IPRs & Other Post-Grant Proceedings
Trusting Mintz for Your Most Difficult Challenges
We have been extraordinarily successful in achieving positive outcomes for clients across many industries — particularly the automotive, medical technology, pharmaceuticals, and telecommunications sectors. Substantial experience in patent prosecution and litigation, coupled with our technical backgrounds, makes Mintz the ideal counsel to handle your post-grant proceedings. Elm 3DS hired us to save their patents after petitions were instituted against them — and we preserved 105 of 107 claims in that group of 15 IPRs.
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Several Mintz attorneys recognized among “The World’s Leading IP Strategists” (2017-2023)
Patexia
Ranked by Patexia as top 25 most active law firms representing patent owners (2023)
Chambers USA
Intellectual Property Practice ranked in California and Massachusetts (2022)
Patexia
Ranked by Patexia among the 50 most active law firms representing patent owners (2022)
Managing Intellectual Property
Included on Managing Intellectual Property's list of annual “Top Patent Firms”, nine attorneys named “IP Stars” and one named as a recognized practitioner (2021)
Our Experience
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Our Approach
The Patent Trial and Appeal Board (PTAB) has made it clear that it won’t simply rubber-stamp issued patents. The majority of patents challenged before the PTAB have had at least one claim invalidated through these IPR proceedings. If your patent is under threat, or you need to defend yourself from claims of infringement, we will leverage our best strategies for winning on the merits — and our knowledge of the technical ins and outs of the board’s complex procedures — to help you secure a victory.
We've helped our patent owner clients preserve litigation-quality claims at a pace nearly double the national average in cases with Final Written Decisions. That win statistic increases when denials of institution are included. Our team has won multiple appeals challenging PTAB decisions at the CAFC, including achieving the first full reversal by the CAFC of an adverse PTAB decision.
- Inter partes review
- Post-grant review
- Covered business methods
- Derivation proceedings
- Ex parte reexamination
- Supplemental examination
- Aerospace Engineering
- Biomechanical Engineering
- Biotechnology
- Chemistry
- Computer Science & Engineering
- Electrical Engineering
- Mechanical Engineering
- Pharmaceuticals
- Systems Engineering
- Civil & Environmental Engineering
Tips for Avoiding an Instituted IPR
Inter partes reviews have a very high institution rate. And worse, once instituted IPRs result in invalidated claims at an inordinately high rate. The best defense against an IPR petition is to convince the Patent Trial and Appeal Board to deny institution. The Mintz IPR team has been very successful in achieving denials of institution for our clients, and we produced and shared a series of Tips for Avoiding IPR Institution.
Tips for Surviving an Instituted IPR
As a Patent Owner in an instituted Inter Partes Review (IPR), there are dozens of considerations to bear in mind – from strategically approaching depositions and maximizing expert testimony, to drafting the final say in your sur-reply. The Mintz IPR team authored the “Patent Owner Tips for Surviving an Instituted IPR” series to provide valuable practice insights from institution forward. In the series below, we provide key takeaways from throughout the series.
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Inherent Limitations in Prior Patents can Lead to Obviousness-Type Double-Patenting
December 21, 2023| Blog|
