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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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.

May 26, 2017

WilmerHale Lawyers and Practices Recognized in 2017 Edition of Chambers USA

Chambers and Partners announced its rankings for the 2017 edition of Chambers USA: America's Leading Lawyers for Business, with WilmerHale listed among the nation's best in 50 practice area categories. Chambers also ranked 86 WilmerHale lawyers as leaders in their respective fields.

May 23, 2017

WilmerHale Earns Win for Unified Patents at PTAB

WilmerHale achieved a significant victory on behalf of Unified Patents Inc. when the Patent Trial and Appeal Board issued its final written decision in Unified Patents Inc. v. American Vehicular Sciences, LLC, holding unpatentable all challenged claims of US Patent [No.] 9,043,093.

May 9, 2017

WilmerHale Helps Unified Patents Earn Win at PTAB Against Nonend Inventions

The Patent Trial and Appeal Board issued a final written decision in Unified Patents Inc. v. Nonend Inventions, NV, invalidating all claims of US Patent 8,090,862, owned and asserted by Nonend Inventions, NV.

April 3, 2017

Practice Tips for Patentees Asserting Method-of-Treatment Claims Involving Divided Infringement

In this article published by BNA's Patent, Trademark and Copyright Journal, Kevin Prussia, Jamie Wisz and Steven Horn detail tips for patentees asserting method-of-treatment claims involving divided infringement.

March 27, 2017

Managing IP Recognizes WilmerHale as the Patent Contentious Firm of the Year

Both in the United States and in the Northeast region, the firm was again named as the 2017 Patent Contentious Firm of the Year—and Bill Lee was named as the Massachusetts Outstanding IP Litigator at the annual Managing IP North American Awards.

March 23, 2017

Selwyn and Fernandez Selected Among Finest Law Firm Writers by Burton Awards

Partners Ben Fernandez and Mark Selwyn have been recognized among “the finest law firm writers” of 2017 as announced by the Burton Awards, a nonprofit program run in association with the Library of Congress.

January 20, 2017

Practice Tips for Presenting and Responding to Motivation-to-Combine Arguments in IPR Proceedings

David Cavanaugh, Joshua Stern and Kevin Yurkerwich, in this article published by Bloomberg BNA's Patent, Trademark & Copyright Journal, provide an overview of recent PTAB decisions denying institution of inter partes review and share practice tips for practitioners to follow.

December 23, 2016

Patent Owners’ Options After Claims are Cancelled in AIA Post-Grant Proceedings

An article by Thomas Anderson and Bo Han, published by Bloomberg BNA's Patent, Trademark & Copyright Journal, discusses options for patent owners after claims are canceled in the American Invents Act post-grant proceedings.

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.