Eliot D. Williams

Baker Botts LLP

Palo Alto, San Francisco

Patent Trial and Appeal Board matters

It's been nearly 10 years since Congress established the Patent Trial and Appeal Board, opening a new forum for lawyers to litigate disputed patent cases. Williams, the co-chair of Baker Botts LLP's PTAB practice, has been deeply involved in the new venue, where he's appeared as counsel in more than 160 PTAB trials with a solid win record both for petitioners and patent owners.

He's often retained to handle the PTAB aspect of high-stakes competitor litigation, even when Baker Botts is uninvolved in the underlying district court case. In 2019, he represented Fujifilm Holdings Corp. against Sony Corp., Qualcomm Inc. against Apple Inc. and Abbott Laboratories against Edwards Lifesciences Corp.

"You identify where possible the technical weaknesses of the challenger's claims," Williams said.

For client Qualcomm, a leading multinational semiconductor and telecommunications equipment maker, he has worked to affirm the validity of its patents in 10 inter partes reviews over devices related to power amplification and other aspects of chip technology generally found in user interface features of smartphones. Apple Inc. v. Qualcomm Inc., IPR2018-01245, (PTAB, filed June 18, 2018).

Williams said he obtained decisions from PTAB judges that Apple had failed to show a reasonable likelihood of success in several of its IPRs, after which the parties settled in a deal publicly reported in May 2019 to include a $4.5 billion payment by Apple to Qualcomm.

"Qualcomm has a very important portfolio in the cellphone space," Williams said. "And we're not quite done with this case."

In another major case, the PTAB recently denied institution of a petition for inter partes review challenging the validity of a patent owned by a subsidiary of Baker Botts client Abbott Laboratories. The denial was for the first of five IPR petitions; Williams leads his firm's team in defending patents related to Abbott's minimally invasive medical device for heart valve repair, the MitraClip. Edwards Lifesciences Corp. v. Evalve Inc., IPR2019-01132 (PTAB, filed May 30, 2019).

The IPR petitions relate to ongoing Delaware district court litigation in which Abbott has asserted a number of patents against Edwards Lifesciences, seeking to enjoin the manufacture and sale of Edwards' Pascal transcatheter mitral valve repair system.

"This is an interesting example of aggressive competitors going at it over a profoundly important medical device," Williams said. "Abbott is working hard to protect its competitive advantage."

Williams has a bachelor's degree in electrical engineering, fulfilling the science degree requirement for patent attorneys.

"The [PTAB] board wants lawyers to argue the details. You're getting pounded with highly technical questions on patents and their prior art," he said. "That's one of the fun things about the practice. You marshal your arguments in the most effective way -- and it's very different from how you would present before a jury."

-- John Roemer