attorney near you.
Examples of our work and how we’ve helped companies of all sizes with a wide range of challenges.
Representative Experience
Hunting Titan, Inc. v. DynaEnergetics GmbH & Co. KG, IPR2018-00600. Represented DynaEnergetics Europe GmbH in a precedent-setting decision by the PTAB’s POP in a patent validity dispute between two energy companies, concerning scope of the PTAB’s authority to consider arguments not advanced by the petitioner in opposing a motion to amend. The POP handed DynaEnergetics a complete victory in July 2020, ruling that the PTAB panel had overstepped its authority in the case and that no remand was necessary. Ultimately, the Federal Circuit affirmed this finding by the POP.
Smart Meter Technologies, Inc. v. Duke Energy Corp., D. Del. (C.A. No. 16-cv-00208-JFB-SRF). Represented Duke Energy Corp. as defendant in patent infringement action and as a real party-in- interest in an Inter Partes Review before the PTAB related to a method of measuring power consumption information. The district court action was stayed upon institution of the IPR (IPR2017-01199 filed by Itron, Inc.). The PTAB’s Final Written Decision finding claims 17-22 of the asserted patent unpatentable was affirmed by the Federal Circuit in December 2019, and the parties stipulated to a dismissal of the district court action in January 2020.
World Programming Ltd v. SAS Institute Inc., Case Nos. IPR2019-01457, -01458, -01459, -01460 (PTAB). Represented SAS Institute, Inc. in four petitions for Inter Partes Reviews in patent infringement action filed with the PTAB by World Programming Limited challenging the patentability of SAS’ asserted patents. Womble filed Patent Owner Preliminary Responses (POPRs) in all four IPRs, and the PTAB dismissed all of WPL’s petitions in December 2019.
Ex Parte Funada, Appeal No. 2018-005409 (PTAB). Represented Komori Corporation, a Japanese based global manufacturer of high-end presses, in a successful appeal to the USPTO’s PTAB. The ex parte appeal reversed the patent Examiner’s final rejection of client’s claimed invention.
Banilla Games, Inc. v. Savvy Dog Sys., LLC, Case No. CBM2020-00014 (PTAB). Represented Savvy Dog Systems, LLC and Pace-O-Matic, Inc. in asserting patent against electronic game products developed by Banilla Gaming resulting in a petition for Covered Business Method (CBM) review with the PTAB. After filing POPRs in August 2019, the case remains pending.
MonoSol Rx LLC v. Arius Two, Inc., Case No. IPR2014-00376 (PTAB). Represented patent owner Arius Two, Inc., in an action where the PTAB upheld all patent claims regarding patentable biochemistry/organic chemistry technology.
Diablo Technologies Inc. v. Netlist, Inc. Case No. IPR2014-00883 (PTAB). Represented petitioner Diablo Technologies in an action involving semiconductor technology where the PTAB found all claims unpatentable.
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