Mr. McNish led the defense of IBM’s patents at the Patent Trial and Appeal Board against a series of inter partes reviews and covered business method reviews filed by Priceline and its related companies. His team obtained complete denials of institution on six petitions, scoring a clean sweep against Priceline’s challenges to three of IBM’s patents. One of those decisions denying institution later received a rare designation of “informative” from the Patent Trial and Appeal Board. Kayak Software Corp. v. Int’l Bus. Machs. Corp., Case CBM2016-00075, Paper 16 (PTAB Dec. 15, 2016) (designated informative).
He was also part of the team that successfully defended an Orange Book-listed patent on Pharmacyclics’ mantle cell lymphoma treatment Imbruvica® against a hedge fund’s petition for inter partes review. Persuaded by the preliminary response the firm filed for Pharmacyclics, the Board completely denied institution on the hedge fund’s petition.
In addition to his practice representing patent owners, Mr. McNish also represents companies seeking to challenge patents at the United States Patent and Trademark Office, including Cisco, IBM, and Nokia. His work on behalf of patent challengers has contributed to instituted proceedings, litigation stays, and favorable settlements.
Outside of his work at Desmarais LLP, Mr. McNish is an active member of the PTAB Bar Association, where he serves as the District Court Desk Editor for the biweekly PTAB Roundup newsletter. He has also given presentations on practice before the Patent Trial and Appeal Board at national conferences and seminars.
Before joining Desmarais LLP, Mr. McNish was an associate in the Orange County, California office of Knobbe Martens Olson & Bear LLP. During law school, he spent two semesters as a patent and licensing intern with the University of Virginia Patent Foundation, now the UVA Licensing and Ventures Group. He also served as the managing editor of the Virginia Journal of Law and Technology, a law journal that publishes about intellectual property law, Internet law, privacy law, and other issues at the intersection of law and technology.
- Associate, Knobbe Martens Olson & Bear LLP, Orange County, California, 2011-2013
- Intern, University of Virginia Patent Foundation, 2010-2011
- United States Court of Appeals for the Federal Circuit
- United States District Court for the Southern District of New York
- United States District Court for the Northern District of California
- United States District Court for the Northern District of Indiana
- United States District Court for the Eastern District of Michigan
Memberships & Affiliations
- PTAB Bar Association – PTAB Roundup, District Court Desk Editor; Communications Committee
- Federal Circuit Bar Association
- Docket Navigator, Top Attorneys in the PTAB (2015)