This profile is part of the NLJ’s 2018 Litigation Department of the Year special package. Find a full list of winners and finalists here.
Before the constitutional challenge Oil States v. Greene’s Energy reached the U.S. Supreme Court last fall, the biggest case for Patent Trial and Appeal Board practitioners involved a battle over automated swimming pool cleaners.
At issue in Aqua Products v. Matal was a patent owner’s right to amend patent claims after their validity had been challenged in an inter partes review. The America Invents Act expressly provides for such amendments, but the PTAB had been stingy with them, rejecting 112 of 118 such motions as of 2016. Part of the reason was that the PTAB was placing the burden of persuasion that the claims were patentable on the patent owner.
A Finnegan, Henderson, Farabow, Garrett & Dunner team led by partners James Barney, Timothy McAnulty and David Mroz argued that was wrong, that Aqua Products should be allowed to narrow its patented method of underwater propulsion.
They faced an uphill battle: Three different panels of the U.S. Court of Appeals for the Federal Circuit had endorsed the PTAB’s procedure. When the appellate court agreed to reconsider en banc, the PTO dispatched its top solicitor to argue.
It was a grueling hour-long hearing before a hot court. What if an IPR petitioner didn’t oppose a flawed motion to amend, one of the judges asked. That could produce a new claim that isn’t patent-worthy.
Barney was ready for the question. Parties routinely settle disputed claims after the PTAB begins review, he pointed out. “When the patent office dismisses instituted IPRs, it is literally leaving in place claims that it believed at the time of institution were likely invalid,” Barney told the court. But the world doesn’t end—some other petitioner can always challenge those claims in the future.
Ultimately, five judges agreed with Barney’s interpretation of the statute. Two more found that it was ambiguous but that the PTO improperly relied on PTAB case law, rather than notice-and-comment rulemaking, to develop the procedure.
Patent owners hailed the win, and the PTO elected not to petition to the Supreme Court or propose new rules. According to one study the rate of motions to amend has since nearly tripled. In a case brought by Apple Inc., the PTAB in March granted motions to amend a total of 100 claims.
As for Aqua Products, its parent corporation Fluidra SA announced one month after the ruling that it was merging with the company that challenged its patents, Zodiac Pool Solutions. Aqua Products has been remanded to the PTAB, but it’s unclear how much further the proceedings will continue. It’s “clear the petitioner no longer has an interest in challenging these claims,” Barney said.
Name of firm: Finnegan, Henderson, Farabow, Garrett & Dunner Founded: Washington Total number of attorneys: 290 Litigators as percentage of firm: 71 percent Litigators as percentage in D.C.: 71 percent Litigation partners firmwide: 91 Litigation associates firmwide: 104 D.C. IP litigation partners: 57 D.C. IP litigation associates: 64
Keys to Success
- Create a detailed roadmap to success early in the case, then stick to it as much as possible. Avoid detours.
- Never sidestep an argument. Give each of your opponent’s arguments the full credit and attention it deserves.
- Strive to simplify your case at every turn. Avoid rabbit holes. —James Barney