Post-Grant Proceedings

Post-Grant Proceedings Coordinated With Related Litigation

Calling on extensive  patent litigation and technical experience, my firm can handle the post-grant proceeding, for example inter partes reviews, in coordination with actual or prospective litigation.  Although typically I would be involved in the litigation, if not, I can quickly educate myself on the issues, without necessarily communicating with your litigation counsel or reviewing confidential documents, as in the case of protective order constraints.  Depending on your needs, I can collaborate with your regular patent counsel.  

Patent litigation and technical experience is helpful because post-grant proceedings are conducted in the Patent Office before the Patent Trial and Appeal Board (PTAB), a panel of three patent judges with technical/scientific backgrounds.  Discovery including depositions is permitted but limited.  Appeals from the PTAB are to the Court of Appeals for the Federal Circuit. 

Relevant Experience & Background

  • Successfully opposed institution of inter partes reviews; PTAB did not institute petitions.
  • Successfully petitioned for inter partes review.  No asserted claims survived.
  • Drafted petitions for contingent use, as part of preparation for a dispute.
  • Handled hearing in federal court including on appeal to Federal Circuit.
  • Deposed & defended experts.
  • In inter partes reexamination, obtained allowance of original claims without resorting to amendments or supporting declaration.
  • Registered patent attorney.
  • Former registered professional engineer.
  • Engineering degrees (electrical).
  • Industry engineering experience.