Electrical & Mechanical Patent Prosecution, Opinions, & Co-Chair Post-Grant Proceedings
LifeCORE LLC d/b/a Assault Fitness v. Woodway USA, Inc., (PTAB): Representing LifeCORE (Petitioner) in four inter partes review (IPR) proceedings challenging patent claims across four patents related to manual treadmills. Representative Case Nos. IPR2023-00836, IPR2023-00843, IPR2023-00849, and IPR2024-00083.
Volkswagen Group of America et al. v. Yechezkal Evan Spero, (PTAB): Defending Spero (Patent Owner) in 20+ IPRs repeatedly challenging patent claims across three patents related to adaptive lighting systems. Representative Case Nos.: IPR2022-01586, IPR2023-00315, and IPR2023-00335.
Apple Inc. v. Omni MedSci. Inc., (PTAB): Defended Omni (Patent Owner) in multiple inter partes review (IPR) proceedings challenging patent claims related to wearable devices that monitor physiological parameters, three of which were denied institution. Representative Case Nos.: IPR2019-00913, IPR2019-00910, and IPR2019-00911.
IEE Sensing, Inc. v. Delphi Technologies, Inc., (PTAB): Represented IEE (Petitioner) in an IPR challenging patent claims related to vehicle occupant detection systems, resulting in all claims being found unpatentable. Patent Owner filed a contingent motion to amend during the IPR, and the PTAB found all the substitute claims unpatentable as well. IPR2018-00179. We also filed a third-party protest challenging Patent Owner’s subsequent reissue application no. 16/518,486 and Patent Owner let the application go abandoned.
Google LLC v. Seven Networks, LLC, (PTAB): Defended Seven (Patent Owner) in multiple IPRs challenging patent claims related to telecommunications, resulting in a favorable outcome for the client. Representative Case No. IPR2018-01115
Ford Motor Company v. Paice LLC, (PTAB): Represented Ford (Petitioner) in 22 IPRs challenging many claims across five separate patents related to hybrid vehicles, resulting in hundreds of claims being found unpatentable. Representative Case Nos.: IPR2014-00570, IPR2014-00875, IPR2014-01415, IPR2015-00785, IPR2015-00801
Paice LLC v. Ford Motor Company, (Fed. Cir. 2016-2018): Successfully represented Ford in numerous appeals challenging the PTAB decisions that had found hundreds of patent claims unpatentable. Representative Case Nos.: 2016-1411, 2016-1647, 2017-1387
In re Certain Hybrid Electric Vehicles, (ITC): Trial counsel for Ford in multi-patent investigation directed to hybrid electric vehicles. Settlement after trial. Inv. No. 337-TA-1042
Panelist, “Petitioner Pitfalls and Persuasive POPRs,” PTAB Bar Association Annual Conference, March 2023
Co-Presenter, “PTAB Year in Review: New Designated Decisions and Procedures Impact AIA Trial Strategies,” BK Hosted Webinar, January 2021
Panelist, “Claim Amendments Under the PTAB Pilot Program,” PTBA Bar Association Annual Conference, September 2020
Co-Presenter, “PTAB Year in Review – Designated Decisions, Constitutional Challenges, and AIA Procedures,” BK Hosted Webinar, February 2020
Speaker, Student Alumni Association (SAC), Kettering University, September 2019
Panelist, “Interview with the Chief,” PTAB Judicial Conference, July 2018
Moderator, “Evolving procedural challenges associated with AIA,” Managing Intellectual Property PTAB Forum, May 2018
Presenter, “IP Clinic,” Detroit Fintech Challenge, April 2018
Co-Presenter, “2017 IP Litigation and PTAB Year in Review,” BK Webinar, February 2018
Co-Author, “Brooks Kushman Secures Favorable Result at PTAB for Patent Owner Y. Evan Spero,” Brooks Kushman Client Alerts, June 2024
Co-Author, “Federal Circuit Rules that PTAB May Not Cancel ‘Challenged’ Claims for Indefiniteness in an IPR Proceeding (but ‘New’ Substitute Claims are Fair Game),” Blog Post, February 2020
Co-Author, “PTAB Precedential Opinion Clarifies Standard for Establishing Public Accessibility of a Reference,” Blog Post, January 2020
Co-Author, “Federal Circuit Finds PTAB Judges to be Unconstitutionally-Appointed ‘Principal’ Officers,” Blog Post, November 2019
Co-Author, “USPTO Proposes New Rules for Amending Claims During AIA Trial Proceedings,” Blog Post, November 2019
Co-Author, “USPTO Proposes New Procedures to Expand Availability of Claim Amendments During AIA Post Grant Proceeding,” Client Alert, November 2018
Co-Author, “Is Uncle Sam a ‘Person’? Supreme Court Grants Cert to Consider Government Standing in CBM Proceedings,” Blog Post, November 2018
Co-Author, “PTAB Releases Revised AIA Trial Guide,” Blog Post, August 2018
Co-Author, “PTAB Designates Two New Informative Decisions Addressing Its Discretion to Deny Review under 35 U.S.C. § 325(d) Based on Prior Examination,” Client Alert, March 2018
Co-Author, “Federal Circuit Rules That PTAB Rejection of IPR Time-Bar Defense Is Reviewable,” Client Alert, January 2018
Co-Author, “PTAB Designates Two New Informative Decisions Addressing IPR Filing Issues,” Blog Post, January 2018
Co-Author, “Supreme Court To Review PTAB Practice Of Partial Review,” Client Alert, June 2017
