Our Inter Partes Review and Post Grant Practice assists companies with post grant challenges to patents in the U.S. Patent Trial and Appeal Board (PTAB). With over 100 PTO-admitted trial lawyers and patent prosecutors, our group helps clients navigate the intricacies of these challenges under the Leahy-Smith America Invents Act (AIA). Collectively, we have represented clients in nearly 80 inter partes review (IPR) proceedings alone.
IPR and post grant review proceedings are PTO proceedings that are directed to invalidating patent claims, but with features similar to those of conventional litigation. Both allow for limited discovery and culminate in a hearing before a panel of administrative patent judges to determine whether the claims at issue should be invalidated. Because both typically must be completed within one year, IPR and post grant review provide a quicker and more cost-effective alternative to conventional litigation—faster than any of the top patent venues.
As a hybrid between PTO proceedings and federal court litigation, IPRs require expertise across the patent spectrum. Continuing our pioneering approach of pairing our trial lawyers with our patent prosecutors to advise clients on their most complicated patent-related matters, our Inter Partes Review and Post Grant Practice is drawn from one of the largest, most collaborative intellectual property groups of any general practice firm.
Our patent litigators are renowned for their trial skills, having successfully assisted clients in hundreds of patent lawsuits, often involving the most difficult and complex circumstances, and developing new models for winning tough cases. Likewise, our patent prosecutors have done the same in hundreds of reexaminations and interference proceedings, on which the new IPR proceedings are modeled.
We have successfully represented clients in IPRs all the way through trial and final written decision. For example, we recently convinced the PTAB that all claims asserted in related litigation against our client were unpatentable on multiple grounds. Acting on behalf of patentees, we have also helped patent holders obtain PTAB rulings denying IPR before the PTAB.
Law360 IP Practice Group of the Year in 2013, 2015 and 2016
Chambers Global 2018 Global: Intellectual Property Asia-Pacific Region: Intellectual Property China: Intellectual Property: International Firms Japan: Intellectual Property: International Firms United States: Intellectual Property (Patent) United States: Intellectual Property (Section 337)
Chambers USA 2017 National: Intellectual Property National: International Trade: Intellectual Property (Section 337) California: Intellectual Property California: Intellectual Property (Patent Prosecution) New York: Technology & Outsourcing Washington D.C.: Intellectual Property (Litigation) Washington D.C.: Technology & Outsourcing
Chambers Asia-Pacific 2018 Japan: Intellectual Property: International Firms Asia-Pacific Region: Intellectual Property
U.S. News – Best Lawyers® Best Law Firms 2018 National: IP Litigation (Tier 1) National: Patent Litigation (Tier 1) National: Patent Law (Tier 1) Los Angeles: IP Litigation (Tier 1) Los Angeles: Patent Litigation (Tier 1) San Diego: IP Litigation (Tier 1) San Diego: Patent Litigation (Tier 1) San Diego: Patent Law (Tier 1) San Francisco: IP Litigation (Tier 1) San Francisco: Patent Litigation (Tier 1) San Francisco: Patent Law (Tier 1) Washington D.C.: IP Litigation (Tier 1) Washington D.C.: Patent Litigation (Tier 1)
The National Law Journal 2016 IP Hot List
Legal 500 US 2018 Copyright Patent Litigation: ITC Patent Litigation: Full Coverage Patents: Portfolio Management and Licensing Patent: Prosecution (Including re-examination and post-grant proceedings) Trade Secrets Trademarks: Litigation
Legal 500 Asia-Pacific 2018 China: Intellectual Property: Foreign Firms Hong Kong: Intellectual Property Japan: Intellectual Property: International Firms and Joint Ventures
Managing IP: American Awards Shortlist 2018 United States: Appellate United States: Life Sciences IP Litigation United States: ITC Japan: Patent – Foreign Firms
IAM Patent 1000 2017 California: Litigation (Gold) California: Transactions (Highly Recommended) California: Prosecution Hong Kong: Litigation & Transactions International Japan: Litigation and Licensing (Highly Recommended) National: Transactions National: Litigation Washington D.C.: Litigation
LMG Life Sciences 2017 Hatch-Waxman Patent Litigation Patent Prosecution (Highly Recommended) Patent Strategy and Management (Highly Recommended)
IP Practice Group of the Year 2015, 2013
IP Firm of the Year
BTI Litigation Outlook “IP VIP” (2015) “IP Litigation Powerhouse” (2014)
©1996-2019 Morrison & Foerster LLP. All rights reserved.