Patent Appeals
Winning patent appeals is important. But innovative clients also demand excellent service, efficient representation, and help achieving business goals.
Our Federal Circuit patent appeals practice is one of the best known and most highly respected practices in the country. Clients entrust their most significant matters to our team because they know they’ll get top-quality representation and excellent counseling.
Ranked in Chambers USA for Intellectual Property: Appellate since the inception of that category, our team includes Nate Kelley, who served as Solicitor of the United States Patent and Trademark Office (USPTO) and directed most appeals involving the agency from 2012 to 2018, and Dan Bagatell, a fellow of the American Academy of Appellate Lawyers, with more than 25 years handling IP appeals. We also benefit from the talent and insights of numerous former Federal Circuit law clerks.
We regularly partner with trial counsel here and at other firms to present our clients’ technically complicated facts in a clear, compelling, and legally persuasive way—both in briefs and at oral argument. That approach produces outstanding results: since 2016, we have had a record of 64 wins, 17 losses, and nine mixed decisions in Federal Circuit patent appeals and mandamus proceedings.
Our strength lies in selecting and persuasively presenting the issues on appeal. We represent technology and pharmaceutical industry clients in high-stakes appeals from district courts, the Patent Trial and Appeal Board (PTAB) and the International Trade Commission (ITC), to the Federal Circuit. We also often help at critical stages of trial court, PTAB, and ITC matters, advising on key issues and motions so that cases are best positioned for appeal.
Clients seeking to shape government policy value our help with amicus briefs and policy papers that urge agencies and Congress to draft statutes or regulations that move the law in the right direction. Together with our clients, we not only argue what the law should be, but also explain the practical significance of the legal issues in the real world.
Our Team
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Notice
Before proceeding, please note: If you are not a current client of Perkins Coie, please do not include any information in this e-mail that you or someone else considers to be of a confidential or secret nature. Perkins Coie has no duty to keep confidential any of the information you provide. Neither the transmission nor receipt of your information is considered a request for legal advice, securing or retaining a lawyer. An attorney-client relationship with Perkins Coie or any lawyer at Perkins Coie is not established until and unless Perkins Coie agrees to such a relationship as memorialized in a separate writing.
Awards and Recognition
- Perkins Coie Named a Finalist for Intellectual Property Litigation Department of the Year in 2019 and 2021
- Ranked nationally for patent appeals in the United States and in China by Managing IP
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Professional Experience
Patent Appeals Experience
St. Regis Mohawk Tribe v. Mylan
Secured a major victory in a precedent-setting case involving tribal sovereign immunity. Allergan transferred patents covering a treatment for chronic dry-eye to the St. Regis Mohawk Tribe so that the Tribe could assert sovereign immunity to inter partes reviews that were instituted at Mylan’s behest. The Federal Circuit agreed with the PTAB that tribal sovereign immunity does not apply when a federal agency reconsiders its own patent grant. The Supreme Court denied certiorari. The matter was named one of the “Biggest Patent Cases of 2018” by Law360, and Managing IP recognized it as a “Patent Impact Case of the Year.”
In re Copaxone & Yeda v. Mylan
Convinced the Federal Circuit to affirm rulings by both the district court and the PTAB that patents covering 40mg three-times-a-week dosing of Teva’s blockbuster multiple sclerosis drug Copaxone® (glatiramer acetate) were invalid for obviousness. The Federal Circuit's decisions put an end to Mylan's long-running battle against Teva and cleared the way for Mylan to market its own generic version of the product rather than waiting until the patents’ expiration in 2030.
Nuvo Pharmaceuticals v. Dr. Reddy’s Laboratories
Convinced the Federal Circuit to reverse a district court’s ruling that two patents contained an adequate written description of the claimed invention. The claims required an amount of an uncoated proton-pump inhibitor effective to raise gastric pH to a certain level, but the Federal Circuit held that the specifications failed to demonstrate that the inventor knew, rather than hoped, that uncoated proton-pump inhibitors would work.
BTG International v. Amneal & Mylan Pharmaceuticals v. Janssen Oncology
Persuaded the PTAB to find all claims of the only Orange Book-listed patent covering Janssen’s Zytiga® (abiraterone acetate) product unpatentable. Demonstrated the obviousness of combining abiraterone with prednisone to treat patients suffering from metastatic castration-resistant prostate cancer. Achieved a second victory in the parallel district court case when the court held the claims invalid after a bench trial. Convinced the district court, the Federal Circuit, and the Supreme Court to deny Janssen’s request for an injunction against generic launch pending appeal, and then persuaded the Federal Circuit to affirm the unpatentability of the claims on the merits.
Cleveland Clinic Foundation v. True Health Diagnostics
Convinced the Federal Circuit to affirm the ineligibility of Cleveland Clinic’s patent claims on methods of detecting elevated levels of a biomarker that correlates with cardiovascular disease. The Federal Circuit held the claims invalid despite Cleveland Clinic’s argument that the PTO’s patent-eligibility guidelines approved the eligibility of similar laboratory-method claims. The win was recognized by Law360 as one of four recent Federal Circuit decisions that patent attorneys need to know.
U.S. Water Services v. Novozymes
Won infringement and non-invalidity verdicts for the plaintiff at trial in a case regarding a patent on reducing fouling during production of ethanol. Then convinced the Federal Circuit to reverse the district court’s post-trial grant of judgment as a matter of law of inherent anticipation.
MACOM Technology Solutions Holdings v. Infineon Technologies
Obtained a preliminary injunction that declared that Infineon’s termination of a patent license agreement was ineffective. Then persuaded the Federal Circuit to affirm the critical aspect of the injunction.
Luminara Worldwide v. Liown Electronics
Convinced the Federal Circuit to reverse a preliminary injunction that barred Liown from supplying artificial flame candles because the asserted patent claim was likely invalid over a prior-art patent.
Digital Media Technologies v. Netflix, Amazon.com & Hulu
Successfully defended the district court’s ruling that Digital Media Technologies patent claims involving digital rights management and encryption of content licenses were patent-ineligible.
Uniloc USA v. Amazon.com, Google, Hulu & Netflix
Successfully defended the district court’s ruling that Uniloc’s patent claims on time-adjustable licenses were ineligible for patenting under section 101.
Vehicle IP v. Cellco Partnership
Defeated claims of infringement of a patent on navigation systems that provide estimated times of arrival and directions to destinations. Convinced the district court to reconsider its construction of a key claim term shortly before trial and to enter judgment of non-infringement. Then persuaded the Federal Circuit to affirm the claim construction.
IPCom v. HTC
Convinced Federal Circuit to affirm the PTO’s ruling that claims to a method of avoiding cellular network overload were unpatentable over prior-art GSM specifications. Also persuaded the Federal Circuit to affirm most of the PTO’s ruling that claims involving handover of cellphones in a cellular telephone network were unpatentable over prior art.
UltimatePointer v. Nintendo
Won affirmance of a summary judgment that Nintendo did not infringe a patent on a hand-held pointing device to control the cursor on a display screen.