Post-Grant Patent Proceedings INTELLECTUAL PROPERTY

Our deep experience with post-grant patent proceedings, IP litigation and patent prosecution means that we are well prepared to advise clients on the smartest, most cost-effective ways to challenge or defend issued patents.


Our attorneys understand how to strategically implement inter partes reviews (IPRs), covered business method reviews (CBMs), post-grant reviews and ex parte reexaminations to further our clients' objectives. For petitioners, these procedures can provide a faster, more cost-effective means to adjudicate the validity of a patent and obtain freedom to operate. For patent owners, an effective strategy and thorough understanding of the procedures are important to preserve claims and claim breadth. We have found that post-grant proceedings can provide strategic tools to limit and define issues before or during patent litigation, or promote settlement.

Following the 2012 passage of the America Invents Act, WilmerHale was among the first law firms to file 100 IPRs, emerging as a leader in post-grant proceedings and advising clients on the interplay between US Patent and Trademark Office proceedings and concurrent litigation. Since filing our 100th IPR, we have successfully taken numerous IPRs and CBMs through hearing and final decision, representing both petitioners and patent owners.

WilmerHale's patent prosecution and litigation experience enables us to navigate complex procedural, substantive and strategic issues posed by post-grant proceedings and deliver favorable results.

Contacts

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Cavanaugh, David L.

David L. Cavanaugh

Chair, Post-Grant Patent Proceedings Group

+1 202 663 6025 (t)

david.cavanaugh@wilmerhale.com

Steinberg, Donald R.

Donald R. Steinberg

Chair, Intellectual Property Department

+1 617 526 6453 (t)

don.steinberg@wilmerhale.com

Haag, Joseph F.

Joseph F. Haag

Vice Chair, Intellectual Property Department

+1 650 858 6032 (t)

joseph.haag@wilmerhale.com

Dichiara, Peter M.

Peter M. Dichiara

Partner

+1 617 526 6466 (t)

peter.dichiara@wilmerhale.com

Grewal, Monica

Monica Grewal

Partner

+1 617 526 6223 (t)

monica.grewal@wilmerhale.com

Experience

Some of our representative experience includes:  

  • achieving a Federal Circuit dismissal of an appeal from patent reexamination client Becton Dickinson (BD). This case marked the first time BD used IPR as a strategy to assure freedom to operate for one of its catheter products;
  • obtaining another significant victory for BD in an IPR before the Patent Trial and Appeal Board (PTAB), when the PTAB declared unpatentable all challenged claims of the patent, and the plaintiff withdrew its appeal. The district court dismissed the case; 
  • achieving a series of victories for a group of major financial institutions against a patent assertion entity. The victories culminated in four successful CBM proceedings in which the PTAB invalidated 83 of the patent assertion entity's claims;
  • successfully cancelling challenged claims in six IPR proceedings for EMC, two of which also included VMware as a petitioner. The PTAB found every challenged claim unpatentable. The decisions are currently on appeal at the US Court of Appeals for the Federal Circuit, which WilmerHale is also handling; and
  • for a company involved in data backup and restoration and virus detection, securing unpatentability determinations in inter partes reexaminations on patent claims being asserted in concurrent litigation.

Publications & News

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December 1, 2017

Can an Industry Group Appeal an Unfavorable IPR Decision?

An article by Intellectual Property Department Chair Don Steinberg and Associate Vera Shmidt, published in Bloomberg Law's Patent, Trademark and Copyright Journal on November 24, 2017.

November 20, 2017

Jumping Into the Deep End: Amendment Practice Post-Aqua Products

In this article published by Bloomberg Law's Patent, Trademark & Copyright Journal, authors David Cavanaugh and Michael Smith provide context for issues discussed in the Aqua Products decision, identify potential implications for practitioners, and provide perspectives on next steps for the PTO on motion to amend practice.

November 17, 2017

Remands From the Federal Circuit Back to the Patent Trial and Appeal Board: Are They a “Redo” or Something More Limited?

The Court of Appeals for the Federal Circuit, the reviewing court for the decisions issued by the Patent Trial and Appeal Board, has handled over 1,000 appeals from the Board on patent trials authorized by the America Invents Act.

November 9, 2017

Real Parties-in-Interest Discovery in Post-Grant Proceedings

In this article published by Bloomberg Law's Patent, Trademark & Copyright Journal, authors Richard O'Neill and Arthur Shum review the PTAB body of law to date on obtaining real party-in-interest discovery in America Invents Act post-grant proceedings.

November 6, 2017

Increasing Role of Objective Indicia of Nonobviousness in AIA Proceedings

In this article published by Bloomberg Law's Patent, Trademark & Copyright Journal, authors Keith Slenkovich and Kevin Yurkerwich direct practitioners to carefully develop objective indicia evidence, and responses challenging the sufficiency of such evidence.

November 1, 2017

WilmerHale Honored Throughout 2018 U.S. News - Best Lawyers® Best Law Firms List, Named Intellectual Property Litigation Firm of the Year

WilmerHale has been recognized among the 2018 U.S. News and World Report and Best Lawyers® list of Best Law Firms, an honor it has earned since the inception of these rankings in 2010.

August 7, 2017

The Use of Applicant Admitted Prior Art in IPR Petitions

In this article published by Bloomberg BNA's Patent, Trademark & Copyright Journal,  Don Steinberg, Yung-Hoon Ha and Liv Herriot explore how the Patent Trial and Appeals Board has considered Applicant Admitted Prior Art (AAPA) when a petitioner has relied upon it as part of one or more of its grounds in its IPR petition requesting the Board invalidate a patent. The authors provide recommendations for both petitioners and patent owners based on how the Board has decided on this issue.

July 24, 2017

WilmerHale Recognized in IAM Patent 1000 2017

The firm and several of its partners are ranked in IAM Patent 1000 2017 – The World's Leading Patent Professionals.

June 9, 2017

The Legal 500 United States 2017 Recognizes 125 WilmerHale Lawyers Across 28 Practice Areas

The Legal 500 United States has released its 2017 rankings, recommending 125 WilmerHale lawyers—including 12 who are named to its elite “Leading Lawyers” list and two on its “Next Generation Lawyers” list—and 28 practice areas in its 11th edition.

June 8, 2017

WilmerHale Partners and Practices Named Among Managing Intellectual Property's 2017 IP Stars

IP Stars identifies lawyers based on their practice and industry experience, and recommendations from their peers and clients.

Recognition

WilmerHale's Intellectual Property Department and its individual attorneys are routinely recognized as leaders in the field.

  • American Lawyer – Named WilmerHale its "IP Litigation Department of the Year" in 2014. This is the second time that WilmerHale has been named a winner and the third time the firm has been named a finalist since the contest's inception in 2002.
  • Best Lawyers in America – Recognized 10 WilmerHale IP and IP litigation-related partners in the 2016 edition—overall recognizing 99 WilmerHale lawyers and naming seven of them as "Lawyers of the Year." Partner Lisa Pirozzolo was named as the Boston Litigation: Patent Lawyer of the Year and Partner Seth Waxman as the Litigation: Intellectual Property Lawyer of the Year. In the 2015 edition, Partner Bill Lee was named as the Boston Litigation: Intellectual Property Lawyer of the Year.
  • BTI Consulting Group (2015) – WilmerHale was recognized as the "Most-Favored IP Department" in the nation, one of two firms that are the "Best at Complex IP Litigation" and one of six firms identified as "Go To IP Litigation Firms" in the BTI Intellectual Property Outlook 2015: Changes, Trends and Opportunities in IP & IP Litigation report. In the BTI Litigation Outlook 2014 report, WilmerHale was named among the "IP Litigation Standouts."
  • Chambers USA: America's Leading Lawyers for Business – Ranked our practice in band one in Massachusetts for the past 13 years (2003-2016). Chambers USA 2011-2016 ranked our national practice in band one, noting that our teams "are outstanding at all levels, combining first-rate technical and legal acumen and great trial skills." In addition, Chambers USA ranked our California (2012-2016), Colorado (2016), DC (2012-2016) and New York (2012-2016) intellectual property practices. In 2013-2016, we were recognized in International Trade: Intellectual Property (Section 337).
  • IAM – In 2015, and based on research conducted by Unified Patents Research, WilmerHale was reported as one of the most successful law firms at the PTAB.
  • Lex Machina - According to the 2017 Patent Trial and Appeal Board Report by legal data analytics firm Lex Machina, WilmerHale is one of two full-service law firms that is most experienced in representing petitioners at the PTAB, having filed 65 petitions in 2016 alone. 
  • Managing IP (MIP) – Named WilmerHale the 2017 Patent Contentious Firm of the Year—both in the United States and in the Northeast region—and Bill Lee was named as the Massachusetts Outstanding IP Litigator. In 2016, WilmerHale was named Patent Contentious Firm of the Year and Natalie Hanlon Leh was named the Colorado Outstanding IP Litigator of the Year. The firm was shortlisted as one of the Patent Contentious Firms of the Year, Copyright Northeast Firms of the Year and Pharma IP Litigation Firms of the Year for 2015. David Cavanaugh, Bill Lee and Seth Waxman received individual recognitions. WilmerHale was selected as the Patent Contentious Firm of the Year each year between 2011 and 2014. In 2014, the firm was named the Copyright Firm of the Year and the winner of the Milestone Case of the Year. MIP also named Bill Lee as Massachusetts IP Litigator of the Year and Seth Waxman as DC IP Litigator of the Year—each earning this title for the fourth year in a row. The firm was recognized as the Pharmaceutical IP Litigation Firm of the Year in 2013.
  • Managing IP (MIP) – Named WilmerHale among the top nationally ranked firms for intellectual property in 2015, and recognized 18 of our partners as IP Stars.
  • Managing IP North America Awards – In 2015, Partner and Chair of the firm's Post-Grant Patent Proceedings Group Dave Cavanaugh was named among the shortlist for the US PTAB Litigation (USPTO) category.
  • Managing IP World IP Survey – WilmerHale was included in the 2015 shortlist of firms recognized for excellence in US PTAB Litigation (USPTO).
  • U.S. News – Best Lawyers® – In the 2013-2017 “Best Law Firms” rankings, the firm was honored with first-tier national rankings in Biotechnology Law, IP Litigation, Patent Litigation and Patent Law; and first-tier metropolitan rankings in Washington DC and San Jose for IP Litigation; in Boston for Copyright Law, Patent Law, Patent Litigation, IP Litigation, and Trademark Law; and in New York for Biotechnology Law.