Post-grant review proceedings in the US Patent and Trademark Office (USPTO) are one of the most significant changes brought by the Leahy-Smith America Invents Act (AIA). These proceedings include inter partes review (IPR), covered business method review (CBM) and post-grant review (PGR). Successfully asserting or defending a post-grant review proceeding requires understanding the unique nature of the proceedings, the voluminous procedures outlined in the USPTO regulations, and the litigation components of the proceedings.

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  • Halliburton Energy Services, a leading energy company, in the successful representation of three IPRs covering 93 claims. The PTAB instituted all three IPRs, resulting in a quick settlement of the IPRs and the dismissal of several related district court actions, saving millions of dollars in litigation fees.
  • Panasonic in the successful representation of multiple IPRs. Following expert depositions, the IPRS and the related ITC investigation were successfully settled.
  • AOL, a leader in the industry, in a successful representation involving several IPR petitions on a patent asserted in relation to a district court litigation. The result was a quick settlement and a dismissal of the district court case.

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Nicole M. Jantzi

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