Eliot D. Williams

Eliot D. Williams is the chair of Baker Botts L.L.P.’s Palo Alto intellectual property department and the former chair of its Patent Trial and Appeal Board practice. In the coming months he plans to move to the firm’s Washington, D.C., office to focus on his PTAB cases and his appellate work before the U.S. Court of Appeals for the Federal Circuit.

“Both PTAB in Alexandria, Virginia, and the Federal Circuit in Washington are going back to personal appearances,” he said. “During Covid, it was virtual arguments. My next project will be to get integrated with the D.C. IP bar.”

The move makes sense because much of Williams’ practice is in cases before PTAB and the Federal Circuit. In February, he again successfully argued an appeal, this time for client Sling TV LLC, a Dish Network Corp. subsidiary, in a patent fight with patent assertion entity Uniloc Corp. over Sling’s technology related to user interface data feeds. Sling TV LLC v. Uniloc 2017 LLC, 2021-1651 (CAFC, op. filed Feb. 2, 2022).

The outcome was notable because Federal Circuit panels are generally deferential to PTAB decisions, but in this case the judges vacated a PTAB ruling and sent the case back— vindicating Williams’ PTAB arguments and calling the PTAB analysis “difficult to understand.”

“I lost at PTAB but got a reversal. In this case they did defer,” Williams said. It was his thirteenth win at the Federal Circuit since 2017 against a single loss. The case is currently back before the board.

Earlier, Williams obtained a precedential Federal Circuit decision for Dish in the currently contested area of subject matter eligibility of computer-implemented inventions, an opinion the court has since cited often. The panel held that merely configuring a computer to implement an improvement on an abstract concept is not patent-eligible. Customedia Technologies LLC. v. Dish Network Corp., 18-2239, 19-1000 (CAFC, op. filed March 6, 2020).

Williams has been with Baker Botts for more than 21 years. He holds a BS degree magna cum laude in electrical engineering plus a cum laude JD from New York University Law School.

The science background, he said, remains useful. “It’s directly relevant to many of the telecom cases I work on, directly in my educational wheelhouse. Not so much for my medical devices and biochemistry clients, but with the degree comes a helpful appreciation of the principles of science. That double-e degree remains instrumental in my ability to handle PTAB cases in general, where technical details are so important.”

– John Roemer