Vivek Ganti will lead a roundtable discussion on the topic of litigation strategies relating to patentable subject matter.
This year’s two day conference is being held at Lake Lanier April 28-29, 2017. Jenny Calvert from our firm was selected to be a speaker on IP Litigation Strategies.
A very special congratulations to Lucas Geren and Vivek Ganti who recently became partners in the firm. For more information about this important milestone, please see the firm’s press release here.
All told, HKW attorneys Steve Hill and Vivek Ganti have now won ten separate IPR patent trials, leading to declarations of patent invalidity affecting ten different Kinglite patents. Three other Kinglite patents have been declared invalid in related federal court proceedings for claiming unpatentable subject matter.
The event was attended by over 100 local government officials, inventors and business executives from Jiangsu Province, all interested in innovation, IP development and risk assessment.
Using the inter partes review procedure of the U.S. Patent and Trademark Office, HKW clients American Megatrends, Gigabyte and Micro Star International have successfully challenged the validity of all asserted claims of eight patents. They are U.S. Patent Nos. 6,373,498, 5,987,604, 6,401,202, 6,487,656, 6,523,123, 5,732,268, 6,519,659, and 6,633,976. In the cases of IPR2015-01079, -01081, -01094, -01197, -01132, -01133, -01140, and -01141, the trial on the merits resulted in the cancellation of all instituted claims. All told, these trials resulted in the cancellation of 165 claims. Steve Hill and Vivek Ganti acted as trial counsel for the petitioners in each of the 8 trials.
HKW has been named one of the top Patent Trial and Appeal Board (PTAB) law firms in the United States in a 2015 annual report published by Docket Navigator. The list includes top law firms and corporate legal departments ranked by the number of inter partes review, covered business methods, and post grant review proceedings in 2015 in which the organization represented one of the litigants. Among Atlanta-based law firms, HKW was one of only three firms to make the list.
HKW is sponsoring the Georgia State University and Georgia Tech IP Celebration at the Fox Theatre on October 7, 2016. Intellectual property accomplishments and the people behind these accomplishments will be featured.
Steve Hill will be speaking on the topic of the new realities of U.S. patent litigation at this year’s IP Business Congress of Asia in Shanghai on December 4-6, 2016. Devised for an audience of senior IP business leaders, the program for IPBC Asia 2016 reflects the challenges posed by a rapidly evolving Asian IP market. As part of a speaking faculty composed of thought leaders operating in all parts of the market, Steve and others will be exploring emerging trends and major challenges facing IP owners and their advisers, as well as suggesting solutions. For more information about this event, please visit the website here: http://bit.ly/1rtoy61
United States District Judge James Selna has determined that Plaintiff Kinglite Holdings will have to pay $1.55 million in attorneys fees and expenses of patent infringement litigation incurred by Defendants American Megatrends, Gigabyte Technologies and Micro-Star International. HKW led by Steve Hill successfully represented the Defendants in defeating claims relating to six different patents relating to BIOS technology, and then recovering their attorney fees.
HKW has been recognized as a leading global law firm for patent litigation services in the fifth edition of the Intellectual Asset Management (IAM) Patent 1000 guidebook, recently issued for 2016.
“This is the definitive directory devoted to singling out the leading patent services providers in the world,” said HKW co-founder Steve Hill. “Our diverse clients have placed great confidence in us across a full range of scientific and technical disciplines, which in turn has given our attorneys a chance to shine. We are pleased to be recognized for our efforts.” The IAM Patent 1000 is a comprehensive guide to the world’s leading patent professionals. IAM gathers intelligence on leading patent specialists in major jurisdictions across the globe, and the results are based on 1,500 interviews with patent attorneys, other attorneys and in-house counsel around the world.
Specifically, the guide noted:
“Nationally recognized Hill, Kertscher & Wharton represents a panoply of individuals and businesses in intricate legal matters. Its compact size ensures personal, partner-led support every step of the way. An accomplished trial lawyer with a proven record of success in multimillion-dollar brawls, Steven Hill has secured victories in more than 200 cases involving patents, copyrights, trademarks and trade secrets. Having also dispatched antitrust and franchise-related briefs with aplomb, he knows how to defend companies’ intellectual property from every conceivable angle. Unfair competition claims – including PRE and Walker Process claims – as well as patent misuse and Lanham Act actions are meat and drink to seasoned litigator John North; the courtroom is his home away from home.”
Hill, Kertscher & Wharton recently represented CLX Communications AB (Publ) and its U.S. subsidiaries in its acquisition of Mblox Incorporated for cash consideration of $117 million in a merger which closed on July 11, 2016. Both CLX and Mblox are among the world’s largest providers of cloud-based communications services and solutions, including application-to-person (A2P) mobile messaging services.
Scott Wharton led the team, and was joined by corporate associates Lucas Geren and Counsel McCullen on the transaction.
Link to filed case:
United States District Judge James Selna has determined that Plaintiff Kinglite Holdings will have to pay the attorneys fees and expenses of patent infringement litigation incurred by HKW clients and Defendants American Megatrends, Gigabyte Technologies and Micro-Star International. The HKW team led by Steve Hill, John North, Martha Decker and Vivek Ganti successfully represented the Defendants in defeating claims relating to six different patents relating to BIOS technology.
HKW clients American Megatrends, Micro Star International and Giga-byte Technology have successfully petitioned the Patent Trial and Appeals Board to institute an inter partes review (IPR) challenging the validity of Kinglite Holdings’ U.S. Patent No. 5,836,013 addressed to compressible BIOS. HKW lawyers Steve Hill and Vivek Ganti successfully argued the petition. This marks the thirteenth Kinglite patent that HKW has placed into IPR on behalf of these clients.
On behalf of clients American Megatrends, Micro-Star International and Giga-byte Technology, HKW has successfully argued to the United States District Court for the invalidation of the asserted claims of United States Patent Nos. 6,401,202 and 6,487,656, which are owned by Kinglite Holdings. The patents relate to the basic input/output system (BIOS) for booting the operating system of a computer. The Honorable James Selna agreed with HKW’s arguments that the claims asserted are directed to subject matter that is not patentable because the claims are broad enough to cover transitory signals such as embedded carrier waves. He further agreed with HKW that the 202 Patent is invalid because it covers the abstract concept of multitasking in BIOS. This makes three Kinglite patents which the Court has invalidated in the case, along with seven other patents which the Court has dismissed for reasons such as non-infringement. Twelve of the Kinglite patents are in pending inter partes review proceedings, with two other petitions for inter partes review pending.
HKW clients American Megatrends, Giga-byte Technology, GBT USA, Micro-Star International and MSI have succeeded in obtaining an inter partes review (IPR) of U.S. Patent No. 5,937,200, which is owned by Kinglite Holdings, based on prior art which was not originally considered by the Patent Office. This is the twelfth Kinglite patent to be placed in IPR within the last year. The HKW IPR team was led by Vivek Ganti and Steve Hill.
Atlanta IP Law Firm Defeats 6 Patent Infringement Claims
The intellectual property litigation team at Hill, Kertscher & Wharton, LLP successfully defended six out of six patent infringement claims in the United States District Court for the Central District of California (full article link below).