Appellate Practice

Our Appellate Practice

Dating back to its founders, Wolf Greenfield has been a leader in appellate litigation. In 1961, partner David Wolf argued and won the US Supreme Court case Aro Manufacturing v. Convertible Top Replacement Co., a seminal case in which the Court redefined the patent law doctrine of repair and reconstruction. Since then, the firm has continued to achieve success in appeals—by having both the legal skill and the technical, scientific and industry experience needed to give our clients an advantage in any courtroom.
 
Appellate IP litigation uniquely involves a mix of sophisticated technology with complex procedural, legal and factual issues. Our attorneys focus solely on IP law, and this in-depth experience makes us a logical choice for clients seeking to defend their position on appeal. We identify appellate issues long before the case reaches the appellate stage, helping to ensure the most successful and efficient outcome possible.
 

Here's Why Clients Choose Wolf Greenfield

Successful Track Record. Our attorneys have argued and won at the US Court of Appeals for the Federal Circuit, the First Circuit and in state appellate courts across the country. Recently, the firm won three precedential Federal Circuit cases from post-grant matters in the course of two months, for clients Smith & Nephew and Cirrus Logic. We have also achieved appellate victories for many other clients, including Sony, DellEMC, E Ink, Bridgewater Candle Company and Green Mountain Coffee Roasters.

Extensive Experience. We have argued in numerous appellate jurisdictions, including the US Supreme Court,  the Federal Circuit Court of Appeals, state and federal appellate courts, and administrative appellate tribunals, such as the Patent Trial and Appeal Board (PTAB) and the Trademark Trial and Appeal Board (TTAB). Past appeals have arisen not only from district court cases, but also from the ITC, the PTAB, and from IPRs and other post-grant proceedings. This range of appellate experience enables us to identify potential appellate issues early on in the course of working with clients, allowing us to strategize right from the outset of a case as to how it might be argued once on appeal.

Appellate Background. A number of our attorneys have served as law clerks or interns for judges, including on the Federal Circuit, First Circuit, Third Circuit, the Massachusetts Supreme Judicial Court, the Massachusetts Appeals Court and more. This experience gives us inside knowledge of how appellate courts operate and how to best strategize for a successful outcome.

Technical Depth. Over 90% of our professionals have degrees in science or engineering and over 70% have advanced degrees. Our strong technical backgrounds add value throughout all stages of appellate cases—from developing aggressive trial strategies to choosing the optimal time and venue for litigation to guiding appellate judges through the technical complexities at the core of a dispute.

 

Wolf Greenfield Representative Experience

Wolf Greenfield’s appellate practitioners have played a role in precedent-setting appellate IP cases across the range of appellate tribunals, including the US Supreme Court, the Federal Circuit, the PTAB and other federal and state appeals courts.
 
Wolf Greenfield's recent representative experience with appeals includes: 

While representing Smith & Nephew, we successfully secured an affirmance of the PTAB’s favorable decision. The Federal Circuit held that estoppel could still apply to an adverse decision that came as a result of disclaiming certain claims in a patent. Arthrex’s petition for a rehearing of the case en banc was denied.

We successfully represented Cirrus Logic to obtain an affirmance of the PTAB’s ruling, which involved confirming the claim construction of a particular term and clarifying that the appropriate standard was used for evaluating written description.

We successfully represented Smith & Nephew in defending an appeal of an IPR that found Arthrex’s patents to be obvious. The Federal Circuit affirmed the Board’s final written decision which largely tracked our petition. The Federal Circuit held that the Board did not err in finding that there was enough evidence to support an obviousness claim, and that the Board’s claim construction was correct.

We won an affirmance on appeal of the PTAB’s holding that Smith & Nephew’s prior PCT application disclosed to a person of ordinary skill in the art what the resulting patent claimed, instead of serving as prior art that would make the patent claims obvious. The patent was found to be valid and able to claim priority to the prior PCT application.

We represented plaintiff EMC at trial, which resulted in a jury verdict in our client’s favor finding four patents infringed and awarding damages.  We then successfully defended the verdict on appeal to the Federal Circuit. The district court also awarded our client an ongoing royalty. The defendant separately appealed that award to the Federal Circuit, resulting in a favorable settlement pending the appeal.

We won an affirmance of a motion to dismiss for lack of patentable subject matter under § 101 of the Patent Act.

The district court adopted our proposed claim constructions of key limitations in all of the patents, as a result of which plaintiff conceded it could not prevail and the court entered judgment of non-infringement in our client’s favor. The plaintiff appealed to the Federal Circuit, which affirmed the district court in a further victory for our client E Ink.

We successfully represented Bridgewater Candle in the district court case, which granted our client summary judgment on all copyright and trade dress infringement claims. While representing the client in the appeal, in which the First Circuit affirmed the district court judgment, we established some of the current standards in the First Circuit regarding copyright and trade dress law.

We successfully obtained an affirmance of a district court ruling that involved a favorable claim construction and grant of summary judgment of non-infringement for client Green Mountain.

 

Inv. No. 337-TA-741/749. We successfully represented respondent MStar Semiconductor in these investigations targeting MStar’s semiconductor chips, which were incorporated into numerous LCD products imported into the United States. We took the case through the hearing and secured a complete victory for MStar on the merits of non-infringement. 

 
For any inquiries about our Appellate Practice, please contact Michael Albert.
 
Want to learn more? Check out our resources.

What Is The Key To Unlocking The Federal Circuit's Divided Infringement Test?

Hunter Keeton, shareholder in the Litigation Practice, and Susmita Gadre, associate in the Litigation Practice, discuss the U.S. Court of Appeals for the Federal Circuit and how they shed some light on how to apply the divided infringement standard set forth in Akamai Technologies Inc. v. Limelight Networks Inc., 797 F.3d 1020 (Fed. Cir. 2015).

Data Centers Complicate Patent Venue Standards

Kevin Mosier talks about how these issues came to the forefront in a district court decision that could have a substantial impact on e-commerce and internet-based companies.

Federal Circuit Orders the PTAB to Play Fair

Should the PTAB consider disclosures in an allegedly anticipatory reference that were identified for the first time during an oral hearing? No, according to the Federal Circuit, which ruled in a PTAB appeal that a patent owner was denied “notice and a fair opportunity to respond” in such a situation.

Patent Coverage of Impossible Embodiments: A Cautionary Tale for Patent Owners, and Lingering Questions

Patent owners asserting their patents in litigation will often seek broad claim constructions to cover accused products and forestall defendants’ non-infringement defenses. However, this decision illustrates potential pitfalls of this strategy even aside from traditional concerns about reading claims so broadly as to cover prior art.

Check Out the Latest from our Post-Grant Blog

Our Team

 

Michael Albert

Shareholder

Michael focuses his practice on patent litigation. He has trial experience before federal and state courts across the US and has prevailed in appellate practice before the US Courts of Appeal for the First and Federal Circuits and the Massachusetts Supreme Judicial Court. Michael served as the chair of the Litigation Group for more than 15 years. While at Harvard Law School, Michael served as a research assistant to Professor Laurence Tribe on constitutional and telecommunications law. He also served as a law clerk for Judge Leonard I. Garth of the US Court of Appeals for the Third Circuit.

Greg Corbett

Chair, Litigation Practice

Greg, Litigation Practice Chair, is a highly-experienced and successful first-chair lead litigation shareholder with extensive ITC experience. Greg has 20 years of experience, including as a partner at Kirkland & Ellis, where he practiced IP litigation for over 10 years. Greg has first-chaired numerous ITC investigations while at Wolf Greenfield, including 903, 935, 1012, 1012e and 1076 Investigations.

Rich Giunta

Shareholder

Rich has successfully represented patent owners and petitioners in more than 100 contested matters before the US Patent Office, including inter partes review (IPR), covered business method (CBM) review, and inter partes and ex parte reexamination.

Chelsea Loughran

Shareholder

Chelsea serves as day-to-day managing shareholder in complex patent litigation matters, including ITC investigations. She also works on post-grant patent matters, including inter partes review proceedings. While in law school, Chelsea had a judicial internship for the Honorable Margaret Hinkle.

Mike Rader

Shareholder

Mike heads the firm's New York Office and is a former co-chair of the firm's Litigation Practice. Mike has been with Wolf Greenfield for his entire career, since the Summer of 1997. He represents the firm’s clients as lead counsel in patent, trademark and copyright litigation matters, and practices frequently before the International Trade Commission and district courts around the country, as well as the Patent Trial and Appeal Board in post-grant matters such as inter partes reviews. His disciplined approach to case management has enabled him to litigate successfully, and with great efficiency for his clients, against some of the largest law firms in the country.

Nathan Speed

Shareholder

Nathan is a trial and appellate lawyer focusing on complex patent litigation and post-grant matters. Nathan has experience litigating cases in federal district courts across the country as well as the United States International Trade Commission, the Court of Appeals for the Federal Circuit, and the Patent Trial and Appeal Board. From 2009 to 2010, Nathan clerked for the Honorable Arthur J. Gajarsa of the United States Court of Appeals for the Federal Circuit. While serving as a clerk to Judge Gajarsa, Nathan gained experience in appeals from the federal district courts, the International Trade Commission, the Court of International Trade and the Court of Federal Claims, the Board of Patent Appeals and Interferences, and the Trademark Trial and Appeal Board.

Charlie Steenburg

Shareholder

Charlie is a shareholder in the Litigation Practice and has served as day-to-day lead for numerous ITC investigations—including the 836, 892, 903, 1012e and 1076. Charlie has particular experience as a “case architect” who takes a holistic view of the case and identifies weaknesses in a patent owner’s positions—for example, he regularly exploits tensions between infringement and validity theories.

Bryan Conley

Shareholder

Bryan, shareholder in the Litigation Practice, has significant ITC experience. Prior to joining Wolf Greenfield, Bryan spent 10 years at WilmerHale, where he played critical roles on multiple ITC cases. In one case (Inv. No. 781), Bryan represented Intel, Apple and HP in a six-patent ITC investigation involving integrated circuit packaging layouts.

Stuart Duncan Smith

Associate

Stuart focuses his practice on patent, trademark, trade secret, and copyright litigation, as well as patent post-grant proceedings. He has significant experience in District Court, the US International Trade Commission, and the U.S. Patent and Trademark Office.

Libbie DiMarco

Associate

Libbie, a senior associate in the Litigation Practice, has worked on numerous ITC cases, including the 903, 1012, 1012e and 1076. She was directly responsible for a particularly complex patent on which we were completely successful. She helped the team to develop compelling invalidity defenses based on prior art products—leading the complainant to drop most of its patent laims. Subsequently, the ALJ determined that our client (Sony) had not infringed the remaining claims.

Anant Saraswat

Associate

Anant, a senior associate in the Post-Grant Proceedings Practice, has represented both plaintiffs and defendants in cases involving numerous aspects of LED lighting technology, including epitaxy, phosphors and packaging. He has experience working with expert witnesses and independent testing labs on analysis of LED semiconductors using techniques such as atom probe tomography and transmission electron microscopy. Anant also has experience with all phases of IP litigation at the trial and appellate levels.