Post-Grant Proceedings

Patent litigation today frequently requires the parties to successfully litigate the validity of the disputed patents in administrative proceedings at the United States Patent and Trademark Office (USPTO). In 2012, the America Invents Act established several new types of proceedings, referred to as “post-grant proceedings,” to make it easier for parties to challenge the validity of issued patents. The Act authorized the USPTO’s Patent Trial and Appeal Board (PTAB) to conduct three types of post-grant proceedings: (1) Inter Partes Review, (2) Post-Grant Review, and (3) Covered Business Method Review.

Patent challengers have widely embraced post-grant proceedings because they provide a number of significant advantages over district court litigation:

• No presumption of validity

• Validity determined by panel of technically trained Administrative Patent Judges (APJs) rather than by jury

• High rates of invalidity determinations

• Significantly less expensive than district court litigation

• District court litigation is often stayed (or paused) pending completion of post-grant proceedings

However, through a variety of new procedures and rulings, the PTAB has recently made it more difficult for patent challengers to invalidate patents in these administrative proceedings. Accordingly, parties need skilled and experienced counsel to help them navigate post-grant procedures to achieve a successful result in these challenging proceedings.

Dickinson Wright’s patent litigation lawyers have amassed a wealth of experience successfully litigating patent validity issues in post-grant proceedings. We have a large team of lawyers licensed to practice before the PTAB, including many with degrees in electrical engineering, computer science, mechanical engineering, physics, chemical engineering, and molecular biology. We also bring our strong litigation experience in developing and implementing winning strategies. Our extremely successful track record speaks for itself.

Our team is highly skilled at delivering successful results at an affordable price. We frequently represent parties in these proceedings using alternative fee structures that ensure cost-effective results that maximize our value and meet our clients’ goals.

Representative Matters for Patent Owners

• Representation of Patent Owner in Five Microprocessor-Related IPRs. Represented a patent owner in five IPRs of a patent related to microprocessor architecture. Completely defeated the institution of two of the IPRs and obtained a final written decision confirming the validity of key claims in the other three IPRs. The successful outcome led to very favorable settlement of related district court litigations.

• Representation of Patent Owner in Five IPRs and One Covered Business Method (CBM) of Patents Related to Control of Digital Display Systems. Defeated the institution of three IPRs and one CBM, and prevailed on the validity of claims in the other two IPRs. These wins at the PTAB resulted in the successful settlement of concurrent litigation.

• Representation of Patent Owner in IPR of Patent Related to the Seamless Expansion of Media Content. Prevailed on more than 80% of challenged claims, leading to the favorable settlement of related litigation.

• Representation of Patent Owner in IPR related to Inflatable Air Mattresses. Currently representing a patent owner in an IPR related to patent on inflatable air mattresses. Ongoing.

• Representation of Patent Owner in IPRs related to Internet Advertising. Represented patent owner in four IPRs of three patents related to providing advertisements to a user of a website based on user preferences. Completely defeated institution of two IPRs on all claims of one of the patents which preserved key claims in pending district court action.

• Representation of Patent Owner in Eleven IPRs Related to Wireless Smart Thermostats. Prevailed on the validity of claims that were asserted in co-pending litigations on a majority of the IPRs with dispositive decisions. The IPR wins led to successful settlements of the related district court litigations.

Representative Matters for Patent Challengers

• Representation of Patent Challenger in IPR related to DNA sequencing. Represented petitioner in IPR of patent related to gene sequencing. PTAB instituted review of all challengedclaims leading to favorable settlement of related district court litigation.

• Representation of Patent Challenger in IPR related to sound proof engine covers. Represented petitioner in IPR related to vehicle engine covers. Won complete victory by invalidating all claims at the PTAB and then securing affirmance by the Federal Circuit on appeal.

• Representation of Patent Challenger in IPRs related to interactive gaming system. Represented petitioner in IPRs of two patents related to interactive gaming element of slot machines. Obtained institution of IPRs on all challenged claims leading to favorable settlement of the IPRs and related district court litigation.

• Representation of Patent Challenger in IPR related to slot machine gaming cabinet. Achieved complete victory by invalidating all claims at the PTAB and then securing Federal Circuit affirmance.