Post-Grant Proceedings Practice

Lawyers at Hunton Andrews Kurth LLP, including those from the legendary intellectual property boutique Kenyon & Kenyon, have decades of experience in handling post-grant proceedings before the United States Patent and Trademark Office (USPTO). Our depth of patent litigation and prosecution experience is crucial in helping our clients successfully navigate proceedings before the USPTO and the USPTO’s Patent Trial and Appeal Board (PTAB), and enables us to provide strategic counseling to help our clients accomplish their objectives, in conjunction with—or as an alternative to—litigation. We do this with one ultimate goal in mind: developing and implementing the most effective strategies to protect our clients’ business and legal interests.

The three most common PTAB  post grant proceedings (i.e., Inter Partes Review, Post-Grant Review, and Covered Business Method) provide alternatives to more expensive district court litigation. Less frequently used, but still important post-grant proceedings include derivation proceedings, reissues, and reexaminations. We have effectively used each of these proceedings for our clients to provide a quicker resolution of disputed validity issues. The proceedings may take place at the same time as patent litigation, in advance of a lawsuit, or in lieu of the validity portion of the lawsuit.

We have acted on both sides of the aisle—representing those clients seeking to challenge validity of third party patents, as well as patent owners in defending against validity attacks and to secure stronger patents. Our lawyers and practice are routinely recognized for their experience in this area in publications such as Managing Intellectual Property, The Legal 500 United States, Chambers and Partners USA, and IAM Patent 1000. For example, IAM Patent 1000 has recognized our lawyers as “leading the post-grant charge,” as “master[s] of patent litigation strategy in the post-America Invents Act era,” and as “having a finely tuned understanding of how use post-grant mechanisms to enhance overall litigation strategies.” (2017)

Selected Experience:

The Hunton Andrews Kurth post-grant practice includes the combined experience of lawyers from Hunton & Williams, Andrews Kurth, and IP boutique, Kenyon & Kenyon. Collectively, our team has guided our clients through hundreds post-grant proceedings.

  • After being accused of infringing four different patents related to remote communications systems for vehicles, our client needed the road cleared to continue its business. In challenging validity of these patents, in a one-two punch, we filed an initial round of reexamination requests, followed by file four IPR petitions. After successfully invalidating the asserted patents, it was smooth driving for our client.
  • Although it is somewhat rare for validity of a design patent to be challenged before the USPTO, after our client brought suit to prevent a competitor from continuing to copy our client’s patented design, the competitor did just that. The competitor filed an IPR petition, challenging the validity of our client’s design patent. Our team submitted to the PTAB a compelling response to that IPR petition. Based on this response, the PTAB determined that the IPR petition was fatally flawed and declined institution.
  • After one of our clients was accused of infringing an on-line auction patent, we filed a CBM petition on its behalf, arguing that the patent was defective as being directed to improper subject matter. Based on our arguments, the PTAB agreed, and canceled the patent. The Court of Appeals for the Federal Circuit agreed, affirming the PTAB’s cancelation.

Our intellectual property lawyers have significant experience with reexamination and reissue. Armed with our pedigree, we have the practical experience and skills to guide our clients through myriad proceedings, as well as the business and strategic awareness to make effective use of these proceedings.

Inter Partes Review. IPR is a procedure to challenge a patent’s validity based on the grounds of anticipation and/or obviousness. The validity challenge can only be based on prior art patents and printed publications. For certain patents, there is a nine-month waiting period, measured from the grant date, before an IPR petition can be filed, although a PGR petition may be filed in this nine-month window. In instances where the patent is asserted in district court litigation, the IPR petition must be filed within one year of service on the petitioner.

Post Grant Review. PGR is another procedure for challenging a patent’s validity. In comparison with IPRs, PGRs have an expanded basis for challenging validity. For example, in addition to challenging validity based on anticipation and/or obviousness in view of prior art patents and printed publications, validity may be challenged based on ineligible subject matter, indefiniteness, lack of written description, lack of enablement, etc. A PGR petition must be filed within nine months of grant or reissue, and is only available for those patents/reissues that have an effective filing date on or after March 16, 2013.

Covered Business Method. CBM reviews are limited to challenging validity of “business method” patents, e.g., patents that claim “a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service.” Validity  of a covered business method patent may be challenged on a wide variety of grounds, including anticipation, obviousness, indefiniteness, lack of written description, lack of enablement, ineligible subject matter, etc. While there is no time limit for filing a CBM petition, the petitioner must have been charged with infringement of the patent in question.

Interference/Derivation. Interference and derivation proceedings resolve disputes relating to inventorship, in which competing applications have been filed by different parties for the same subject matter.

Reexaminations and Reissues. Reexamination proceedings, like IPRs, involve validity challenges based on anticipation and/or obviousness, in view of prior art patents and printed publications. While IPRs are conducted entirely before the PTAB, reexaminations are initially handled by a specialized group of patent examiners, following similar examination procedures as a regular patent application. Unlike IPRs, PGRs, CBMs, interferences, and derivation proceedings, which involve disputes between adverse parties, reexaminations may be filed by the patent owner to resolve questions of patentability. 

A patent owner facing an error in her patent may seek to have the patent corrected by reissue. The error may be minor, e.g., an error in the drawings or specification, or may relate to the scope of protection. While the patent owner may at any time after grant seek to narrow the patent claims by filing a reissue application, the patent owner may seek to broaden the scope of protection by filing a reissue application within two years of grant.

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