Patent Appeals
We have been ranked nationally in Chambers USA for Intellectual Property: Appellate since its inception.
Perkins Coie has one of the top patent appellate practices in the country. We regularly represent high tech 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 U.S. Court of Appeals for the Federal Circuit. We have been ranked nationally in Chambers USA for Intellectual Property: Appellate since its inception. In the past five years, we have handled well over 100 patent appeals and writ proceedings in the Federal Circuit, earning an impressive record of 49 wins, 13 losses, and two mixed results in cases decided on the merits.
Our practice is led by eminent and highly experienced patent appellate attorneys, including Nate Kelley, who served as Solicitor of the Patent and Trademark Office (PTO) and directed most appeals involving the agency from 2012 to 2018, and Dan Bagatell, a fellow of the American Academy of Appellate Lawyers who has handled IP appeals for over 25 years. We also benefit from the talent and insights of numerous former Federal Circuit law clerks.
Our appellate attorneys partner with trial counsel at Perkins Coie and other firms to present technically complicated facts in a clear, compelling and legally persuasive way—both in briefs and at oral argument. We focus on winning, but also on efficiency and achieving clients’ business goals.
In addition to presenting cases to the Federal Circuit and U.S. Supreme Court, we 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. We also aid clients by writing amicus briefs that weigh in on important legal issues, preparing policy papers that urge agencies and Congress to draft statutes or regulations that move the law in the right direction and advising on important recent legal developments and impending reforms. In doing so, 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
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
Insights
News
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.