Post Grant Proceedings

Group at a Glance

  • 26 members
  • Group combines vast experience in complex Patent Office proceedings, high-stakes patent litigation, and technology needed to prevail in Post Grant Proceedings.
  • Group members have handled complex Patent Office proceedings, including reexaminations and interferences, in the areas of biotechnology, electronics, medical devices, software, mechanical technologies, and consumer products.
  • Group members have extensive experience representing both patent owners and requesters, as well as distinct expertise in reexams having parallel litigation.

What Matters to Our Clients

We Understand the Changing World of Patent Reform

The America Invents Act (AIA), enacted September 16, 2011, ushered in new opportunities – and new risks – for those faced with an accusation of patent infringement or asserting a patent. The AIA provides incentives for more questions over the validity of issued patents to be resolved in the US Patent and Trademark Office (USPTO) rather than in district court.  Among other provisions, the AIA established new proceedings called “inter partes reviews” and “post grant reviews” along with a procedure to challenge business method patents. Also, a new “supplemental examination” process can provide significant benefits to patent holders needing to enforce their patent rights.

These new post grant proceedings retain elements of patent reexaminations that have been available for many years, but have notable procedural and substantive differences. They offer the promise of faster resolution of disputes and expand the range of issues that can be resolved by the USPTO. However, that speed and flexibility comes at the price of strict procedural rules and tighter deadlines, creating more pitfalls for those who choose these proceedings – or are forced by their opponents to use them. 

As an IP specialty firm, we provide a unique combination of skills, experience, and resources to maximize chances of success for our clients. Members of our Post Grant Proceedings Group have been successfully handling reexams, winning patent litigations, and excelling in interferences for many years. We have already honed the skills for persuasively presenting the technical/legal issues that will pervade these post grant proceedings.  Our group has developed strategies that are most successful under different situations and has built an infrastructure to support maneuvering within the rigid timelines and rules for responding to USPTO actions and submitting evidence.

Because a goal of these new post grant proceedings is to enhance the role of the USPTO in making decisions relating to high-impact patents, our long history and extensive experience working closely with the USPTO is invaluable.

Experience on Both Sides of Table

The challenges faced by a party seeking to invalidate a patent can be very different than those faced by a patent holder defending a post grant proceeding. Knowing how to both initiate and defend a reexam or other proceeding is a critical skill. 

For those requesting the USPTO invalidate a patent, we know how to initially build a case that will be persuasive to the USPTO. We also have the skills to adapt quickly to the responses by the patent owner which, unlike in litigation, can include changes to the patent. Moreover, as a firm with expertise in all areas of IP law, we can help early in the process by providing strategic guidance on whether the goal should be to narrow or invalidate a patent or even whether these post grant proceedings are right for the circumstances.

For clients defending a patent, our Post Grant Proceedings Group has the experience to create the best strategy to emerge from the proceeding with valuable patent rights. In addition to marshaling technical facts to support patentability, a patent owner may be faced with tough choices about amending the claims of the patent. Our vast experience building patent portfolios that generate value for businesses allows us to guide our clients through the crucial assessment of whether and how to amend claims in a post grant proceeding.

Strength Across Multiple Disciplines

Our Post Grant Proceedings Group is made up of members from a range of technical disciplines and industry knowledge. We bring together patent prosecutors at the cutting edge of a variety of technologies, experts in complex patent office proceedings, and litigators who help clients develop tactical litigation approaches. As a result, we can maximize a client’s chance of success in any of the post grant proceedings for patents in any technical area or covering any product or service.

View All Group Members

June 2, 2015 - Wolf Greenfield to Host Seminar: "IPRs: Strategies for Winning and Utilizing Them Effectively in Litigation"

May 22, 2015 - Saving Patents from Inter Partes Review with Reissue

April 15, 2015 - Don't Forget To Request PTAB Authorization For Motions

April 3, 2015 - PTAB Surprises Some by Using Its Standard Operating Procedures to Assert Control of Its Case Law

March 31, 2015 - Establishing non-infringement and other creative uses of inter partes review

February 5, 2015 - Ed Walsh quoted on first AIA appeal verdict

February 4, 2015 - IP ALERT - Federal Circuit Decides First Inter Partes Review Appeal and Upholds "Broadest Reasonable" Claim Construction Approach

November 21, 2014 - Ed Walsh quoted in Technology Transfer Tactics

October 20, 2014 - 22 Wolf Greenfield Attorneys Named to 2014 Massachusetts Super Lawyers List

October 6, 2014 - Ed Walsh and Charlie Steenburg quoted on post-grant proceedings

October 2, 2014 - Ed Walsh quoted on effect of IPRs on patent licensing community

September 17, 2014 - Never underestimate the power of a post-grant proceeding

July 10, 2014 - Assignor Estoppel Not a Defense in Inter Partes Review

March 5, 2014 - Doug Wolf featured as the expert for the month of March

February 2014 - To Predict How the Board Will Decide Issues in Inter Partes Review Proceedings, Look to Prior Board Decisions in Contested Cases

October 2013 - Justification for post-grant procedures continues to mount

January 2, 2014 - Dyax Corp. Prevails at PTAB by Proving 11 Months of Diligence

October 21, 2013 - Twenty Wolf Greenfield Attorneys Selected to 2013 Massachusetts Super Lawyers List

October 18, 2013 - IP ALERT - European Patent Office Reverses Two-Year Deadline on Divisional Applications

October 17, 2013 - WOLF GREENFIELD SEMINAR: Strategically Building a Valuable Worldwide Patent Portfolio - Replay Now Available

September 13,2013 - Ed Walsh was quoted in LAW360 on the inter partes review and the business method patent review program.

August 15, 2013 - Ten Wolf Greenfield Attorneys Named to The Best Lawyers in America 2014 List

August 2013 - Rainmaker Q&A: Wolf Greenfield's Edward Gates

July 2013 - Q&A With Wolf Greenfield’s Rich Giunta

June 2013 - Wolf Greenfield Attorneys Named to IAM 1000 World’s Leading Patent Practitioners List

April 2013 - Wolf Greenfield Tops the Boston Business Journal’s List of Largest Area Intellectual Property Law Firms

April 10, 2013 - Rob Walat quoted in Mass High Tech

March 22, 2013 - Ed Walsh quoted on "first-inventor-to-file" changes

March 22, 2013 - Patrick Waller quoted on the "First-Inventor-to File" system

March 11, 2013 - Patrick Waller quoted in Law360 on first-to-file patent system

February 21, 2013 - Wolf Greenfield Attorney Recognized for Pro Bono Service by Women’s Bar Foundation

February 12, 2013 - Deadline approaches for patent protections

Aspex v. Revolution (3/14/2012) - Will Your Settlement Agreement Prevent You from Later Asserting Your Patent Rights?

February 5, 2013 - Wolf Greenfield Named Elite Trademark Law Firm in World Trademark Report 1000

January 29, 2013 - Preparing for the “First Inventor to File” Transition

January 18, 2013 - Ed Walsh was quoted in a Law360 article on Patent Reform

October 22, 2012 - Fifteen Wolf Greenfield Lawyers Highlighted in 2012 Massachusetts Super Lawyers List

October 18, 2012 - WOLF GREENFIELD SEMINAR: What You Need to Know to Prepare for the "First Inventor to File" Transition - Replay Now Available

October 14, 2012 - Ed Walsh interviewed on Tech Talk with Craig Peterson about patent reform

September 19, 2012 - Eleven Wolf Greenfield Attorneys Selected for 2013 Best Lawyers in America®

September 14, 2012 - Ed Walsh quoted on the ramifications of AIA

September 6, 2012 - Federal Circuit Establishes New Standard on Divided Infringement and Inducement

August 15, 2012 - Ed Walsh and Larry Green quoted in Law360 on the new AIA rule changes

July 27, 2012 - Chelsea Loughran quoted in Law360 on the new First-To-File rules

June 2012 - Wolf Greenfield Named to IAM 1000 World’s Leading Patent Practitioners List

June 2012 - GBLS Recognizes Wolf Greenfield with 2012 Associates Drive Award

May 2012 - Death Knell for Patent Trolls?

Marine Polymer v. HemCon (decided 3/15/12) - Intervening Rights Cannot Be Triggered by Argument Alone in Reexaminations

In re Erik P. Staats and Robin P. Lash (3/5/2012) - Federal Circuit Rejects Restrictions on Broadening Claims in Reissue Applications

December 2011 - Neil Ferraro Named 2012 Boston Patent Law Association President

January 3, 2012 - Wolf Greenfield Welcomes 2012 Promoting Seven Lawyers to New Positions

November 2011 - America Invents Act: The Implications of Patent Reform

October 20, 2011 - Strategies for Patent Reexamination: Pre and Post Patent Reform Webinar - Replay Now Available

September 2011 - Patent Reexaminations: The Crucial First 90 Days

In Re NTP, Inc. (decided 8/1/11) - Priority Chain Can Be Broken if Parent Application Has No Written Description Support for Claims Under Reexamination

In Re NTP, Inc. [2] (decided 8/1/11) - Inventor’s Own Testimony Cannot Corroborate Evidence of Earlier Invention Date