With a record of more than 20 years of innovation and technology leadership in the fabless semiconductor industry, Lantiq needed to ensure a positive result in defending its patent when challenged by an ex parte reexamination filed during a pending patent infringement suit.
After interviewing a number of firms, Lantiq’s Director of Patents, Marc Asperas, settled on Fish because of its expertise in litigious reexamination matters:
“I chose Fish because of their expertise in litigious reexamination matters. Many firms claim to be experts in litigious reexam, but very few are.”
Fish assembled a team of reexamination experts with technical backgrounds to match Lantiq’s unique technology. The Fish team, hailing from multiple U.S. offices, integrated quickly with Lantiq’s internal team in Germany, an external technology expert in California, and Lantiq’s litigation counsel. Mr. Asperas continued:
“As a team, we made everything work together – the technical expertise, the day-to-day reexamination practice, the high-level strategy, our internal knowledge of the invention, and the coordination with our litigation counsel. We all came together, and it worked out really well.”
The international team assembled in Virginia in June of 2012 to prepare for and conduct an in-person interview with three examiners at the USPTO. The team worked closely to formulate an approach for efficiently and effectively presenting their case during an interview with the Central Reexamination Unit team, highlighting flaws in the outstanding rejections.
“What struck me with Fish was their energy level, their commitment to the project, and the level of organization and guidance throughout.”
After conducting the interview, the team worked together to prepare and file an official response, leading directly to the withdrawal of all rejections and confirmation of the patentability of all original and newly added claims. Mr. Asperas and Lantiq were vindicated in their selection of counsel and emboldened in their offensive case:
“We were able to get a positive result in record time. It helped us resolve our case so we could end expensive litigation before trial – it really worked out to our benefit.”
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