Inter Partes Reviews (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.

Awards

Patexia

Ranked by Patexia among the 50 most active law firms representing patent owners (2022)

Managing Intellectual Property

Massachusetts IP practice included among MIP’s “Top Patent Firms” (2019)

IAM Strategy 300

Two attorneys recognized among "The World's Leading IP Strategists" (2017 - 2020)

Chambers USA

Intellectual Property Practice ranked in Massachusetts (2019)

Our Experience

IPR Victories in Innovators’ Hatch-Waxman Battles

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.

Mintz Preserves 105 out of 107 Challenged Claims

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.

PTAB Success for Israeli Telecom Company

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 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.

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

Defense Tactics to IPR Challenges

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.

View Our Full Series

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.

View Our Full Series