MBHB Secured for KPN a Rejection of Inter Partes Review Petition at Patent Trial and Appeal Board

CHICAGO – May 10, 2022 – Full-service intellectual property law firm MBHB recently represented telecommunications company KPN in its effort to secure rejection of an inter partes review petition submitted by Xiaomi Technology. Xiaomi filed a petition requesting an inter partes review of several claims in a patent held by KPN for remote device management technology that enables auto-configuration of electronic devices. There is litigation ongoing in Delaware between Xiaomi and KPN regarding the KPN patent. The Patent Trial and Appeal Board issued its decision denying institution of the IPR of the patent on April 19.

KPN and MBHB filed a preliminary response to Xiaomi’s petition defending the uniqueness of the innovation. Based on this preliminary response, the PTAB determined that Xiaomi “does not demonstrate a reasonable likelihood of prevailing” in showing that the claims are unpatentable and denied institution of the IPR.

“This decision protects solid technological innovation that plays an important role in the effective interconnectivity of electronic equipment,” said Bradley Hulbert, partner at MBHB and Chair of the firm’s Electrical Practice Group. “Our team brought deep technical expertise in the software and electronics space, as well as clear writing and extensive Patent Office experience, to this case.”

Hulbert along with MBHB partners Eric Moran and James Lovsin represented KPN. Lovsin is Chair of the firm’s PTAB Trials Practice Group.

About MBHB

McDonnell Boehnen Hulbert & Berghoff LLP (MBHB) provides creative, pragmatic IP business solutions for Fortune 100 companies, midsize companies, startups, and academic institutions. Clients in the U.S. and abroad engage us to secure and enforce their intellectual property rights, from navigating patent office procedures to litigating complex infringement actions. Our attorneys are experienced in the procurement, licensing, enforcement, and defense of patents, trademarks, copyrights, trade secrets, and unfair competition actions in a number of technological disciplines and product categories, including biotechnology and pharmaceuticals, cannabis, chemical, electrical, mechanical and materials, medical device and diagnostics, software and business methods, and telecommunications. Visit mbhb.com for more information on the firm.