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

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)

Patexia

Recognized among the Top 50 firms for IPR work

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 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.