About Jay Guiliano
Jay is a founder of Patdek Software, a shareholder at the Polsinelli law firm, and a Vice-Chair of the PTAB Bar Association Website Committee. He's devoted more than 12,000 hours challenging patents over his 15+ year legal career. His main focus is addressing bad patents and he's been involved with more than 50 post grant proceedings.
In his spare time he tinkers with all aspects of home theater systems and design, including programming RTI control systems for himself and his friends.
To subsidize his home theater interests, he works as a patent lawyer. In one project, he led the Macrosolve ex parte reexamination (U.S. Patent No. 7,822,816), with all claims canceled in a little more than a year. Here are some of the more mundane details for that patent:
- Macrosolve reexamination filed (Control No. 90/012,829);
- reexamination ordered for Macrosolve patent;
- Benigno PCT prior art (WO 99/33390) outlined in presentation (OTH-A);
- non-final Office Action rejecting claims 1-14;
- Final Office Action maintaining rejections;
- all claims of the Macrosolve patent cancelled.
Read about the Macrosolve case by Lee Cheng of Newegg.
A fair amount of this so-called claim-challenging experience involved the Ronald A. Katz Technology Licensing patent portfolio. Jay pursued this portfolio for more than 10 years, including his work across 100+ defendant MDL actions. Here's the prior art available for download: '120 patent; '134 patent; '863 patent; and '984/'252 patents. Here's a breakdown of the ex parte reexamination requests and Office Actions.
Other patent challenges were filed as inter partes reviews against SIPCO. These IPRs did not go well. Some details about the non-institution IPR decision for IPR 2015-00659 can be found here, including a critique summarizing the abrupt shifts in the PTAB landscape in 2015:
- IPR2015-00659 petition (illustrative presentation)
- IPR2015-00663 petition (illustrative presentation)
- IPR2015-00668 petition (illustrative presentation)
And yet even more cases he's been involved with:
- SmartPhone Technologies LLC v. ZTE Corporation et al. (mobile phone features)
- Innovative Global Systems, LLC v. Volvo Construction Equipment North America, LLC et al. (remote vehicle monitoring systems)
- 55 Brake LLC v. Audi of America, et al. (electronic parking brake systems)
- MHL Tek v. Nissan Motor Company, et al. (tire pressure monitoring systems)
- In re Ronald A. Katz Interactive Call Processing MDL 1816 (interactive voice response systems)
- Centillion Data Systems, LLC v. BellSouth Corporation, et al. (bill processing and delivery systems)
- Caterpillar Inc. v. International Truck & Engine (fuel delivery control systems)
- GTE v. Nokia and AT&T Wireless (cellular telephone activation systems)
- Honeywell v. The United States et al. (on-board oxygen generating systems - OBOGS)
- Verizon California Inc. v. Ronald A. Katz Technology Licensing (interactive voice response systems)