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CLIENT PROFILE Client involved in complex intellectual property litigation, which resulted in multiple concurrent inter partes review proceedings.

EXECUTIVE SUMMARY Our client, a technology company with an IP portfolio being used by competitors in the industry, filed suit for patent infringement in federal district court. In response, the accused infringers initiated multiple inter partes review (IPR) proceedings with the Patent Trial and Appeal Board to try to invalidate the patents before the district court case concluded. The client needed litigation counsel to effectively and efficiently defend its patents on multiple fronts, maintaining a consistent presentation of arguments that protected their valuable intellectual property.

PRACTICE AREAS • Patent Litigation • Patent Administrative

Agency Actions • Business and

Commercial Litigation ATTORNEYS • Sean Hsu • Rajkumar Vinnakota • Glenn Janik • Parvathi Kota • Donald Puckett

CHALLENGE Too often, patent owners can have their meritorious claims overwhelmed by a host of defensive tactics to try to undermine or invalidate their intellectual property. The use of concurrent proceedings is quite common and can place a tremendous burden on the patent owner, both to control the increasing costs of pursuing their claims and to maintain a clear case for the jury to understand at trial. This danger is particularly acute during IPRs, where the patent owner is often on the defensive and trying to merely keep their patent claims alive. What companies need in enforcing their intellectual property are efficient trial lawyers who can stay within a reasonable budget and who understand the art of combining trial techniques with technical accuracy.

THE JVLLP DIFFERENCE At Janik Vinnakota, we understood the power of a good story, especially in cases involving complicated technical disputes. We helped our client structure their case with trial in mind and built their evidence in support from the inception of their claims. Additionally, we maintained this same focus through IPRs, where patent claims often become muddled with technical jargon and

arguments solely focused on avoiding invalidity challenges. Without that consistent focus on our trial themes, the patent may survive IPRs but substantially weaken the enforcement case in the process. As a result, the client was able to oppose the IPR challenges, utilizing the IPRs to further bolster their case for trial rather than merely pausing litigation until the IPRs concluded.

Case Study Post-Grant Review of Patents