Notable Successes

Desmarais LLP has secured two inter partes review (IPR) victories for IBM before the Federal Circuit. The court ruled on the IPRs after reviewing the Patent Trial and Appeal Board’s (PTAB) decision to invalidate an IBM patent that covered online user authentication technology.
 
In the April 1 decision, the Federal Circuit found that one of PTAB’s invalidations was not supported by the evidence and issued a complete reversal. The second IPR was reversed based on claim construction and remanded back to PTAB.
 
“Since 2016, companies using IBM’s patented technology without a license have filed numerous PTAB challenges to try to avoid paying their fair share of royalties,” Karim Oussayef, partner at Desmarais LLP, told Law360. “None of those challenges has proven successful.” 
 
The IBM patent (No. 7,631,346) specifically covered the single-sign-on feature for web browsing, which allows users to log in once, with a username and password, and gain access to several different applications without additional log-ins. This patent was one of four involved in Desmarais LLP’s $82.5 million jury verdict win for IBM against Groupon in 2018.
 
Oussayef argued IBM’s appeal at the Federal Circuit. In addition to Oussayef, the Desmarais LLP team included John Desmarais and Kevin McNish.