Banner & Witcoff has been extensively involved with proceedings at the Patent Trial and Appeal Board since the America Invents Act was signed into law in 2011, and is a founding member of the PTAB Bar Association. The firm was recognized as a top filer of inter partes review petitions in 2017. Our IPR experience includes the following representative matters.
Representative Inter Partes Review Experience
- Comcast Cable Communications, LLC v. Rovi Guides, Inc., et al.Banner & Witcoff has filed 31 inter partes review petitions on behalf of client Comcast
- Fasteners for Retail, Inc. v. RTC Industries, Inc.Banner & Witcoff prevented inter partes review institution against four of firm client RTC Industries’ patents.
- Skechers U.S.A., Inc. v. NIKE, Inc.The PTAB denied two Skechers’ inter partes review challenges directed at design patents covering firm client NIKE’s popular FREE outsole designs.
- Skechers U.S.A., Inc. v. NIKE, Inc. The PTAB denied five petitions for inter partes review filed by Skechers against firm client NIKE, aimed at invalidating design patents relating to popular NIKE FREE midsole and outsole designs that appear on various NIKE shoe models.
- Adidas AG v. NIKE, Inc.Banner & Witcoff represented client NIKE in inter partes reviews brought by adidas against two NIKE patents related to its FLYKNIT technology.
- Comcast Cable Communications, LLC v. Rovi Guides, Inc., et al. Banner & Witcoff has filed 45 inter partes review petitions on behalf of Comcast. Every asserted claim in 12 challenged patents to reach final decision has been found unpatentable in final written decisions.
- Delphi Technologies, Inc. v. Microchip Technology Inc. Banner & Witcoff represents Delphi Technologies in three inter partes reviews filed against three patents of Microchip Technology.
- Adidas AG v. NIKE, Inc. Banner & Witcoff successfully defended NIKE in two inter partes reviews filed by adidas against one of NIKE’s patents related to circular knitting technology for footwear.
- RTIC Coolers LLC v. YETI Coolers, LLC Banner & Witcoff represented YETI in five inter partes reviews filed by RTIC Coolers against three of YETI’s patents.
- Skechers U.S.A., Inc. v. NIKE, Inc. The PTAB denied all eight petitions for inter partes review filed by Skechers, aimed at invalidating design patents owned by firm client NIKE.
- Coriant Operations, Inc. and other co-petitioners v. Capella Photonics, Inc. In six inter partes reviews, firm client Coriant Operations and its co-petitioners prevailed when the PTAB issued final written decisions that all claims at issue in two asserted patents were unpatentable.
- Seagate Technology LLC v. Enova Technology Corp. Banner & Witcoff client Seagate Technology won a clean sweep of four inter partes reviews that rendered unpatentable two patents of Enova Technology.
- Caterpillar, Inc. v. ESCO Corp. The PTAB ruled in favor of firm client ESCO twice on 16 patent claims, declining institution of inter partes reviews on two petitions filed by Caterpillar and instituting proceedings as to only four other patent claims.
- BLD Services LLC v. LMK Technologies LLC The PTAB ruled in favor of firm client LMK Technologies, declining institution of inter partes reviews on two petitions filed by BLD Services.
- Mexichem Amanco Holdings S.A. de C.V. v. Honeywell International Inc. The PTAB issued a split decision in the inter partes review of firm client Honeywell International’s U.S. Patent 8,444,874 filed by Mexichem Amanco Holdings.
- Adidas AG v. NIKE, Inc. In one of the earlier inter partes review decisions from the PTAB, firm client NIKE obtained a mixed result regarding the patentability of a patent relating to footwear.
- Synopsys Inc. v. Mentor Graphics Corp. On Feb. 19, 2014, following a full inter partes review trial, the PTAB ruled in favor of firm client Mentor Graphics, finding that nine out of 12 of the challenged claims relating to prototyping circuits had not been proven unpatentable.