Washington, D.C. intellectual property lawyer Matt Phillips shares the story of a memorable AIA trial. He recalls a particularly memorable set of inter partes review cases in which he represented the patent owner. In the related district court litigation, the patent owner had sought a preliminary injunction but was denied. The judge explained that, although the case otherwise warranted an injunction, there was prior art that appeared almost identical to the patented invention—it used the same terminology and even featured a block diagram nearly identical to the one in the patent. The judge stated that, but for this seemingly close prior art raising a substantial question of validity, the injunction would have been granted.

When the defendant later filed an IPR petition based on that same prior art, his team was brought in to defend the patent. Their challenge was to persuade the PTAB that the prior art was meaningfully different from the claimed invention. Through detailed technical and legal analysis, they successfully did so, and the Board upheld the patent’s validity. On appeal, they secured a swift Rule 36 affirmance from the Federal Circuit, which he describes as a particularly gratifying outcome.