W. Todd Baker

Partner Patent Infringement Litigation

w.baker@kirkland.com

Practices

Overview

[Todd Baker] develops an intimate understanding and appreciation for the client's business position, enabling him to provide commercially driven advice.” - Washington Business Journal

W. Todd Baker is an IP litigation partner in the Washington, D.C., office of Kirkland & Ellis LLP. Todd is experienced handling post-grant matters at the USPTO including all aspects of IPR proceedings at the USPTO's Patent Trial and Appeal Board (PTAB). He advises clients on issues of patentability, derivation, inventorship and priority related to post grant matters before the PTAB as a supplement or an alternative to traditional litigation-based patent validity challenges.

Todd litigates post grant matters at the USPTO in diversified electrical and mechanical technologies, including artificial intelligence (AI), automotive related technologies - such as autonomous vehicles, clean technologies, dynamic control systems, medical devices and wireless innovation.

A recognized leader in the IP community, he has served on the Board of Directors of the American Intellectual Property Law Association (AIPLA), and he currently serves as co-chair of the IP Practice in Japan Committee for AIPLA.

Todd's honors include awards by the Washington Business Journal as a Minority Business Leader and selection as one of the top attorneys in the country for adversarial post-grant proceedings.

Experience

Prior to joining Kirkland, Todd was involved in the following matters:

Represented SK Innovation in a patentability dispute over a polyalkylene carbonate. Saudi Aramco v. SK Innovation, IPR2018-00159.
Successfully defended Ericsson's U.S. patent 7,149,510 in a patentability dispute over controlling access to resources in a telecommunications system. TCL et al. v. Ericsson, IPR2015-01605, 01622, and 01628.
Represented Ericsson in a patentability dispute over security protocols used in wireless technology. Ericsson v. Intellectual Ventures, IPR2014-00527.
Represented RPX Corporation in a patentability dispute over wireless (RF) technology. RPX et al. v. Parkervision, IPR2014-00946, 00947, and 00948.
Successfully argued on behalf of Convolve that provision of 35 USC sec.135(b)(2) is applicable only to patent applications having effective filing date after publication date of targeted published application. Ding et al. (Seagate) v. Singer et al. (Convolve), Int. No. 105,436 (BPAI Aug. 24, 2007).
Represented Bard Access Systems in patentability dispute over stent technology. McDermott et al. (Bard Peripheral Vascular) v. Murch (TriVascular2), Int. No.105,657 (BPAI Mar. 20, 2009).
Represented Solvay in patentability/inventorship dispute over use of clean technology which reduces SOx emissions from coal-fired power plants. Maziuk (American Electrical Power Company) v. Ritzenthaler (Solvay Chemicals), Int. No.105,693 (BPAI Mar. 15, 2010).
Represented Motorola in patentability/priority dispute over mobile communication technology. Lazaridis et al. (Research in Motion) v. Eggleston et al. (Motorola), Int. No. 105,700 (BPAI).

Partner, Oblon McClelland, Maier & Neustadt, L.L.P.

Chair, Post-Grant Patent Practice Group
Member, Management Committee

Thought Leadership

Publications

“Talking Cars,” Intellectual Property Magazine, September 2019

“Prosecuting SEPs For Driverless-Car Communications Tech,” Law360, July 2019

“There's One Way That AIA Proceedings Are Very, Very Different Than the First Phase of Patent Interferences,” BNA’s Patent, Trademark & Copyright Journal, February 2017

Speaking Engagements

Moderator, IAM's Patent Litigation 2019, Washington, D.C., November 5, 2019

Presenter, Japanese Intellectual Property Association (JIPA) Seminar, November 1, 2019

Panelist, AIPLA on the Road: Latest on Patent Practice Board Before the USPTO and the PTAB, Alexandria, August 27, 2019

Panelist, AIPLA on the Road: Latest on Patent Practice Board Before the USPTO and the PTAB, St. Louis, August 20, 2019

Moderator, AIPLA Bench & Bar Program on Trial Proceedings Before the PTAB, June 27, 2019

Speaker, “Winning Tips for the PTAB Session,” Patent Law and Policy 2018, November 13, 2018

Presenter, “Standing to Appeal a PTAB Decision and Motions to Amend in AIA Trials,” AIPLA Annual Meeting IP Practice in Japan Committee Pre-Meeting Seminar, October 23–24, 2018

Panelist, PTAB Bench Bar Conference, Texas, October 17, 2018

Speaker, Current Issues at the PTAB, Webinar, November 1, 2017

Presenter, PLI's USPTO Post-Grant Patent Trials 2017, September 25, 2017

Recognition

Recognized in IAM Strategy 300, 2023

Recognized for Patent Law by Best Lawyers in America, 2020

Named ‘IP Star’ by Managing Intellectual Property Magazine, 2019–2022

Intellectual Asset Management (IAM) Patent 1000: The World's Leading Patent Practitioners, named to its list of the top 1000 patent attorneys in the world selected as one of the top eighteen practitioners in the United States for post-grant proceedings and is a "Recommended" patent attorney in the Washington, D.C., Metro Area for patent prosecution, 2012–2016, 2019

Recognized as a Prominent Practitioner by The Legal 500 U.S., 2012

Minority Business Leader Award, Washington Business Journal, 2011

Memberships & Affiliations

Thomson Reuters Corporation

Advisory Board, Practical Law Intellectual Property & Technology Service, 2023

American Intellectual Property Law Association

Treasurer, 2022–2023
Chair, Diversity in Intellectual Property Committee, 2011
Chair, USPTO Inter Partes Patent Proceedings Committee, 2008–2010
Vice-Chair, Interference Committee, 2006–2008
Vice-Chair, Diversity in Intellectual Property Committee, 2004–2006

Practicing Law Institute

Co-Chair of Advanced Patent Prosecution Workshop 2019, Claim Drafting & Amendment Writing

Credentials

Admissions & Qualifications

District of Columbia
Maryland
Registered to practice before the United States Patent and Trademark Office

Courts

United States Court of Appeals for the Federal Circuit
Supreme Court of the United States

Education

University of Maryland School of LawJ.D.
University of VirginiaB.S., Electrical Engineering