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PTAB Litigation

We are routinely recognized as a top filer of inter partes review (IPR) petitions and have been a leader in Patent Trial and Appeal Board (PTAB) practices since the administrative body was formed in 2012. Our team obtained the first ever full denial of an IPR institution, and has developed a successful approach to PTAB matters that allows us to maximize efficiency, value, and quality for our clients.

Relevant Practices

Appellate Litigation
Copyright
Counseling, Opinions + Licensing
Counterfeit Goods Seizure
Design Patents
Jury Trials
Litigation
Patent Interferences
Patent Prosecution
Section 337/ITC Litigation
Trade Dress
Trade Secrets
Trademarks

PTAB Litigation.

Banner Witcoff is successful on behalf of petitioners at the Patent Trial and Appeal Board, representing them in hundreds of proceedings.

IPR institution rate

20% above the average institution rate

of all claims invalidated

11% above the average of patents going to final decision and having all claims invalidated

invalidating some or all claims

12% above the average of patents going to final decision and having some or all claims invalidated

The bottom line: For PTAB litigation, Banner Witcoff significantly beats the average across the board.

Representative Experience

Banner Witcoff Secures Win for Sebia

Banner Witcoff secured a win for client Sebia at the PTAB by convincing the Board to deny institution of Helena Labs’ Petition for Inter Partes Review of Sebia’s patent related

Another Win Secured for Ashworth Brothers, Inc. and Banner Witcoff Litigation Team

On Monday, January 29th, the U.S. District Court for the District of Delaware entered an Order of Dismissal with Prejudice of the patent infringement suit that Laitram, LLC and Intralox,

Banner Witcoff Obtains PTAB Win for Ashworth Brothers, Inc.

On Monday, November 27, the Patent Trial and Appeal Board issued its Final Written Decision on Remand in Ashworth Brothers, Inc. v. Laitram, LLC, IPR 2020-00593, holding that the only remaining patent

Ashworth Bros. Inc. v. Laitram LLC

Represented Ashworth Bros. Inc. in two IPR proceedings against Laitram, LLC, finding that eight (8) of nine (9) asserted claims of the two patents at issue are unpatentable for obviousness

Albany International Corp. v. Kimberly-Clark Worldwide, Inc., PGR2021-00019, Paper 22 (PTAB June 22, 2021)

Represented Kimberly Clark in a post-grant review from Albany International alleging 19 grounds of invalidity and multiple invalidating sales to a competitor.

Ashworth Bros., Inc. Ashworth Bros., Inc. v. Laitram, L.L.C. IPR2020-00593, IPR2020-00594 U.S. Patent and Trial Appeal Board

Represented Ashworth Bros. Inc. in two IPR proceedings against Laitram, LLC, as well as an associated U.S. District Court patent infringement action involving Ashworth Bros. Posi-Drive Spiral™ Conveyor Belt System.

Clear-Vu Lighting Clear-Vu Lighting LLC v. University of Strathclyde, IPR2019-00431, U.S. Patent Trial and Appeal Board

Represented Clear-Vu Lighting as petitioner in an IPR proceeding against University of Strathclyde. Clear-Vu showed that the patent’s claims directed to using blue light to inactivate certain types of bacteria

Mattel Spin Master Ltd. V. Mattel, Inc., IPR2018-01672, IPR2018-01673 and IPR2018-01674, USPTO Patent Trial and Appeal Board

Represented Mattel in three inter partes reviews, as well as in an associated patent infringement case involving Mattel’s Mecard line of transformable toys.

Comcast Cable Communications Comcast Cable Communications, LLC v. Rovi Guides, Inc., et al.; Nos. IPR2017-00217, et al., USPTO Patent Trial and Appeal Board

Represent Comcast in a large number of inter partes review petitions filed to defend our client against a series of ITC and district court attacks by Rovi.

NIKE In Skechers U.S.A., Inc. v. NIKE, Inc., Nos. IPR2017-00607, IPR2017-00608, IPR2017-00617, IPR2017-00619, IPR2017-00620, IPR2017-00621, IPR2017-00623, USPTO Patent Trial and Appeal Board

Represented NIKE against ongoing attempts to invalidate design patents related to its popular FREE midsole and outsole designs.

YETI Coolers, LLC. RTIC Coolers LLC v. YETI Coolers, LLC., Nos. IPR2016-01176, IPR2016-01207, IPR2016-01430, IPR2016-01432 and IPR2017-00468, USPTO Patent Trial and Appeal Board

Represented YETI in five inter partes reviews filed by RTIC Coolers against three of YETI’s patents for technology related to the latching mechanisms contained on its heavy duty premium hard-sided coolers, and the materials and properties of its soft-sided coolers.

NIKE In Adidas AG v. NIKE, Inc., Nos. IPR2016-00921, IPR2016-00922, USPTO Patent Trial and Appeal Board

Article

Alice Analysis: Practical Guidance From a Decade of Eligibility Cases – Part I

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PTAB Highlights

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Article

A Petitioner's Guide to Handling IPRs in the Higher Survival Patent Arena of Biotech & Pharma

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Article

A Patent Owner's Guide to Handling IPRs in the Higher-Survival Patent Arena of Biotech & Pharma

Article

Which is Better - Patent Arbitration or Patent Post-Issuance Proceedings?

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PTAB Highlights

Carefully Consider Corporate Relationships When Determining Real Parties-in-Interest

Patent Reform Act Proposed For 2009

Banner & Witcoff IP UPDATE. Spring/Summer 2009.

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