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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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Our Experience

Case Study
Mintz protected clients’ patents related to the cholesterol drug Livalo®. Mintz defended against three IPRs filed by generic manufacturers that had filed Abbreviated New Drug Applications (ANDA) with the FDA and secured Patent Trial and Appeal Board denials of institution of the generic companies’ IPR petitions.
Case Study
Mintz’s work for ELM 3DS at the patent office enabled ELM to continue patent infringement litigation in federal court in Delaware. Mintz attorneys took over inter partes reviews (IPRs) challenging the validity of ELM’s patent claims after the IPRs were instituted.
Case Study
Mintz defended Israeli telecom company RAD Data Communications against a USPTO petition for inter partes review (IPR) that challenged a patent covering one of RAD’s core technologies. The Patent Trial and Appeal Board issued a rare ruling denying institution of the IPR.

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.

​Proven IPR Success

We've helped our patent owner clients prevail in more than 87% of the IPRs we've handled on their behalf, including denials of institution. We've preserved validity of claims in 83% of patent owner IPRs that have been instituted. By comparison, the industry average is only 35%, according to USPTO IPR statistics as of July 31, 2018. Our team also achieved the first complete reversal and remand of a PTAB decision against a patent owner at the Federal Circuit.

​A Full Range of Proceedings
  • Inter partes review
  • Post-grant review
  • Covered business methods
  • Derivation proceedings
  • Ex parte reexamination
  • Supplemental examination
​Our Technical Backgrounds
  • Aerospace Engineering
  • Biomechanical Engineering
  • Biotechnology
  • Chemistry
  • Computer Science & Engineering
  • Electrical Engineering
  • Mechanical Engineering
  • Pharmaceuticals
  • Systems Engineering
  • Civil & Environmental Engineering
International Comparative Legal Guide Patents 2021
The Mintz Intellectual Property Team authored the USA Chapter in "Patents 2021", International Comparative Legal Guides' annual publication providing cross-border insight into patent law.

International Comparative Legal Guide Patents 2021

Meet Mintz

Our team has been extraordinarily successful in achieving positive outcomes for clients across a range of industries.