USPTO Proceedings

• Successful first-chair representation of the owner of two patents directed to recreational wave pool technologies, convincing the PTAB that the Petitioner failed to establish that it could successfully demonstrate unpatentability, thus obtaining a decision denying institution of trial in both cases – an outcome that is achieved in only 30% of such cases.
• Successful first-chair representation of Petitioner in two IPRs directed to patents involving remote monitoring and activation of traps for feral pigs. Successfully instituted two trials challenging the validity of all claims of the two patents at issue, resulting in a stay of the related district court proceeds. Responsible for all aspects of completed PTAB trial, including pre-filing strategy, petition drafting, discovery, briefing and oral argument. After fully trying both cases, the Patent Office issued its final decision, confirming that each and every challenged claim was invalid – thus achieving a complete victory for the client, with only a fraction of the legal fees that would have been incurred had the question of validity been litigated in district court.
• Successful first-chair representation of a patent owner in two IPRs before the Patent Trial and Appeal Board (PTAB) defending an important data storage and synchronization patent. The client had asserted its patent against various defendants in pending district court litigation. One of the defendants launched two attacks against the validity of the patent in highly specialized proceedings before the U.S. Patent & Trademark Office. We obtained a favorable early decision from the PTAB shielding several of the patent claims from further review. After fully trying both cases, the Patent Office issued its final decision in both cases, confirming the validity of every patent claim at issue in both trials — an elusive result historically attained in only 19% of such cases.
• Successful first-chair representation of Petitioner in an IPR of a medical device patent directed to safety needles. Scott had been leading the defense of the client in multiple litigation matters, including charges of patent infringement and other matters relating to the FDA. As part of a coordinated defense strategy, we prosecuted an IPR targeting one of the asserted patents. We successfully argued that the patent infringement litigation be stayed pending the outcome of the Patent Office proceedings, providing the client with substantial cost savings. Ultimately, the PTAB found that all of the claims asserted in the litigation were unpatentable.
• Successful first-chair representation in two concurrent IPRs at the PTAB on behalf of mobile device positioning systems developer as petitioner. Obtained rare grant of second IPR petition of same patent, and defeated standing challenges to both petitions based on real party-in-interest and privity arguments. Responsible for all aspects of completed PTAB trial, including pre-filing strategy, petition drafting, discovery, motions practice, briefing and oral argument. Related copending district court cases were successfully stayed. Completed trial resulting in total victory and binding final written decision in client's favor. Successful patent office representation resulting in settlement of all litigation, including copending district court proceedings.
• Successful first-chair representation of smart home device manufacturer as petitioner in Inter Partes Review. Using leverage created by the presentation of a strong case for unpatentability before the Patent Trial and Appeal Board, our client was able to negotiate settlement on very favorable terms compared to the original demands of the patent owner.
• Successful first-chair representation of smart home device manufacturer as petitioner in Inter Partes Review. Successfully moved for Joinder to existing IPR proceedings.
• Successfully instituted ex parte reexamination on behalf of mobile device positioning systems developer as third party requester.
• Defended a manufacturer of handheld electronics devices casings, as patent owner, in IPR of a patent directed to co-molded hard shell electronics casing technology.
• Defended a supplier of proprietary material handling products and systems in multiple inter partes and ex parte reexamination proceedings. These proceedings involved patents directed to bulk shipping container systems providing reduced residual content upon evacuation. Obtained rare termination of inter partes reexamination proceedings on behalf of patent owner in connection with favorable settlement of related district court litigation. Obtained issuance of favorable reexamination certificate in ex parte proceeding.
• Defended a website translation company in six inter partes reexamination proceedings involving patents directed to website translation technologies.
• Prosecuted, on behalf of a website translation company, an inter partes reexamination of a patent directed to a method of ordering a translation of an electronic communication.
• Represented an athletic shoe manufacturer in an interference proceeding. (Litchfiled v. Rudy, Patent Interference No. 104,510, United States Patent and Trademark Office Board of Appeals and Interferences)

District Court

• Whitewater West Industries, Ltd. v. American Wave Machines, Inc. (S.D. Calif.) – Representing American Wave Machines in a patent suit regarding air and water pressure systems used in watersports.
• Jager Pro Incorporated v. W-W Manufacturing Co Inc. (W.D.Okla.) Representing defendant W-W Manufacturing in this patent infringement matter regarding livestock and wildlife handling equipment..
• R. Arena Products, Inc. v. Grayling Industries, Inc. (N.D. Ohio) – Represented a plaintiff in an action for patent infringement related to bulk shipping containers. (, United States District Court for the Northern District of Ohio)
• Akzenta Paneele + Profile GmbH and W. Classen GmbH & Co., KG v. Brown-West, L.L.C. d/b/a Carpet One Floor & Home, Shaw Industries Group, Inc. and Välinge Innovation AB [f/k/a Välinge Aluminium AB] (E. D. Texas) – Represented a defendant in a patent infringement action concerning mechanical locking systems for floor panels. United States District Court for the Eastern District of Texas)
• Välinge Innovation AB Pergo AG, Pergo AB, and Pergo LLC (D. Ct. Del.) – Represented a plaintiff in a patent infringement action concerning mechanical locking systems for floor panels. ()
• Napasol AG v. Cosmed Group, Inc. (N.D. Iowa) – Represented counterclaim plaintiff and patentee Cosmed in a patent infringement case concerning steam pasteurization equipment and methods.
• Ivoclar Vivadent, Inc. Shofu Inc. et al. (W.D.N.Y.) – Represented dental company Ivoclar Vivadent in this patent infringement suit regarding silicate glass materials used in veneers and ceramic frameworks. The matter settled favorably.