Patent Post-Grant Proceedings

Our skilled attorneys provide a full range of services related to intellectual property, including patent and trademark prosecution, counseling, licensing, due diligence review, competitor IP monitoring and litigation.   Our litigation team includes seasoned trial attorneys experienced in strategic enforcement and defense of IP rights in the United States and abroad.  We understand the importance of resolving disputes quickly and efficiently, given the rapid and ever-increasing rate of intellectual property creation and development that continues to result in more disputes with larger stakes.   Our attorneys work with clients to identify the most effective strategies for addressing disputes and mitigating risks, including strategic use of post-grant proceedings at the U.S. Patent and Trademark Office (USPTO) and patent offices outside of the U.S., which has proven to be a useful tool in many instances in providing leverage and efficiently resolving IP disputes.

We find that post-grant proceedings, which include ex parte reexamination, reissue practice, inter partes review (IPR), post-grant review (PGR), combined business method patent (CBM) review, and derivation proceedings before the USPTO can be very useful and effective in resolving patent disputes and/or providing leverage to a party, whether it is from the perspective of a patentee looking to enforce a patent against an infringer (patentee-plaintiff) or a party accused of infringing a patent (defendant).  

Patentee-Plaintiff

When preparing patent enforcement plans, it is not uncommon for patentees to discover material errors in the patents they wish to assert.  The errors can be so severe that the success of any patent enforcement strategy relying on such patents may be at risk of failure.  Errors that can affect the likelihood of success of patent enforcement include, for example, patent claims that are susceptible to invalidity challenges based on prior art grounds (under 35 U.S.C. §§102 and/or 103) or non-prior art-based grounds (under 35 U.S.C. §§101 or 112).  Therefore, before a patentee decides to assert a patent against an infringer, it is good practice for the patentee to conduct a thorough review of the patent and its prosecution history, in addition to the necessary infringement assessment.

Our patent attorneys are skilled and knowledgeable in reviewing patents and their prosecution histories, and assessing the validity and strength of such patents.  We routinely analyze patents and their claims to identify material issues that might arise during litigation, including, for example, claim indefiniteness, inadequate written description, non-enablement, anticipation, or obviousness.  As part of our analysis, we carefully study the patents’ prosecution histories.  Where we identify material issues in the patents, we might initiate reissue or ex parte reexamination proceedings at the completion of our assessment so as to address and resolve the identified issues.   Reissue and ex parte reexamination proceedings can be useful, efficient and effective tools in correcting many types of errors that might exist in patents.

Reissue proceedings are a statutory construct (under 35 U.S.C. §251) that allows a patentee to correct a patent where the patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent.  During the two-year window after patent issuance, the patentee may be able to broaden the patent claims, depending on the prior art and what may have been surrendered during the patent’s prosecution.  Therefore, reissue proceedings may be used to resolve material issues in the patent before initiating litigation, where the resolution of such issues may be very costly, or not possible. 

Ex parte reexamination proceedings are a statutory construct (under 35 U.S.C. §§301-307) that allows a patentee to submit prior art consisting of patents or printed publications that raise a substantial new question of patentability of any claim in the patent and have the Patent Office consider the prior art and determine whether to reexamine the patent.  If the Patent Office grants the ex parte reexamination request, the patentee will be given the opportunity to distinguish the patent claims from the prior art through argument and/or amendments to the patented claims.  The patentee will have broad latitude in amending and/or adding new claims, provided that no proposed amended or new claim enlarges the scope of a claim of the patent.  Because ex parte reexamination proceedings have greater restrictions on patentees than reissue proceedings, patentees frequently opt for the latter when seeking to correct errors in patents.   

Defendant, Accused of Infringement

In our experience, initiating post-grant opposition proceedings such as ex parte reexamination, IPR, PGR, or CBM can result in efficient and effective resolution of patent disputes.  Such post-grant proceedings may be initiated either before or after civil patent litigation commences.   Where patent litigation has commenced, it may be possible to persuade the court to stay the litigation while the post grant proceeding works its way through the Patent Office.

35 U.S.C. §§311-319 establish the framework for IPRs, which allow anyone other than the patent owner (subject to certain exceptions) to file a petition with the Patent Office’s Patent Trials and Appeals Board (PTAB) to institute an IPR of the patent.  Some of the exceptions to this rule include, for example, where (i) the petitioner or the petitioner’s real party-in-interest filed a civil action before the petition filing date, (ii) the petitioner, the petitioner’s real party-in-interest, or privy of the petitioner was served with a complaint alleging infringement of the patent more than one year before the petition filing date, and (iii) the petitioner, the petitioner’s real party-in-interest, or a privy of the petitioner is estopped from challenging the claims on the grounds identified in the petition.   From enactment of 35 U.S.C. §§311-319 (September 16, 2012) through December 31, 2017, the PTAB received 7,930 petitions for IPR, PGR, or CBM, with IPR petitions making up 92% of the filings – i.e., 7,311 petitions. 

Our attorneys are experienced in preparing, filing and successfully prosecuting post-grant proceedings, including IPRs, at the PTAB as an integral part of litigation strategy.  We have significant experience in post-grant proceedings related to, for example, telecommunications (including television, video, telephony, and networks), pharmaceuticals (including HIV protease inhibitor pharmaceutical formulations), RFID technology, and consumer products.  Our attorneys have successfully represented patentee clients against post-grant challenges, as well as defendants in invalidity challenges at the U.S. Patent Office.