Eliot D. Williams

Eliot D. Williams is co-chair of the Patent Trials and Appeals Board practice group at Baker Botts L.L.P. He has appeared as counsel in more than 272 PTAB trials and currently has 63 active cases, putting him in the top 25 most-experienced PTAB litigators nationwide.

His recent client roster includes Dish Network Corp., DraftKings Inc., Motorola Solutions Inc., Fujifilm Holdings Corp., Samsung Group, Abbott Laboratories, Lyft Inc., LG Electronics Inc. and Tile.

Williams been at Baker Botts since 2001. “It’s the busiest I’ve been,” he said. “PTAB work comes in peaks and valleys, and this is a peak. Clients have come to appreciate that we do solid work.”

He holds a bachelor’s degree magna cum laude in electrical engineering and a cum laude JD from New York University Law School.

A recent report showed that the number of trials Williams and the Baker Botts team petitioned before the PTAB increased by 75 percent between the beginning of 2020 and the end of 2022.

Over the past year, he secured his admission to the District of Columbia bar, but continues to appear virtually at hearings. “Either party can request to appear remotely, and I haven’t had a live hearing since before COVID.”

Despite Williams’ wealth of experience, he still finds innovative approaches. For client Penumbra Inc., an Alameda-based medical device company, he conducted two inter partes reviews filed at the PTAB against a rival over patents for a forthcoming apparatus that performs dynamic aspiration thrombectomy procedures, such as for the treatment of a stroke. Penumbra Inc. v. Rapidpulse Inc., IPR2021-01466 (PTAB, filed Aug. 30, 2021).

“Bottom line, we won after trying a new strategy,” Williams said. After concluding that their litigation foe’s earlier-filed patents were not entitled to priority due to flaws in the drafting, the Baker Botts team filed their own.

“Their submission didn’t describe key elements of the invention. So we filed claims that mirrored those of Rapidpulse and went on to convince the Patent Office that it was a mistake for them to have granted them the patent. Then, having obtained the same patent for Penumbra, we went to the PTAB and claimed that we had prior art on the grounds that we had filed an accurate and complete description.”

The other side has moved for a rehearing. “We were happy to think outside the box and have it work,” Williams said.

Before workdays begin, Williams practices meditation techniques. “It helps deal with the stress of handling a lot of matters at once,” he said. “You get a chance to clear your mind and improve creativity and problem-solving.”

—John Roemer