Patent Office Trials

Since the America Invents Act’s new post-grant procedures were implemented in 2012, Haynes and Boone’s Intellectual Property (IP) Practice has been a leader in helping clients protect their patents and invalidate others’ claims at the U.S. Patent and Trademark Office (USPTO). These trial proceedings include inter partes review (IPR), covered business method (CBM) review, post-grant review (PGR), and other proceedings before the Patent Trial and Appeal Board (PTAB).

Haynes and Boone is among the top 10 law firms filing IPRs on behalf of the Petitioner, with an institution rate of 93 percent and a final decision rate of 91 percent for canceling claims (Docket Alarm, 2018). 

Haynes and Boone attorneys have been involved in over 300 IPR and CBM proceedings before the PTAB, most of which are directed to patents in litigation. Our vast experience in administrative proceedings before the USPTO, and our national patent litigation practice, have made Haynes and Boone one of the firms clients seek for PTAB trials.

Our team of lawyers regularly work with clients in an array of industries, including Internet, computer software, networks, protocols, information security, telecom equipment and standards, energy, imaging systems, semiconductor devices and fabrication, automotive, and business methods.

In the Electrical/Computer space, we have particular experience in:

  • Computer software
  • Information security and coding
  • Computer architecture (including microprocessors)
  • Medical devices and imaging
  • Networking equipment and protocols
  • Semiconductor devices, packaging and fabrication
  • Telecommunication equipment and standards

Recent Speaking Engagements

  • “Where are we on IPRs? A Review of the Updated Trial Practice Guide, Claim Construction, and Federal Circuit Decision”, co-presenters, Dallas Bar Association IP Section meeting, Dallas, Texas, September 26, 2019. - Andy Ehmke, Thomas Kelton
  • “PTAB Launch: The Preliminary Proceeding - New Tactics, Evolving Risks and Trial Institution,” speaker, PLI’s USPTO Post-Grant Patent Trials 2019: New Challenges & Tactics, New York, NY, September 11, 2019. – David McCombs
  • “2019 PTAB Update,” speaker, Rocky Mountain Intellectual Property & Technology Law Institute, Westminster, CO, May 30, 2019. – David McCombs
  • “PTAB Master Class,” moderator, PTAB Bar Association Annual Conference, Washington, D.C., March 13, 2019. – David McCombs
  • “Advocacy Before the PTAB,” moderator, 32nd Annual State Bar of Texas Advanced Intellectual Property Law Course, Dallas, Texas, March 1, 2019. – Thomas Kelton
  • “The (De)Stabilizing Effect of Administrative Adjudication,” speaker, 18th Annual Texas Intellectual Property Law Journal Symposium, University of Texas School of Law, Austin, TX, February 22, 2019. – David McCombs
  • “Tips and Tricks To Help Avoid (or Survive) IPR Proceedings,” presenter, AIPLA CLE Webinar, January 16, 2019. – Thomas Kelton
  • "PTAB: "All Things" PTAB," panelist, Bench & Bar Conference, Coronado, CA, June 23, 2018. – David McCombs
  • “2018 PTAB Update”, co-presenter, Rocky Mountain Intellectual Property & Technology Law Institute, May 31, 2018. – Andy Ehmke
  • "PTAB Launch: The Preliminary Proceeding – New Tactics, Evolving Estoppel Risks and Trial Institution," speaker, PLI's USPTO Post-Grant Patent Trials 2018: Change & Recalibration Seminar, San Francisco, CA, May 15, 2018. – David McCombs
  • “Current Climate Driving Patent Prosecution Practices,” panelist, USPTO 2018 Customer Partnership Meeting in conjunction with AIPLA, May 2, 2018. – Thomas Kelton
  • "Developments at the PTAB and the Federal Circuit," panelist, Stanford Law School's IP Law and the Biosciences Conference, Stanford, California, April 26, 2018. – David O’Brien
  • “2018: A Year of Change for Post Issuance Proceedings?” speaker, 5th Annual IP Defense Summit, Silicon Valley, CA, April 18, 2018. – Phil Woo
  • “The Evolution of Post Issuance Proceedings (PIP) Strategy,” presenter, 4th Annual IP Strategy Summit, Orange County, CA, March 6, 2018. – Thomas King
  • “Building a Defensive IP Strategy: Leveraging the Favorable Landscape,” panelist, 4th Annual IP Strategy Summit, Orange County, CA, March 6, 2018. – Thomas King
  • "PTAB Practice and Strategy," speaker, 18th Annual Berkeley-Stanford Advanced Patent Law Institute, Mountain View, CA, December 15, 2017. – David O’Brien
  • "Advanced IPR Topics Panel with Q&A," panelist, Chicago Regional IPR Seminar, Chicago, December 7, 2017. – David McCombs and David O’Brien
  • "The Future of Patent Litigation and the PTAB," co-panelist, 4th Annual Corporate IP Strategy Conference, Santa Clara University, November 16, 2017. – Andy Ehmke
  • “Patent Policy – The Future of Patent Litigation and the PTAB,” moderator, Corporate Intellectual Property Strategy Conference, Santa Clara, CA, November 16, 2017. – David McCombs
  • “Patent Drafting – Claiming Strategies for 2018 and Beyond,” presenter, 55th Annual Conference on Intellectual Property Law, Institute for Law and Technology, November 14, 2017. – Thomas Kelton
  • “Strategies for Strengthening your PTAB Trial Record for Appeal,” speaker, 22nd Annual Advanced Patent Law Institute, Austin, TX, November 3, 2017. – Raghav Bajaj and Andrew Lowes
  • “Recent Developments in Intellectual Property Practice,” presenter, Intellectual Property Panel Discussion with Haynes and Boone, Dallas, Texas, November 1, 2017. – Scott Jarratt
  • “IPR: A real Threat or Just Fake News?” panelist, Eastern District of Texas 2017 Bench Bar Conference, Plano, TX, October 4-6, 2017. – David McCombs
  • "Mastering the "Ins and Outs" of Selecting and Authenticating the Best Prior Art References," Post-Grant PTO Proceedings: Practical Strategies and Insights for IPR PGR and CBM Review, New York, NY, May 10-11, 2017. – David O’Brien
  • “Concurrent Proceedings before PTAB and District Courts,” moderator, UT-USPTO 12th Annual Advanced Patent Law Institute, Alexandria, VA, March 9-10, 2017. – David McCombs
  • “Complex Issues in PTAB Practice,” speaker, PTAB Bar Association Inaugural Conference, Washington, D.C., March 1-3, 2017. – David McCombs
  • “Post Issuance Proceedings for 2017 and beyond: Plaintiff and Defensive Perspective,” panelist, 3rd Annual IP Strategy Summit, Orange County, CA, February 27, 2017. – Thomas King
  • “Preparing an IPR Petition and a Preliminary Order Response,” panelist, Texas Bar 30th Annual Advanced Intellectual Property Law Course, Austin, TX, February 23- 24, 2017. – David McCombs
  • “PTAB Ethics: A Discussion of Evolving Case Law on Real Party Interest,” presenter, 30th Annual Advanced Intellectual Property Law Course, TexasBarCLE, February 23-24, 2017. – Thomas Kelton 

Honors

IAM Patent 1000

Haynes and Boone Lawyers Featured in 2019 IAM Patent 1000 Directory

Intellectual Asset Management (IAM) Patent 1000 has recognized Haynes and Boone and 11 lawyers in the 2019 edition of the independently researched legal directory.

Intellectual Property

IP Beacon Year in Review 2018

The Intellectual Property Law 2018 Year In Review

We are pleased to highlight some of our representative intellectual property-related client successes and publications over the past year that might be relevant to your business success in the coming year. We represented clients in 74 inter partes review/PTAB proceedings that were filed in 2018, and our patent prosecution team filed over 2,300 U.S. patent applications and helped issue more than 1,650 U.S. patents just in 2018. We also helped close the IP issues in dozens of financings, M&A transactions, and joint venture/licensing arrangements.

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