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.
McDermott’s post-grant practitioners include patent litigators and prosecutors with vast technical and scientific backgrounds, as well as extensive experience before the USPTO. Together their skills and knowledge help our teams structure the strongest possible cases on behalf of our clients’ before the PTAB. We are also well versed in coordinating concurrent district court litigation matters involving the same or similar patents at issue in the post-grant review proceedings. And if the case is appealed, McDermott’s lawyers are adept at handling these proceedings before the US Court of Appeals for the Federal Circuit.
Recognizing our clients’ need for financial predictability over post-grant matters, we also offer our clients cost-effective solutions. Oftentimes we employ alternative fee arrangements, and we always strive to manage matters so that they are handled strategically and efficiently.
Covered Business Methods
We are well versed in the development and prosecution of covered business method (CBM) patents and the many technologies that are related to—but independent of—these important, protected processes. We also have significant experience in the unique requirements and procedures of the CBM review process, and help clients determine their eligibility to request a CBM challenge, the potential ramifications of such challenges, and the very tight timeframes in which CBM reviews are conducted and decided. Our lawyers have successfully represented numerous clients from a broad range of industries before the PTAB.
Ex Parte Reexaminations
To help clients assert their patent rights after a patent has been granted, we regularly represent patent owners in ex parte reexamination proceedings. Given the limitations placed on those requesting such review, we work closely with requesting clients to prepare documentation, including prior patents and publications, that best supports their contention and establishes a “substantial new question of patentability” (or SNQ). We also help patent owners prepare responses to the requestor’s statements, file proposed amendments to the patent, and—in the case of an adverse decision—pursue appeals before the PTAB and the US Court of Appeals for the Federal Circuit.
Inter Partes Reviews
We regularly help patent owners and petitioners determine whether inter partes review (IPR) represents an effective strategy in combination with, or as an alternative to, traditional litigation, and identify and overcome practical and time-sensitive procedural hurdles in IPR processes. Drawing on the combined skills of our patent prosecution lawyers and litigators, many of whom hold advanced technical and scientific degrees, we help clients develop and mount the most effective challenges and defenses possible. In addition to our direct representation of clients, McDermott has organized a number of seminars and roundtables on the IPR process, and our lawyers speak and write frequently on the subject for industry and legal associations and publications.
Given the nine-month window of opportunity available to file for post-grant review (PGR) of a patent award, time is of the essence. At McDermott, we draw on our substantial experience with the USPTO as well as our business-first approach, combined prosecution and litigation prowess, and diversified technical knowledge to help clients determine the best strategy for launching and pursuing a PGR to a successful conclusion.
In many patent disputes, the first and most widely available enforcement option to patent owners is a supplemental examination request for consideration, reconsideration or correction of information believed to be relevant to the patent. This process allows for the review of a broad scope of information, limits potential liabilities associated with the failure to provide such information and, if a SNQ of patentability is found, can result in an order for ex parte reexamination.
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 dot.com 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.
Ericsson, a multinational telecommunications company, in the successful representation of five ongoing IPRs. All five have been instituted to date.
Snap-on, a leader in the high-end and professional power tool market, in the successful representation of several IPR petitions on patents asserted in a related district court litigation.
Zodiac Pool Systems, a leading manufacturer of automatic pool cleaners and equipment, in the successful representation of an IPR stemming from claims of infringement brought by Aqua Products, in its patent covering a robotic water pool cleaner. The PTAB found all claims invalid on several grounds and denied Aqua Products’ motion to amend claims. Zodiac Pool Systems, Inc., Petitioner v. Aqua Products, Inc., Patent Owner (Case IPR2013-00159)