Eliot D. Williams

Williams, a Palo Alto-based intellectual property partner with Baker Botts, has appeared as counsel in more than 130 Patent Trial and Appeal Board trials.

The patent proceedings are efficient, thorough, and require a deep, technical understanding of the innovations that the patents protect.

“There’s no hiding the details. You do have to be technically agile and dig into the guts of a patent,” said Williams, who co-chairs Baker Botts’ PTAB practice.

The restructuring of post-grant patent proceedings at the U.S. Patent & Trademark Office has compelled PTAB attorneys like Williams to think quick on their feet, as the breadth of discovery is somewhat constricted by statutory time limits, he said.

Among Baker Botts’ recent cases is representation for television provider Dish Network Corp. in a PTAB proceeding against Customedia Technologies LLC involving patents for systems of data management for on-demand video and advertising. Dish Network Corp. v. Customedia Technologies LLC, 2017-00019 (PTAB).

The PTAB panel invalidated all of the challenged claims last summer, but the case is on appeal to the U.S. Court of Appeals for the Federal Circuit. Williams served as lead counsel in Dish’s successful inter partes review and covered business method patent matters at the PTAB, and is lead counsel on the appeal.

Meanwhile, Williams is also coordinating the Baker Botts team’s role in matters between technology giants Apple Inc.and Qualcomm Inc.

Qualcomm retained the firm to defend the validity of its patent portfolio in 10 IPR petitions (Apple v. Qualcomm, PTAB IPR2018-01245, IPR2018-01252, IPR2018-01253, IPR2018-01270, IPR2018-01275, IPR2018-01277, IPR2018-01278, IPR2018-01279, IPR2018-01280, IPR2019-00112), all related to various smartphone user interface features.

Williams said he stays abreast of changes to PTAB trial proceedings.

This year, he’ll be watching the first institutional decisions under new claim construction standards that took effect for petitions filed after November 2018, and whether that means claim amendments will be pursued with more frequency.

“It’s a little too early to say,” he said. “We’ll see if that moves the needle.”

— Jennifer McEntee