Post-Grant Proceedings

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Pillsbury IP practitioners literally wrote the book on post-grant proceedings, offering insights into past decisions and guidance on navigating the complex rules and procedures that govern the PTAB hearing process.

Blending exceptional knowledge of technologies with patent prosecution and patent litigation skill, Pillsbury IP lawyers represent clients in a wide range of proceedings before the USPTO’s Patent Trial and Appeal Board. These matters include inter partes reviews, covered business method reviews, post-grant reviews, derivation proceedings and appeals. We are also involved in other USPTO proceedings such as patent reissues. Many of the Pillsbury IP lawyers have advanced degrees in every technology sector from biotechnology to telecommunications and computer software. We assist clients from a wide range of industries regarding a vast array of technologies, including medical devices, imaging technology, polymers, ﬁlms, catalyst technology, fuel cells, biomass fuels, industrial manufacturing, cosmetics, pharmaceuticals, advanced telecommunications and biotechnology.

Well versed in the America Invents Act of 2011, its rules and their ramiﬁcations, we represent patent holders and patent challengers, utilizing post-grant proceedings to challenge competitors’ patents or strengthen a patent already granted. Our lawyers oﬀer cost-eﬀective counsel, advising on the strategic advantages of the various types of proceedings available and helping clients to evaluate their options and select the best course of action. In many instances, we have enabled clients to avoid costly patent infringement litigation and injunctions that would have severely impacted their businesses.

Representative Experience

Defended Rigetti Computing against two inter partes reviews brought against one of its foundational patents by IBM, with the PTAB determining not to institute the IPR proceeding based upon the Patent Owner Statement, which highlighted fundamental inconsistencies in IBM’s assertions.
Defended SweeGen and Blue California in a patent infringement lawsuit brought by PureCircle in the Central District of California involving highly soluble stevia sweeteners in which we prevailed on a Motion to Stay the case in light of a Post Grant Review filed with respect to one of the patents in suit.
Represented Atlas Copco as the patent challenger in two IPR proceedings, based on two patents involved in eight cases pending in District Court of Delaware. The PTAB issued final written decisions in favor of Atlas Copco, finding all challenged claims unpatentable. Upon the patent holder’s appeal, the Federal Circuit affirmed the PTAB’s decisions, resulting in a complete victory for Atlas Copco.

Represented patent owner Sleep Number in an inter partes review brought by American National Manufacturing challenging claims found to infringe in a preceding ITC case and other claims asserted in a district court case relating to the electronic air controller used with an air adjustable mattress. The PTAB confirmed patentability of all but one of the infringing claims and confirmed patentability of newly added claims.

Achieved victory for Schrader-Bridgeport International in inter partes review with PTAB finding unpatentable several claims in a tire pressure monitoring system patent owned by two Swiss companies. The Federal Circuit affirmed the PTAB’s decision on invalidity and reversed the PTAB with respect to one claim that the PTAB found not invalid.

Represented MotionPoint Corp. and won a covered business method review before the PTAB by convincing the Patent Oﬃce to invalidate TransPerfect’s Scanlon patent previously found by the district court to be valid and infringed.

Took over representation from another law ﬁrm that ﬁled a petition for IPR on a patent covering Cialis, a multibillion-dollar-a-year drug. After the PTAB denied institution, we ﬁled a request for reconsideration of the denial, the PTAB ordered a brieﬁng on the request, and we secured a favorable settlement for our client in a few weeks after the PTAB ordered brieﬁng.

Represented petitioner Medtronic in three inter partes review proceedings in which all challenged claims to a “Percutaneous Aortic Valve Replacement” were found unpatentable by the Patent Trial and Appeal Board, a ruling the Federal Circuit affirmed on appeal.

Represented patent owner Globeride Inc. in an inter partes review proceeding in which all challenged claims of Globeride’s patent on an “Oscillate Mechanism for a Fishing Spinning Reel” were found patentable over the prior art.

Represented Silicon Mitus in the Northern District of California on six patents related to power management integrated circuits asserted in a Complaint filed by Maxim. Case settled after the filing of IPRs, an Order from a Markman hearing, and the filing of another patent infringement lawsuit by Silicon Mitus in South Korea.

Represented Inphi Corp. in three separate inter partes reexaminations. Currently, almost all original claims have been either canceled or amended.

Represented Textron in two Post Grant Reviews of a patent asserted in pending district court litigation. After nearly a year of litigation, we obtained a very favorable settlement for Textron two days after the PTAB granted the ﬁrst petition for PGR.

Represented tool manufacturer in multiple IPR proceedings against a patent asserted in district court litigation. Obtained a ﬁnal written decision invalidating the relevant claims that was aﬃrmed by the Federal Circuit.

Practice Area Highlights

Ranked in Chambers USA for Intellectual Property in Northern Virginia (2011 – 2023) and Texas (2022 – 2023).
Ranked by The Legal 500 U.S. in patent prosecution, including reexamination and post-grant proceedings (2022).
Recognized nationally for IP Litigation, Patent Litigation, Patent Law, and Trademark Law by U.S. News – Best Lawyers (2024).

Ranked in Washington, DC and Texas as one of the world’s leading IP practices across all aspects of patent law by Intellectual Asset Management’s “IAM Patent 1000,” with six partners recognized individually, including one national ranking (2023).

Ranked nationally for patent prosecution and trademark prosecution by Managing Intellectual Property magazine, in addition to regional recognitions in California and Virginia, with four Pillsbury lawyers recognized as “IP Stars” (2023).

Post-Grant Proceedings

Pillsbury IP practitioners literally wrote the book on post-grant proceedings, offering insights into past decisions and guidance on navigating the complex rules and procedures that govern the PTAB hearing process.

Representative Experience

Practice Area Highlights

Resources

IP Courts & Entities At-a-Glance
Updates (COVID-19)

Case Study

PTAB Handbook

Legal | Hot U.S. IP Topics: Trade Secrets, Patents, Trademarks and AI

Application of U.S. Intellectual Property Law to Activities Outside the United States

Recent Developments at the U.S. Patent and Trademark Office and in Litigation Financing for IP Cases

Views on Patent Cases from the Chambers–PTAB, VA, & MD

The George Washington University Law School 2018 Symposium on Intellectual Property

Top Ten Current PTAB Topics & How They Affect Your Practice (webinar)

U.S. Patent Law Committee (webinar)

Hot Topics at the PTAB (webinar)

The Patent Trial and Appeal Board: Reflections of 2016, Anticipating 2017

Post-Grant Proceedings

Pillsbury IP practitioners literally wrote the book on post-grant proceedings, offering insights into past decisions and guidance on navigating the complex rules and procedures that govern the PTAB hearing process.

Representative Experience

Practice Area Highlights

Resources

IP Courts & Entities At-a-GlanceUpdates (COVID-19)

Case Study

PTAB Handbook

Related Insights

IP Courts & Entities At-a-Glance
Updates (COVID-19)