Patent Post-Grant

Patent Post-Grant

Post-grant proceedings before the United States Patent and Trademark Office (USPTO) are challenges to patents that have already been issued.  Since the 2011 Leahy-Smith America Invents Act (AIA), these post-grant patentability challenges are an increasingly critical aspect of intellectual property practice, and often become more important than the original infringement actions. 

The fall of 2012 saw the first filing of inter partes review (IPR), covered business method (CBM) patent review, and post grant review (PGR) petitions with the Patent Trial and Appeals Board (PTAB) from those seeking invalidation of patent claims.  In the four years since, thousands of IPRs and hundreds of CBMs have been filed with the USPTO.

In this difficult and cutting-edge legal category, L&W LLP’s attorneys have been recognized as one to the nation’s leading firms practicing before the PTAB.  Our attorneys have many years of experience in successfully representing clients in post-grant challenges to critical patents that have been the subject of over half-a-billion dollars in damages awards and settlements.  In addition to our deep expertise and ongoing practice in reexamination proceedings, we have been counsel in over 50 CBM and IPR cases and reexaminations.

We have achieved a particularly high level of success for our clients of post-grant proceedings, including numerous full dismissals of petitions for review.  L&W LLP’s successful arguments in Branch Banking and Trust Co. v. Maxim Integrated Products, Inc., CBM2013-00059 (Pat. Tr. & App. Bd., March 20, 2014), for example, formed the basis of the PTAB's first precedential decision, SecureBuy, LLC v. CardinalCommerce Corp., CBM2014-00035 (Pat. Tr. & App. Bd., April 25, 2014), which confirmed as correct L&W LLP's interpretation of the AIA's provisions with respect to CBM review requirements for standing.

Within the world of patent litigation in the era of the America Invents Act, post-grant proceedings is a practice area that demands skill, understanding, and up-to-date experience in patent law and PTAB pre-institution and trial nuances.  Lowenstein & Weatherwax LLP’s attorneys have built an enviable record of success for its clients.  Let us do our best work for you.

Shawn Chi
Edward Hsieh
Nathan Lowenstein
Roman Melnik
Flavio Rose
Jonathan H. Steinberg
Kenneth Weatherwax