G R O U P   S T A T S

  • Group members handle complex USPTO proceedings, including inter partes reviews, covered business method patent reviews, reexaminations, and interferences, in all technology areas, including biotechnology, electronics, medical devices, software, mechanical technologies, and consumer products
  • A track record of success far above industry averages in inter partes reviews and reexaminations
  • Extensive experience representing both patent owners and requesters, as well as distinct expertise in post grant proceedings having parallel litigation
  • 30 members drawn from a range of technical disciplines and industry knowledge with dedicated post grant paralegals

If you are considering using a post-grant proceeding to challenge a patent—or are being forced by your opponents to use them—you need an experienced team to position your case to win. Here’s why we have been successful for clients in these proceedings and what they say about us:

Successful Track Record. Our team knows how to win cases by persuading the technical fact-finders at the USPTO. With post-grant proceedings rising in prominence – whether as an alternative to litigation or as a central piece of a litigation strategy – winning a post-grant proceeding is now a critical step in winning a patent dispute. We have delivered for our clients. While challengers frequently win in such proceedings, we also win when we represent patent owners, persuading the Patent Trial and Appeal Board not to cancel claims – and in many cases not to even institute a trial – or convincing examiners to withdraw their rejections in reexaminations. 

Our record speaks for itself – our client’s patents have emerged from post-grant proceedings with all claims intact at a rate about 4 times the average.  And, we won a reexamination of one of the most valuable patents litigated – reversing rejections of claims supporting a judgment worth a billion dollars.

Client testimonial:
"Part of having a relationship with a firm is not having to reeducate the firm, and they do a good job of understanding our business goals."

Deep experience in the art of technical persuasion. We honed our skills for persuasively presenting the technical and legal issues that pervade post-grant proceedings through years of successfully handling reexams, winning patent litigations, and excelling in interferences. And, when post-grant proceedings entail changing the claims of a patent, our years of experience procuring patents for our clients comes into play, enabling us to guide clients through the choices of whether and how to amend a patent. As an IP specialty firm, we have built an infrastructure to support maneuvering within the rigid timelines and rules for responding to USPTO actions and submitting evidence.

Client testimonial:
"I value competency both legally and technically, and almost as important is responsiveness, and they do a great job with that. I have to manage many dozens of cases, and they are as competent as other firms and more responsive than most."

Experience on Both Sides. For clients defending patents, we know how to tell a story of invention that will resonate with Administrative Patent Judges and examiners who handle reexaminations. We also know where to look for substantive and procedural defects in a challenge and highlight these for the factfinder.

For those looking to invalidate a patent, we know that winning a post-grant proceeding means filing a complete case at the outset. We use our skills in defending patents to scrutinize our case before filing. 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 proceedings are right for the circumstances.

Client testimonial:
"So far we’ve gotten good results that have settled favorably, and on the new cases I think they’ve met or exceeded expectations so far. So that’s why I would keep going to them."

Representative inter partes reviews (IPRs)

  • Persuaded the Patent Trial and Appeal Board to deny an infringer’s petitions to institute trials on five patents being asserted by our client EMC.
  • Won confirmation of all claims in a patent owned by our client Saint-Gobain – reversing the initial view of the Patent Trial and Appeal Board (PTAB) that the claims were likely invalid, by showing commercial success tied to the patented invention.
  • Filed a petition on behalf of RPX Corporation that led patent owner to disclaim its patent before the PTAB could institute a trial.
  • Filed IPRs on Sony’s behalf against three patents owned by a non-practicing entity (NPE) that had initiated an International Trade Commission action against Sony. The Patent Owner quickly settled both the IPR and ITC proceedings on terms favorable to Sony.
  • Represented major medical device manufacturer in six IPRs challenging two of its patents in concurrent litigation. Client favorably settled dispute before final hearing, in part because of strength of our response to the IPRs.  
Representative reexaminations

  • Ended an infringement suit against our client Staples by winning cancellation of all claims in a patent on an internet ordering system in an inter partes reexamination. Related Litigation: Consumers Interstate Corporation v. Staples.
  • Won final cancellation of all original claims and rejection of all added claims, ending the patent portion of a dispute between our client and a vendor.  Related Litigation: Ascion LLC v. Ruoey Lung Enterprise Corp.
  • Successfully represented Nuance Communications, Staples, and others in dozens of reexamination proceedings, including winning reversal of a rejection in a reexamination of a patent underpinning a judgment worth over $1 billion.

Representative interferences

Under the America Invents Act (AIA), interferences will be phased out in the coming years; however, they are still a viable alternative for patents filed before March 16, 2013.

  • Cooper v. Goldfarb. In this case involving enormously valuable vascular graft technology, we won the longest-running patent interference in USPTO history, prevailing in three Board of Patent Appeals and Interferences decisions and two Federal Circuit appeals. The resulting patent issued in 2002 and has been litigated with success.
  • Regents of the University of California v. University of Iowa Research Foundation. In this patent interference involving a client’s core biotechnology IP, we sought dismissal of the interference (provoked by a competitor) for failure to meet statutory requirements. We won a dismissal that not only preserved our client’s valuable patent rights, but also significantly expanded the existing law and provided additional protection to all patent holders by restricting the ability of patent applicants to provoke an interference against an issued patent.
  • Raz v. Krieg. We represented the prevailing inventor in two related patent interferences regarding patent applications for methods of treating asthma. In the first interference, we prevailed in the preliminary motions period, and the other side appealed. During the appeal, the other side abandoned the appeal. In the second interference, the other side conceded and requested that judgment be entered in our favor.
  • Massachusetts Institute of Technology v. Catalyst Assets. In this patent interference, we obtained dismissal of an interference provoked by one of our client’s competitors for failure to meet statutory requirements. This decision confirmed and extended the holding that we had previously secured for a different client in the case Regents of the University of California v. University of Iowa Research Foundation.
  • Bestfoods v. Barber Foods. In this case involving food processing technology, we represented the applicant who discovered a former collaborator had filed for, and had obtained, a patent on subject matter our client believed was derived from them. We developed a strategy that caused the patentee to concede the interference, resulting in the collaborator’s patent being cancelled and allowing our client to obtain a patent on that subject matter.
  • Landers v. Sapolsky. Successfully represented Massachusetts Institute of Technology in an interference with respect to methods for detecting genetic defects. We prevailed on §112 grounds as Sapolsky’s claims were not supported because they were broader in scope than the method disclosed in the specification.

Representative clients:

  • Ascion, LLC - manufacturer and distributor of mattresses and adjustable foundations (does business as Reverie)
  • C.R. Bard, Inc. - medical equipment and devices manufacturer
  • EMC Corporation - provider of IT storage hardware solutions to promote data backup and recovery
  • Nuance Communications, Inc. - computer software technology company that provides speech and imaging applications
  • RPX Corporation - provider of patent risk solutions
  • Sony Corporation - manufacturer of audio, home video game consoles, communications, and key device and information technology products
  • Saint-Gobain S.A. - producer of construction and high-performance materials
  • Staples, Inc. - office products manufacturer and seller

Recent Articles:

May 22, 2015
"Saving Patents from Inter Partes Review with Reissue" by Edmund J. Walsh and Stuart V.C. Duncan Smith
Patent owners anticipating an IPR challenge may find refuge in the amendment options available through reissue. Read more

April 15, 2015
"Don't Forget To Request PTAB Authorization For Motions" by Michael T. Siekman and Chelsea A. Loughran
When filing motions, practitioners are often quite surprised to learn that essentially all motions require authorization from the board. Read more

April 3, 2015
"PTAB Surprises Some by Using Its Standard Operating Procedures to Assert Control of Its Case Law" by Michael T. Siekman and Oona M. Johnstone
It is less well-known that the Board’s Standard Operating Procedures, previously applied to contested cases, are also applicable to AIA post-grant proceedings. Read more

March 31, 2015
"Establishing non-infringement and other creative uses of inter partes review" by Michael N. Rader
IPR proceedings can be used creatively to achieve results beyond their statutory mandate. Read more

January 28, 2015
"Looking Behind The Different Invalidation Rates Of Oppositions And IPRs" by Janice A. Vatland and Y. Jenny Chen
Current statistics indicate a higher invalidation rate for IPRs as compared to EPO oppositions. Read more

December 22, 2014
"Recent Cases Warn Of Dangers Of Trying For Second Bite At The IPR Apple" by John L. Strand and Stuart V.C. Duncan Smith
Recent PTAB decisions demonstrate limits to the strategy of filing an IPR petition quickly and correcting deficiencies or mistakes with a second petition. Read more

December 8, 2014
"One Bite At The Apple: PTAB Closes IPR Joinder Loophole" by John L. Strand and W. Brett Morrison 

Recent decisions may signal a shift in the PTAB’s interpretation of the IPR joinder provision. Read more

September 17, 2014
"Never underestimate the power of a post-grant proceeding" by Hunter Keeton
In ePlus, Inc. v. Lawson Software, Inc., the Federal Circuit extended the logic from three earlier cases which had found that a patent determined to be valid and infringed can still be invalidated by a later PTO reexamination. Read more

July 10, 2014
"Assignor Estoppel Not a Defense in Inter Partes Review" by Nathan Speed
To read the full text of the article, log in to Intellectual Property Today.

To view older publications, go to Publications


G R O U P   S T A T S

  • Group members handle complex USPTO proceedings, including inter partes reviews, covered business method patent reviews, reexaminations, and interferences, in all technology areas, including biotechnology, electronics, medical devices, software, mechanical technologies, and consumer products
  • A track record of success far above industry averages in inter partes reviews and reexaminations
  • Extensive experience representing both patent owners and requesters, as well as distinct expertise in post grant proceedings having parallel litigation
  • 30 members drawn from a range of technical disciplines and industry knowledge with dedicated post grant paralegals

If you are considering using a post-grant proceeding to challenge a patent—or are being forced by your opponents to use them—you need an experienced team to position your case to win. Here’s why we have been successful for clients in these proceedings and what they say about us:

Successful Track Record. Our team knows how to win cases by persuading the technical fact-finders at the USPTO. With post-grant proceedings rising in prominence – whether as an alternative to litigation or as a central piece of a litigation strategy – winning a post-grant proceeding is now a critical step in winning a patent dispute. We have delivered for our clients. While challengers frequently win in such proceedings, we also win when we represent patent owners, persuading the Patent Trial and Appeal Board not to cancel claims – and in many cases not to even institute a trial – or convincing examiners to withdraw their rejections in reexaminations. 

Our record speaks for itself – our client’s patents have emerged from post-grant proceedings with all claims intact at a rate about 4 times the average.  And, we won a reexamination of one of the most valuable patents litigated – reversing rejections of claims supporting a judgment worth a billion dollars.

Client testimonial:
"Part of having a relationship with a firm is not having to reeducate the firm, and they do a good job of understanding our business goals."

Deep experience in the art of technical persuasion. We honed our skills for persuasively presenting the technical and legal issues that pervade post-grant proceedings through years of successfully handling reexams, winning patent litigations, and excelling in interferences. And, when post-grant proceedings entail changing the claims of a patent, our years of experience procuring patents for our clients comes into play, enabling us to guide clients through the choices of whether and how to amend a patent. As an IP specialty firm, we have built an infrastructure to support maneuvering within the rigid timelines and rules for responding to USPTO actions and submitting evidence.

Client testimonial:
"I value competency both legally and technically, and almost as important is responsiveness, and they do a great job with that. I have to manage many dozens of cases, and they are as competent as other firms and more responsive than most."

Experience on Both Sides. For clients defending patents, we know how to tell a story of invention that will resonate with Administrative Patent Judges and examiners who handle reexaminations. We also know where to look for substantive and procedural defects in a challenge and highlight these for the factfinder.

For those looking to invalidate a patent, we know that winning a post-grant proceeding means filing a complete case at the outset. We use our skills in defending patents to scrutinize our case before filing. 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 proceedings are right for the circumstances.

Client testimonial:
"So far we’ve gotten good results that have settled favorably, and on the new cases I think they’ve met or exceeded expectations so far. So that’s why I would keep going to them."

Representative inter partes reviews (IPRs)

  • Persuaded the Patent Trial and Appeal Board to deny an infringer’s petitions to institute trials on five patents being asserted by our client EMC.
  • Won confirmation of all claims in a patent owned by our client Saint-Gobain – reversing the initial view of the Patent Trial and Appeal Board (PTAB) that the claims were likely invalid, by showing commercial success tied to the patented invention.
  • Filed a petition on behalf of RPX Corporation that led patent owner to disclaim its patent before the PTAB could institute a trial.
  • Filed IPRs on Sony’s behalf against three patents owned by a non-practicing entity (NPE) that had initiated an International Trade Commission action against Sony. The Patent Owner quickly settled both the IPR and ITC proceedings on terms favorable to Sony.
  • Represented major medical device manufacturer in six IPRs challenging two of its patents in concurrent litigation. Client favorably settled dispute before final hearing, in part because of strength of our response to the IPRs.  
Representative reexaminations

  • Ended an infringement suit against our client Staples by winning cancellation of all claims in a patent on an internet ordering system in an inter partes reexamination. Related Litigation: Consumers Interstate Corporation v. Staples.
  • Won final cancellation of all original claims and rejection of all added claims, ending the patent portion of a dispute between our client and a vendor.  Related Litigation: Ascion LLC v. Ruoey Lung Enterprise Corp.
  • Successfully represented Nuance Communications, Staples, and others in dozens of reexamination proceedings, including winning reversal of a rejection in a reexamination of a patent underpinning a judgment worth over $1 billion.

Representative interferences

Under the America Invents Act (AIA), interferences will be phased out in the coming years; however, they are still a viable alternative for patents filed before March 16, 2013.

  • Cooper v. Goldfarb. In this case involving enormously valuable vascular graft technology, we won the longest-running patent interference in USPTO history, prevailing in three Board of Patent Appeals and Interferences decisions and two Federal Circuit appeals. The resulting patent issued in 2002 and has been litigated with success.
  • Regents of the University of California v. University of Iowa Research Foundation. In this patent interference involving a client’s core biotechnology IP, we sought dismissal of the interference (provoked by a competitor) for failure to meet statutory requirements. We won a dismissal that not only preserved our client’s valuable patent rights, but also significantly expanded the existing law and provided additional protection to all patent holders by restricting the ability of patent applicants to provoke an interference against an issued patent.
  • Raz v. Krieg. We represented the prevailing inventor in two related patent interferences regarding patent applications for methods of treating asthma. In the first interference, we prevailed in the preliminary motions period, and the other side appealed. During the appeal, the other side abandoned the appeal. In the second interference, the other side conceded and requested that judgment be entered in our favor.
  • Massachusetts Institute of Technology v. Catalyst Assets. In this patent interference, we obtained dismissal of an interference provoked by one of our client’s competitors for failure to meet statutory requirements. This decision confirmed and extended the holding that we had previously secured for a different client in the case Regents of the University of California v. University of Iowa Research Foundation.
  • Bestfoods v. Barber Foods. In this case involving food processing technology, we represented the applicant who discovered a former collaborator had filed for, and had obtained, a patent on subject matter our client believed was derived from them. We developed a strategy that caused the patentee to concede the interference, resulting in the collaborator’s patent being cancelled and allowing our client to obtain a patent on that subject matter.
  • Landers v. Sapolsky. Successfully represented Massachusetts Institute of Technology in an interference with respect to methods for detecting genetic defects. We prevailed on §112 grounds as Sapolsky’s claims were not supported because they were broader in scope than the method disclosed in the specification.

Representative clients:

  • Ascion, LLC - manufacturer and distributor of mattresses and adjustable foundations (does business as Reverie)
  • C.R. Bard, Inc. - medical equipment and devices manufacturer
  • EMC Corporation - provider of IT storage hardware solutions to promote data backup and recovery
  • Nuance Communications, Inc. - computer software technology company that provides speech and imaging applications
  • RPX Corporation - provider of patent risk solutions
  • Sony Corporation - manufacturer of audio, home video game consoles, communications, and key device and information technology products
  • Saint-Gobain S.A. - producer of construction and high-performance materials
  • Staples, Inc. - office products manufacturer and seller

Recent Articles:

May 22, 2015
"Saving Patents from Inter Partes Review with Reissue" by Edmund J. Walsh and Stuart V.C. Duncan Smith
Patent owners anticipating an IPR challenge may find refuge in the amendment options available through reissue. Read more

April 15, 2015
"Don't Forget To Request PTAB Authorization For Motions" by Michael T. Siekman and Chelsea A. Loughran
When filing motions, practitioners are often quite surprised to learn that essentially all motions require authorization from the board. Read more

April 3, 2015
"PTAB Surprises Some by Using Its Standard Operating Procedures to Assert Control of Its Case Law" by Michael T. Siekman and Oona M. Johnstone
It is less well-known that the Board’s Standard Operating Procedures, previously applied to contested cases, are also applicable to AIA post-grant proceedings. Read more

March 31, 2015
"Establishing non-infringement and other creative uses of inter partes review" by Michael N. Rader
IPR proceedings can be used creatively to achieve results beyond their statutory mandate. Read more

January 28, 2015
"Looking Behind The Different Invalidation Rates Of Oppositions And IPRs" by Janice A. Vatland and Y. Jenny Chen
Current statistics indicate a higher invalidation rate for IPRs as compared to EPO oppositions. Read more

December 22, 2014
"Recent Cases Warn Of Dangers Of Trying For Second Bite At The IPR Apple" by John L. Strand and Stuart V.C. Duncan Smith
Recent PTAB decisions demonstrate limits to the strategy of filing an IPR petition quickly and correcting deficiencies or mistakes with a second petition. Read more

December 8, 2014
"One Bite At The Apple: PTAB Closes IPR Joinder Loophole" by John L. Strand and W. Brett Morrison 

Recent decisions may signal a shift in the PTAB’s interpretation of the IPR joinder provision. Read more

September 17, 2014
"Never underestimate the power of a post-grant proceeding" by Hunter Keeton
In ePlus, Inc. v. Lawson Software, Inc., the Federal Circuit extended the logic from three earlier cases which had found that a patent determined to be valid and infringed can still be invalidated by a later PTO reexamination. Read more

July 10, 2014
"Assignor Estoppel Not a Defense in Inter Partes Review" by Nathan Speed
To read the full text of the article, log in to Intellectual Property Today.

To view older publications, go to Publications