Eliot D. Williams

When Congress created the Patent Trial and Appeal Board in 2012, it opened to lawyers a new arena of practice concerning disputed intellectual property matters. Williams quickly became a leading practitioner before the board and co-chair of Baker Botts’ PTAB practice.

He has appeared as counsel in more than 100 PTAB trials, making him one of the top 25 most-experienced PTAB litigators nationwide.

“There were some growing pains as people felt around in the dark, looking to see what arguments would work before the board,” he said of PTAB’s early days. “It has become a fairly effective forum at which to resolve patent litigation where patent invalidity is a strong defense.”

In 2017, Williams was 3-0 in cases he argued at the U.S. Court of Appeals for the Federal Circuit.

He was counsel for MasterCard International in a covered business method review of a patent purportedly related to electronic funds transfer using cryptographic security. The alleged inventor, Leon Stambler, had successfully defended his patent in earlier challenges by other financial institutions, leading to settlements.

Williams took his client’s case to PTAB, prevailed, and won again in November when the Federal Circuit affirmed PTAB’s decision. MasterCard International Inc. v. Stambler, 17-1272 (Fed Cir., filed Nov. 13, 2017).

“People settled with Mr. Stambler rather than risking a jury loss,” Williams said. “But we were able to show that the techniques he claimed to have invented were disclosed in cryptographic textbooks dating from the 1980s.

“I was familiar with those textbooks because our relationship with MasterCard dates from 2001 and a lot of what they do involves cryptography.”

Williams brought on as his expert witness cryptographic legend Whitfield Diffie, who went up against a college professor that Williams showed was far less experienced.

“Their expert had been in junior high at the time the patent was written and he now teaches Diffie’s work to undergraduates,” Williams said. “The board found Mr. Diffie credible. As battles of the experts go, this wasn’t close.”

Stambler has petitioned for certiorari before the U.S. Supreme Court.

— John Roemer