Rebecca Ding has joined Banner Witcoff as a first-year associate. Her arrival marks the sixth new attorney[1] to join the firm since late October.

Rebecca, who participated in the firm’s summer associate program as a 1L and 2L, joined Banner Witcoff’s Washington, D.C., office on Nov. 30. She earned a bachelor’s degree in electrical engineer and computer science from Peking University, and a law degree from The George Washington University Law School. Rebecca will handle prosecution matters.

Earlier this fall, Banner Witcoff — a nationally recognized intellectual property law firm with 100-years of history and more than 120 attorneys — welcomed Alexander J. Bruening, Peter E. Loy, Sonia Okolie, Priya Persaud and Hugh Warren to the firm as associates.


[1]  Our new attorney hires have all taken the bar exams in their respective states and are awaiting results.

By Alex Bruening[1] and Eric Zelepugas

A granted request for rehearing, failure to prove public accessibility, and a motion to reconsider granting of an earlier motion to reconsider are a few of the topics covered in Banner Witcoff’s latest installment of PTAB Highlights.

Request for Rehearing Based on an Alternative Primary Reference. Petitioner asserted three obviousness grounds based on a number of references: Varenna 2012, Varenna 2016, and/or Manara, optionally combined with Bruehl and one or more of Gatti, La Montagna, and/or Muratore (Ground 5); Varenna 2012, Varenna 2016 and/or Manara in combination with Manicourt (Ground 6); and Varenna 2012, Varenna 2016, and/or Manara in combination with Schwarzer, and optionally in further combination with Bruehl and Gatti, La Montagna, and/or Muratore (Ground 7). While the Board initially determined that the Petitioner failed to show that Varenna 2016 and Manara were prior art, Petitioner argued the Board failed to consider Varenna 2012 as an alternative primary reference.  The Board agreed and granted Petitioner’s request for rehearing. Grunenthal GmbH, v. Antecip Bioventures II LLC,, PGR2018-00092, Paper 29 (Nov. 10, 2020) (Snedden, joined by Obermann and Kaiser).

Board Rejects Assertion That It Misapprehended Evidence. Petitioner requested rehearing arguing that the Board misapprehended evidence by viewing Figures 8, 9, and 11 individually and in isolation and only relying on Figure 8 in its decision. Board rejected that argument as its Decision expressly discussed Petitioner’s reliance on Figures 8, 9, and 11 and how Petitioner’s evidence failed to satisfy its burden of proof. Satco Products, Inc. v. Seoul Semiconductor Co., Ltd., IPR2020-00151, Paper 9 (Nov. 9, 2020) (Abraham, joined by Franklin and Roesel).

Failure to Prove Publication is Prior Art. Petitioner argued that, to access a Working Draft 4 (WD4) of the High-Efficiency Video Coding (HEVC) standard developed by the Joint Collaborative Team on Video Coding (JCT-VC), an ordinarily skilled artisan could have and would have joined a JCT-VC listserv in order to receive a listserv email containing WD4.  Petitioner argued that a skilled artisan would have joined the listserv “given the importance and prominence of the emerging HEVC Standard” and because “the JCT-VC’s work was widely publicized.” The Board disagreed, finding that Petitioner failed to demonstrate that a skilled artisan would have even known about the JCT-VC listserv or how to subscribe to it. Samsung Electronics Co., Ltd. v. InfoBridge Pte. Ltd., IPR2017-00099,-00100, Paper 41 (Nov. 13, 2020)  (Pinkerton, joined by Crumbley and Boucher).

Institution Denied Due to Trial Proximity. On Sept. 3, 2020, the Board denied institution based on a trial in a parallel proceeding scheduled for Dec.7, 2020, approximately nine months before Final Written Decision would have been due. This gap in time created a cognizable risk of inconsistent results and duplication of efforts. The Board denied Petitioner’s request for rehearing of the decision to deny institution finding that even if the trial in the parallel proceeding was delayed by two months, the proximity of the trial date to the Final Written Decision would still favor denying institution. SuperCell Oy v. Gree, Inc., PGR2020-00034, Paper 17 (Nov. 2, 2020) (Wieker, joined by Browne and Jung).

Petitioner Fails to Timely Disclose New References. The Board denied Petitioner’s request for rehearing of a Final Written Decision. It rejected Petitioner’s argument that the Board should consider new references that Petitioner admittedly was aware of prior to the Final Written Decision. The Board found that Petitioner relied on the Board’s emphasis of certain limitations as important to the patentability of proposed substitute claims in its decision to bring the new references forward. ClearOne, Inc. v. Shure Acquisition Holdings, Inc., IPR2019-00683, Paper 96 (Nov. 3, 2020) (Jurgovan, joined by Zecher and Margolies).

Motion to Reconsider a Motion to Reconsider. A joined petitioner moved to act as lead petitioner, which the Board denied. That joined petitioner requested a rehearing of that decision, which the Board granted. The Patent Owner then moved for a rehearing of that decision. The Board denied Patent Owner’s request because the Patent Owner did not point to any precedent that prohibits the Board’s action, nor did the Patent Owner explain how any of the cited Board decisions present an analogous factual scenario. ZTE (USA) Inc. et al. v. CyWee Group Ltd., IPR2019-00143, Paper 71 (Nov. 4, 2020) (Ogden, joined by Boucher and Jivani).

Real Parties in Interest. The Board rejected Patent Owner’s argument that institution should be denied because Petitioner failed to identify all real parties in interest. Instead, the issue of whether a non-party is a real party in interest is better evaluated in the context of a completed trial, when the record has been fully developed and, for instance, the parties have had the opportunity to cross-examine declarants. One World Technologies, Inc. d/b/a Techtronic Industries Power Equipment v. Chervon (HK) Limited, IPR2020-00886, Paper 21 (Nov. 6, 2020) (Horner, joined by Grossman and Finamore).


As a leader in post-issuance proceedings, Banner Witcoff is committed to staying on top of the latest developments at the Patent Trial and Appeal Board (PTAB). This post is part of our PTAB Highlights series, a regular summary of recent PTAB decisions designed to keep you up-to-date and informed of rulings affecting this constantly evolving area of the law.

Banner Witcoff is recognized as one of the best performing and most active law firms representing clients in inter partes review (IPR) proceedings. To learn more about our team of seasoned attorneys and their capabilities and experience in this space, click here.

Banner Witcoff’s PTAB Highlights are provided as information of general interest. They are not intended to offer legal advice nor do they create an attorney-client relationship.  


[1] Alex has taken the bar exam in Illinois and is awaiting results.

Banner Witcoff is proud to have several veterans, an officer in the U.S. Army Reserve, and an Army ROTC cadet on our team. We appreciate their service, and are grateful to all those who has served and continue to serve.

In honor of Veterans Day this year, we asked one of our veterans — Banner Witcoff attorney Matt May — a few questions about his service.

Q: Can you tell us about your military career?

A: I began my Army career as a 2nd Lieutenant in 1992 when I graduated from the United States Military Academy at West Point.  Through the years, I have been in the Active Army, Illinois Army National Guard, and now I am in the U.S. Army Reserve.  I am currently in my 28th year of military service and work as the Interagency Planning Chief for the 76th Operational Readiness Command / Chemical, Biological, Radiological, Nuclear Response Element out of Salt Lake City, Utah.    

Q: Earlier this year, you and your Army Reserve unit were dispatched to Seattle, Washington to help with the response to the COVID-19 pandemic. What was that experience like?

A: My month-long deployment to Seattle was rewarding as I was helping the people of the nation and the state of Washington during a time when our nation needed help.  My unit provided the command and control for the set-up and operation of a 250-bed Army field hospital in Seattle with the 350 great Army medical personnel soldiers assigned to that hospital from Fort Lewis, Washington and Fort Carson, Colorado.      

Q: How does your military experience help with your legal practice?

A: My military experience has helped to mold and shape my leadership and organizational skills in my many years while in the Army.  I have utilized those leadership and organizational skills both within the firm and outside the firm with our clients.  Additionally, my military experience has grounded me in the values and character to help me be successful as an attorney at Banner.

Q: What does Veteran’s Day mean to you?

A: Veteran’s Day means freedom, sacrifice, and honor for those who served in the military and to give thanks to all those who have served.  I also like to honor and thank the families of those military members.  The military family unit sacrifices a lot with a spouse, parent, or child in the military.  Please also remember those family members on this day, as the military family is just as important to our military strength as being a military member.  

Veteran’s Day is a time to pay tribute to those heroic men and women of the Armed Forces who have gone before and laid the foundation for the things that make our country the greatest country in the world.  I wear the wedding ring of my wife’s grandfather, Thomas J. Ernsdorff, who gave his life in Germany fighting for our nation during World War II.  On Veteran’s Day, I think about and thank him and the ultimate sacrifice he made.

By Matt Becker and Lisa Carlson

IPR claim constructions, establishing printed publications as prior art, and numerous real parties-in-interest are a few of the topics covered in Banner Witcoff’s latest installment of PTAB Highlights.

Institution Denied Based on Claim Construction. The PTAB denied institution of IPR because Petitioner advanced an incorrect claim construction where, without explanation, the Petitioner renamed the plain words of a claim (construed “bottom perimeter portion” as “protrusion”). Fellowes, Inc. v. Treefrog Developments, Inc., IPR2020-00869, Paper 16 (Oct. 29, 2020) (Obermann, joined by Braden and Trock).

Printed Publication Established as Prior Art. The Board found that a specification developed by the Foundation for Intelligent Physical Agents (FIPA) qualified as a prior art printed publication under § 102(a) (pre-AIA). FIPA was a Swiss non-profit association created to promote agent-based technology and develop open standards. FIPA began developing its FIPA97 specification in 1996 and posted drafts of the specification to the homepage of FIPA’s website throughout 1997, with an “initial” version posted on Oct. 10, 1997. Anyone could access the FIPA97 specification without a password. Shortly thereafter, other publications reported FIPA’s approval of the FIPA97 specification and directed readers to FIPA’s website for the text of the specification. The Board found that the FIPA97 specification was publicly accessible and disseminated to the relevant public who could locate the specification exercising reasonable diligence.  Thus, the FIPA97 specification qualified as a printed publication under § 102(a). Microsoft Corporation v. IPA Technologies Inc., IPR2019-00837, Paper 42 (PTAB Oct. 22, 2020) (Pettigrew, joined by Chung and Trock).

Failure to Prove Publication is Prior Art. Petitioner alleged that a press release from Business Wire qualified as prior art publication under § 102(a). Petitioner relied solely on the text “Copyright 1998 Business, Wire, Inc.” as the basis for printed publication status. The Board found that Petitioner failed to prove that the reference qualified as a printed publication because Petitioner failed to establish a reasonable likelihood that the reference was publicly accessible before the critical date. Thus, the Board denied institution. Victoria’s Secret Stores LLC v. Andra Group, LP, IPR2020-00853 (PTAB Oct. 22, 2020), Paper 12 (Jeschke, joined by Horner and Worth).

Numerous Real Parties-In-Interest. The PTAB granted institution of IPR and did not find it overly burdensome where Petitioner identified about a dozen real parties-in-interest. NRG Energy, Inc. et. al. v. Midwest Energy Emissions Corp., IPR2020-00832, Paper 17 (Oct. 16, 2020) (Kalan, joined by Kaiser and Ross).

Motion to Reconsider. The PTAB denied Petitioner’s request for rehearing of the decision to deny institution of IPR and rejected Petitioner’s argument that the Board misapprehended a claim term that was previously construed in another IPR for the same patent and related district court case. Amazon.com, Inc. v. Rensselaer Polytechnic Institute, IPR2019-01068, Paper 12 (Oct. 30, 2020) (Jefferson, joined by Cocks and Quinn).

Analogous Prior Art. The Board found that a patent (Schmitt) directed to vehicle stability and traction control qualified as analogous prior art to a patent claiming adaptive cruise control. In particular, the Board found that Schmitt related to the same field of endeavor as the challenged patent—vehicle control systems—and that both were concerned with operator comfort and safety. BMW of North America, LLC, et al. v. Carrum Technologies, Inc., IPR2019-00903, Paper 9 (PTAB Oct. 19, 2020) (Tournquist, joined by Browne, Scanlon)


As a leader in post-issuance proceedings, Banner Witcoff is committed to staying on top of the latest developments at the Patent Trial and Appeal Board (PTAB). This post is part of our PTAB Highlights series, a regular summary of recent PTAB decisions designed to keep you up-to-date and informed of rulings affecting this constantly evolving area of the law.

Banner Witcoff is recognized as one of the best performing and most active law firms representing clients in inter partes review (IPR) proceedings. To learn more about our team of seasoned attorneys and their capabilities and experience in this space, click here.

Banner Witcoff’s PTAB Highlights are provided as information of general interest. They are not intended to offer legal advice nor do they create an attorney-client relationship.  

Banner Witcoff earned five national and eight regional rankings in the 2021 edition of U.S. News & World Report and Best Lawyers’ “Best Law Firms.”

Nationally, the firm received Tier 1 rankings — the highest level possible— for intellectual property litigation, patent litigation, and patent law, and Tier 2 rankings in copyright law and trademark law.

The firm also earned the following regional rankings:

Chicago

Tier 1

  • Litigation – Intellectual Property
  • Litigation – Patent
  • Patent law

Tier 2

  • Trademark Law

Washington, D.C.

Tier 1

  • Patent Law

Tier 2

  • Copyright Law
  • Litigation – Intellectual Property
  • Litigation – Patent

The 2021 rankings are based on feedback from more than 110,000 lawyers from over 22,000 law firms. U.S. News & World Report and Best Lawyers reviewed more 15,587 law firms across 75 practice areas — with only 2,179 firms receiving a national law firm ranking.

Banner Witcoff’s complete list of 2021 rankings can be viewed here.

Five attorneys[i] recently joined Banner Witcoff as first-year associates, highlighting the continued growth of the nationally recognized intellectual property law firm.

Alexander J. Bruening, Peter E. Loy, Sonia Okolie, Priya Persaud and Hugh Warren are the latest additions to Banner Witcoff, a firm with 100-years of history and a seasoned team of more than 120 attorneys.

Alex Bruening joined Banner Witcoff’s Chicago office on Nov. 2.  Alex participated in Banner Witcoff’s summer associate program in Chicago as a 1L and 2L. He earned a bachelor’s degree in mechanical engineering from University of Nebraska and a law degree from University of Alabama School of Law. Alex will handle litigation and prosecution matters.

Peter Loy joined the firm’s Chicago office on Nov. 2. Peter, who was a 2L summer associate at Banner Witcoff, has a bachelor’s degree in electrical and computer engineering from Cornell University, and a law degree from University of Notre Dame Law School. He will focus his practice on litigation and prosecution matters.

Sonia Okolie joined the Washington, D.C., office on Oct. 26. Sonia worked as a law clerk at Banner Witcoff while working to obtain her law degree. She earned her bachelor’s degree in English from Georgetown University, and her law degree from The George Washington University Law School. Sonia will handle design prosecution and trademark matters.

Priya Persaud joined the firm’s Washington, D.C., office on Nov. 2. Priya, who participated in Banner Witcoff’s summer associate program as a 2L, has bachelor’s degrees in computer science, jurisprudence, and political science from Montclair State University. She earned her law degree from Rutgers Law School and will focus her practice on prosecution matters.

Hugh Warren joined the Chicago office on Nov. 2. Hugh was a 1L and 2L summer associate at Banner Witcoff. He earned his bachelor’s degree in electrical engineering from University of Mississippi, and his law degree from University of Alabama School of Law. Hugh will handle litigation and prosecution matters.


[i] Our new attorney hires have all taken the bar exams in their respective states and are awaiting results.

Bloomberg Law sought out Banner Witcoff attorney Craig Kronenthal for his insight on how recent agency precedent has led to an increase in the number of discretionary denials at the U.S. Patent Trial and Appeal Board (PTAB).

The Oct. 27 article points to precedent set in recent decisions, including Apple Inc. v. Fintiv Inc., in which the board outlined new criteria for PTAB judges to consider when deciding whether to institute review.

Craig, who serves as co-chair of Banner Witcoff’s PTAB Committee, told Bloomberg Law: “We see this opinion as contributing to the uptick in institution denials.”

The article examines the impact of other precedential decisions handed down in 2020, to which Craig noted he believes “[t]he PTO is striving for balance” and doesn’t “think the precedential process is trying to push the pendulum too far in any one direction.”

The article, “Patent Board Precedent Points to Validity Review Denials,” is available online to Bloomberg Law subscribers.

Banner Witcoff attorney Rich Stockton reviewed recently approved changes to Chinese Patent Law for an Oct. 26 Law360 expert analysis.

The Standing Committee of the National People’s Congress approved the Fourth Amendment of Chinese Patent Law on Oct. 17. Since the standing committee holds sovereign legislative power in China, the amendment is final and takes effect on June 1, 2021 barring exceptional circumstances.

In his article, Rich briefly summarizes the amendment’s major changes, particularly those affecting industrial design protection. He also offers several strategies for leveraging these changes to maximize industrial design protection in China.

“In the end, the amendment is a long-awaited improvement to the Chinese industrial design protection system from the standpoint of design patentees,” Rich wrote. “But it remains to be seen how much of an improvement it will be.”

His article, “Leveraging Amended Patent Law To Protect Design In China,” is available online to Law360 subscribers.

By Kirk Sigmon and Pei Wu

Contingent motions to amend, secondary considerations and written descriptions are a few of the topics covered in Banner Witcoff’s latest installment of PTAB Highlights.

Contingent Motions to Amend.  Amendments contingent on unpatentability of certain claims were granted given the reasonable number of substitute claims, support in the original disclosure, response to a ground of unpatentability involved at trial, and sufficient scope.  Polygroup Limited MCO v. Willis Electric Co., Ltd., IPR2016-01610, Paper 211 at 26-37 (Oct. 8, 2020) (Plenzler, joined by Saindon and Parvis).

Obviousness. When a specific problem is disclosed in one prior art reference and a specific solution to this problem is disclosed in another prior art reference, there is sufficient reason for one of ordinary skill in the art to combine the identified disclosures in an obviousness analysis. BMW of North America, LLC, et al. v. Carrum Technologies, LLC et al., IPR2019-00903, Paper 24 (Oct. 9, 2020) (Tornquist, joined by Browne and Scanlon).

Written Description.  Patent Owner’s motion to amend was denied by the PTAB because the proposed amendment introduced new matter. Specifically, the proposed substitute claims include a specific “percentage + range” limitation that was not described or indicated in the originally filed application or its priority document in a manner that would “allow one skilled in the art to immediately discern” the “percentage + range” limitation. Red Diamond, Inc. v. Southern Visions, LLP, Paper 38 (Oct.13, 2020) (Kennedy, joined by Crumbley and Abraham).

Secondary Considerations.  Secondary considerations of non-obviousness were considered, but the PTAB found that they were insufficient to demonstrate the non-obviousness of the claims. FMC Technologies, Inc. et al. v. OneSubsea IP UK Limited, IPR2019-00935, Paper 45 (Oct. 14, 2020) (Tartal, joined by Droesch and Cherry).

Motions to Exclude Expert Testimony.  Patent Owner could not use the Federal Rules of Evidence’s Rule 106 to request inclusion of, and argue against, portions of Petitioner’s expert testimony, particularly where those portions were already in the record.  Argentum Pharm. LLC v. Novartis AG, IPR2017-01078, Paper 12 at 27-29 (Oct. 5, 2020) (Crumbley, joined by Pollock and Sawert).

IPRs Filed by Different Petitioner.  Discretionary denial not warranted where an earlier-filed petition challenged different claims and was filed by a different party (albeit an industry organization of which one of the later-filing petitioners was a member), and also where the PTAB could consider both petitions effectively simultaneously.  LG Electronics Inc. v. Jenam Tech, LLC, IPR2020-00845, Paper 16 at 4-12 (Oct. 8, 2020) (Galligan, joined by Howard and Repko).


As a leader in post-issuance proceedings, Banner Witcoff is committed to staying on top of the latest developments at the Patent Trial and Appeal Board (PTAB). This post is part of our PTAB Highlights series, a regular summary of recent PTAB decisions designed to keep you up-to-date and informed of rulings affecting this constantly evolving area of the law.

Banner Witcoff is recognized as one of the best performing and most active law firms representing clients in inter partes review (IPR) proceedings. To learn more about our team of seasoned attorneys and their capabilities and experience in this space, click here.

Banner Witcoff’s PTAB Highlights are provided as information of general interest. They are not intended to offer legal advice nor do they create an attorney-client relationship.  

Banner Witcoff attorney Ross Dannenberg was recently interviewed for an episode of a podcast hosted by Kevin Daisey at Array Digital.

During the podcast, Ross discussed his practice at Banner Witcoff, where he worked for 20 years, as well as his marketing strategies, thoughts on intellectual property, and Patent Arcade, the blog he created to cover the intersection of IP law and video games.

Ross’ practice encompasses all facets of intellectual property relating to computer software. In addition to patent prosecution, Ross has extensive experience with contentious copyright and trademark matters, including litigation, counseling and licensing, and a niche in video game IP law.

While discussing the importance of IP protection, Ross offered this guidance: “Treat your IP how you want other people to treat your company … If you treat your IP with respect and take steps to protect it, then other companies are going to take you seriously.”

Click here to listen or watch the episode featuring Ross’ interview.