Experience
Successful PTAB Administrative Appeal
Won an administrative appeal for a global technology company before the U.S. Patent Trial and Appeal Board in a case involving a patent application that sought to protect a method of predicting a consumer’s future purchases, based on previous transaction card purchases indicating that a “life event” had recently occurred for the consumer. The United States Patent and Trademark Office had rejected the application as directed to an abstract idea under a 2014 Supreme Court case. In its decision in favor of the client, the Appeal Board held that any abstract idea was integrated into a practical application because the patent claims “improve the underlying consumer behavior prediction technology.”
Payment Authentication Patent Portfolio for Fintech Client
Developed patent portfolio for large fintech client in the area of payment authentication services. Multiple patent attorneys prepared and filed numerous patent applications directed to authenticating online users using client device metadata.
IP Due Diligence for $900 Million Business Acquisition
Handled the IP due diligence for a client that acquired a payments technology company valued at about $900 million.
Filed Suite of Patents for Next-Gen Technology for Multinational Company
Obtained a suite of more than 10 patents for newly developed, next-generation technology, establishing a broad wall of protection not just for the new technology as practiced by the client, but also for white space between competitor technology and the new technology.
Won Summary Judgment in Patent Case for Manufacturer
Drafted a successful memorandum in support of summary judgment of infringement, and in opposition to summary judgment of invalidity, in a case involving several patents directed to various aspects of heavy duty cleaning equipment.
Eight-Figure Verdict Preserved in Patent Infringement Reexamination
Successfully defended client's patent in a reexamination proceeding initiated by a competitor at the U.S. Patent and Trademark Office, preserving an eight-figure litigation verdict for the client against the competitor for infringement of the patent.
Favorable Settlement for Gaming Client in Patent Re-examination
Represented large gaming client in a re-examination proceeding involving a high-profile patent. This patent provided patent protection over products representing a significant portion of the client's business. The re-examination proceeding resulted in a favorable settlement for the client.
