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Clint Wilkins
Partner
Haynes and Boone, LLP
Clint Wilkins, Ph.D. is a partner at Haynes and Boone LLP who focuses primarily on patent law and leverages his extensive technical knowledge and experience to assist clients with inter partes reviews (IPRs), patent preparation and prosecution, patent litigation support, and related counseling. He advises clients in a variety of technical areas, including telecommunications, consumer electronics, medical devices, and chemical manufacturing. His practice includes counseling senior management of emerging technology companies at various stages of maturity to help manage all aspects of their intellectual property needs.
Clint has handled the complete life cycle of numerous IPRs for both petitioners and patent owners from institution to final written decision and, thereafter, appeal to the Federal Circuit. Technologies in his IPRs have spanned wireless protocols, error-control coding, multi-antenna/MIMO systems, multi-user detection, wireless physical layer technologies including CDMA and OFDM, radio-frequency circuits, implantable neurostimulators, spinal implants, and anti-counterfeit lottery tickets. He has extensive experience with complex wireless communications technology and associated standards development, having worked in these areas during graduate school, thereafter as an innovator in a corporate laboratory, and continuing to the present as a patent attorney. As a result, he is familiar with many of the major wireless technologies of the last 25 years, including those developed within 3GPP standards (including GSM, EDGE, UMTS, LTE, and 5G), and those developed within IEEE standards (including 802.11), enabling him to efficiently develop solutions for licensing and litigation matters involving SEPs.
Before law school, Clint worked for more than five years as an engineer for a large wireless equipment manufacturer in its corporate research and development labs in suburban Chicago. His projects involved research, development, proof of concept, and 3GPP standardization activities directed toward cellular phones and base stations. He is a co-inventor of four U.S. patents and has published numerous articles in IEEE journals and conferences.
During his work as an engineer, Clint published one book chapter, four papers in refereed engineering journals, and eight papers in refereed engineering conference proceedings on wireless communications.
Recent Articles by Clint Wilkins
Given the various ways the Patent Trial and Appeal Board (PTAB) can exercise discretion to deny institution of an inter partes review (IPR) petition (and the corresponding non?appealability of those decisions), ex parte reexamination is becoming an attractive option to challenge patent validity following a decision not to institute. Because a later filed ex parte reexamination is often viewed as a “second bite at the apple,” there were questions as to how the U.S. Patent and Trademark Office (USPTO) should treat these second attempts at invalidating a patent. For IPRs, the PTAB has used several bases for discretionary denial of a later-filed IPR, but those bases were not being applied to follow-on ex parte reexamination requests. However, in In re Vivint, the Federal Circuit held that the USPTO has the authority to discretionarily deny an ex parte reexamination request under 35 U.S.C. § 325(d), i.e., if “the same or substantially the same prior art or arguments previously were presented to the Office.”
The Patent Trial and Appeal Board (PTAB) has the discretion to deny institution of an inter partes review (IPR) proceeding under 35 U.S.C. § 325(d) if “the same or substantially the same prior art or arguments previously were presented to the Office.” In Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH (“Advanced Bionics”), the PTAB established a two-part framework for determining whether a PTAB panel should exercise discretion under Section 325(d). This article surveys recent PTAB decisions having the common fact that the IPR challenges rely upon prior art that is the same or substantially the same as prior art submitted in an IDS during prosecution to glean insights as to how parties and the Board are addressing Advanced Bionics in this scenario.
