Intellectual Property

Inter Partes Reviews

Mintz Levin represents petitioners and patent owners in IPRs. And while we don’t handle a high volume, we prevail more often than most firms. In fact, while past success is no guarantee of future success, our patent owner clients have prevailed in 92% of the IPRs we have handled on their behalf. And we have preserved validity of claims in 89% of patent owner IPRs which have been instituted, while the industry average is 35% (USPTO IPR statistics as of 7/31/2017).

Our clients trust us to shoulder the burden of their most difficult challenges, and for good reason. The firm’s IPR teams have achieved successful outcomes for companies across a wide range of technology-based industries, including automotive technology, medical technology, ophthalmology, pharmaceuticals, and telecommunications.

The Patent Trial and Appeal Board has made it clear that it won’t simply rubber-stamp issued patents. In fact, the majority of patents challenged before the board have had at least one claim invalidated through these IPR proceedings. But where others see challenges, we see opportunity. If your patent is under threat at the PTAB, 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 an IPR victory.

In addition to IPRs, Mintz Levin also handles the full range of post-grant proceedings.

Visit our resources tab for details about each type of proceeding:

  • Post-Grant Review
  • Inter Partes Review
  • Transitional Program for Covered Business Methods
  • Derivation Proceedings
  • Ex Parte Reexamination
  • Supplemental Examination

These trial proceedings were established with the aim of reducing the time and expense associated with traditional patent litigation. Whether to avoid traditional litigation or to secure a tactical advantage in one or more preexisting patent infringement suits, use of post-grant patent proceedings (and particularly Inter Partes Reviews) will only continue to increase. Because these new proceedings resemble traditional litigation, navigating them successfully requires a broad range of legal skills. Mintz Levin’s collaborative approach, which brings together seasoned litigators and prosecutors with deep technical knowledge, means our clients get the best of both worlds in their IPR and other post-grant proceeding representation.


Case Study: Sweeping IPR Wins Raise Firm’s Patent Owner Success Rate to 92%

Between December 2015 and March 2016, Samsung Electronics, Micron Technology and SK Hynix filed 14 inter partes reviews against 12 patents owned by Elm 3DS Innovations. The IPRs were part of the technology behemoths’ defense against patent infringement claims brought by ELM 3DS in the District of Delaware (DDE).

The firm did not initially represent ELM, but after the petitions were instituted, Mintz Levin was hired as replacement counsel to develop and execute the defense. The firm had to quickly get up to speed on the technology, patents, and arguments against the 107 claims being challenged in the IPRs. Failure to succeed in the IPRs would badly have undermined the pending DDE litigations.

Oral arguments were held on April 6, 2017 in the consolidated cases. Attorney Bill Meunier handled the arguments and teamed with attorneys Michael Renaud and Michael Newman in developing the defense.

In three sets of opinions issued between June and August, the Patent Trial and Appeal Board handed ELM 3DS a resounding victory in proceedings most often dominated by Petitioners. On average, Respondents succeed in only 35% of IPRs that receive a Final Written Decision. This set of wins increases Mintz Levin’s win percentage representing Respondents in IPRs with Final Written Decisions to 89% (92% if denials of institution are included).

Case Study: Mintz Levin Secures Multiple IPR Wins at PTAB

On behalf of telecom, automotive, and software innovators, Mintz Levin achieved victories in nine recent inter partes review proceedings, both knocking out asserted patents and saving others. 

In March 2017 alone, Mintz Levin has achieved significant Inter Partes Review (IPR) victories at the Patent Trial and Appeal Board (PTAB) on behalf of four different clients. 

On March 7, the PTAB handed down positive decisions in four IPRs the firm handled for ParkerVision Inc., which designs, develops, and markets proprietary radio frequency (RF) technologies. The PTAB upheld significant claims in one of the many important patents this innovative company holds in the RF space.

The very next day, the PTAB denied a petition to institute an IPR against our client RAD Data Communications, which is a global telecom solutions and products vendor. That victory, which Mintz Levin achieved in collaboration with the Israel-based Intellectual Property firm A.C. Entis IP, was particularly significant because petitions to initiate IPRs are granted in the vast majority of cases.

The Ides of March brought with it another clear-cut victory for Mintz Levin–represented companies SL Corporation and Hyundai. On March 15, the PTAB decided in favor of our clients in two IPR proceedings in which the petitioners had challenged the validity of our clients’ patent directed to an automatic control system to adjust automotive headlights. The patent had been asserted against Hyundai in the US District Court for the District of Delaware, in a case that was stayed pending the outcome of the IPRs and which is now positioned to be a win for Hyundai as well.

Finally, on March 21 and 22 — fresh on the heels of the solstice — two IPR victories for SimpliVity Corporation put a new spring in that pioneering software provider’s step. PTAB denied institution of two petitions for review by Springpath, Inc., SimpliVity’s direct competitor in the hyperconvergence software market. By upholding the validity of SimpliVity’s ‘799 patent, these PTAB victories increase the likelihood that SimpliVity will prevail in a patent infringement action currently pending against Springpath.

These victories continue Mintz Levin’s track record of success in IPR proceedings, in which we have defended the validity of patents our clients seek to assert and invalidated patents asserted against our clients. 

Case Study: Victory at CAFC — PTAB Decision Reversed and Remanded

Straight Path IP Group came to us after another firm handled an inter partes review before the Patent Trial and Appeal Board in which the Board cancelled each of the challenged claims of Straight Path’s US Patent No. 6,108,704. Our team developed the appellate strategy, drafted the briefs, and argued the appeal before the Federal Circuit. The argument focused on the construction of two claim terms.  In an opinion issued on November 25, 2015, the Federal Circuit reversed and remanded the Board’s decision cancelling our client’s claims. See Straight Path IP Group, Inc. v. Sipnet EU S.R.O, No. 15-1212, (Fed. Cir. Nov. 25, 2015). It was the first time the Federal Circuit reversed a Board decision in its entirety, and only the second time it held that the Board erred in construing the claims of a patent.

Case Study: PTAB Upholds All FootBalance Patent Claims

Mintz Levin achieved a second significant victory on behalf of FootBalance when the Patent Trial and Appeal Board (PTAB), in an Inter Partes Review (IPR) proceeding, handed down a final decision upholding all of the patent claims challenged by Zero Gravity Inside, Inc. (ZGI). FootBalance, a small company based in Finland, creates custom insoles by heating and then molding materials directly to a person's foot − an 10-minute process that eliminates the need to make multiple trips to a medical center for measuring and fitting. In an earlier decision in FootBalance's favor, the PTAB declined to institute a proceeding − a move that proved to be a significant first step in FootBalance's defense of its patent rights against ZGI. The two IPR petitions filed by ZGI are part of that company’s defense strategy against FootBalance in a litigation pending in the Southern District of California. These PTAB victories, by upholding FootBalance's patent rights, will help to protect our client's position in the marketplace while strengthening its position in the pending litigation.

REPRESENTATIVE MATTERS

  • Successful Defense of 12 IPRs – Three dimensional structure memory
    Mintz Levin is representing Elm 3DS Innovations in a series of 14 IPRs filed by leading technology companies, including SK Hynix, Micron, and Samsung. We were hired as replacement counsel following institution of the IPRs which had been filed in late 2015 and early 2016. Final Written decisions in 13 of the proceedings were received in June and August 2017 and confirmed validity of all but two challenged claims.
  • Successful Defense and Institution Denial of Multiple IPRs — Point-to-Point Communication Over Computer Networks
    Mintz Levin successfully defended 14 inter partes reviews instituted against patents owned by our client, Straight Path, and denied institution of three others. All patents concern technology for facilitating point-to-point communications over computer networks. Petitioners in these matters were Samsung Electronics Co., Ltd.; Cisco Systems, Inc., LG Electronics, Inc.; Toshiba Corp.; VIZIO, Inc.; Verizon Communications, Inc.; Hulu, LLC; and Avaya Inc.
  • Successful Denial of IPR Petitions — Pharmaceuticals
    Mintz Levin prepared and filed Preliminary Patent Owner Responses to three inter partes review petitions filed by generic pharmaceutical manufacturers against our client Nissan Chemical. Based on those filings, the PTAB denied all three petitions. The petitioners are defendants in Hatch-Waxman litigation filed by Mintz Levin on behalf of Kowa and Nissan Chemical to protect their market position for Livalo®, an important pharmaceutical which reduces LDL cholesterol.
  • Successfully Challenged Validity in IPR Proceedings — Adjustable Focus Eyeglasses
    Successfully represented Petitioners Adlens USA, Inc., and Adlens, Ltd., in two inter partes review proceedings challenging the validity of patents covering fluid filled, adjustable eyeglass lenses. The PTAB invalidated all challenged claims in the patents.
  • Successfully Challenged Validity in IPR Proceeding — Bed Spring
    Mintz Levin successfully represented Petitioner ACE Bed Co., Ltd., in an inter partes review proceeding challenging the validity of a patent assigned to Sealey Technology LLC relating to bed springs. The PTAB issued a Final Written Decision invaliding all challenged claims.
  • Successful Denial of IPR Petition — IV Port Access Disinfectant
    Mintz Levin prepared and filed a Preliminary Patent Owner Response to an inter partes review petition filed by Exelsior Medical Corp. against our client Ivera Medical Corp. in the medical device space. Based on that filing, the PTAB denied Excelsior's petition and follow-up request for reconsideration.
  • Successfully Challenged Validity in IPR Proceedings — Automatically Adjusting Automotive Headlights
    Mintz Levin successfully represented Petitioners SL Corporation and Hyundai Motor America, Inc., in two inter partes review proceedings challenging the validity of a patent directed to automatic adjustment of automotive headlights based on signals from inertial sensors and/or potentiometers. The PTAB invalidated all challenged claims in the patents.
  • Successful Defense of Multiple IPRs — Capacitors
    Mintz Levin is defending American Technical Ceramics Corp. (ATC) and AVX Corporation three inter partes review trials initiated by Presidio Components, Inc., against three US patents concerning capacitor technologies and owned by ATC and AVX. One of these IPRs was denied institution and the PTAB issued a Final Written Decision in a second preserving all challenged claims.
  • Successful Defense of Multiple IPRs — Individually Formed Footwear
    Mintz Levin represented respondent in two IPRs challenging patents directed to individually formed footwear and a related method. PTAB denied institution in response to one of the petitions and entered a Final Written Decision in favor of our client, preserving all challenged claims, in the other.
  • Successful Denial of Institution — Packet Switched Networks
    Through their Israeli IP Counsel, RAD Data Communications engaged Mintz Levin to defend against a preemptive petition for inter partes review challenging a patent covering one of RAD’s core technologies. The PTAB issued a decision denying institution of the petition after reviewing the Patent Owner Preliminary Response.

The United States Patent and Trademark Office (USPTO) has promulgated regulations and procedures to implement and efficiently adjudicate challenges to the validity of issued US patents in trial proceedings before the Patent Trial and Appeals Board (PTAB). The current complement of USPTO patent review options presents both opportunities and challenges to patent owners and challengers alike. Successfully navigating these new procedures requires professionals who are experienced in adversarial patent proceedings and who are admitted to practice in and familiar with the USPTO. 

Below we provide insight into the four new PTAB trial proceedings and other available USPTO proceedings:

You will also find at the end of this page useful USPTO links to more detailed information about the proceedings and frequently asked questions.

Mintz Levin’s USPTO patent review professionals can explain each of these in detail, describing the value to you specific to your organization and technology. We are experienced litigators and patent professionals and look forward to helping you leverage these new procedures to your best advantage. 


 

Post-Grant Review

The AIA amended the Patent Act to add a chapter of Post-Grant Review (PGR) trial proceedings conducted before the PTAB to review the patentability of one or more claims in a patent. Challenges to those claims are limited to invalidity on the basis of novelty, obviousness, written description, enablement, and indefiniteness. A PGR may only be used against a patent issued from an application subject to the new first-inventor-to-file rules under the AIA, meaning that it had to have been filed on or after September 16, 2012. 

Importantly, companies contemplating a challenge to a newly issued patent via PGR must remain mindful of the timing requirements. Any challenger seeking institution of a PGR trial proceeding must file the petition(s) within nine months of the patent issue date.  If the peitiion is denied or the challenger unsuccessful or dissatisfied with the outcome of the PGR proceeding, the same patent may later be challenged through the IPR process or via one or more petitions seeking review of the patent under the Transitional Program for Covered Business Method Patents.

The rules governing the implementation and conduct of PGR proceedings may be found on the UPSTO website

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Inter Partes Review

A person who is not the patent owner and has not previously filed a civil action challenging the validity of a claim of the patent may file a petition for inter partes review (IPR) with the PTAB requesting cancellation of one or more claims as unpatentable based on a ground that could be raised under 35 U.S.C. §§ 102 (anticipation) or 103 (obviousness) and only on the basis of prior art consisting of patents or printed publications. If instituted based on one or more of the proposed grounds set forth in the petition, the inter partes review trial proceedings are conducted before a panel of Administrative Patent Judges. The panel will review the patentability of the claims at issue and, unless the parties settle, the PTAB will issue a final determination regarding patentability. Where the PTAB issues a final determination finding one or more claims at issue to be unpatentable, those claims are cancelled from the patent.

An IPR may be filed against any issued patent on the later of either (1) nine months after the grant of the patent or issuance of a reissue patent, or (2) if a post grant review is instituted, the termination of the post grant review. 

The rules governing the implementation and conduct of IPR proceedings may be found on the USPTO website.  

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Transitional Program for Covered Business Methods

The Transitional Program for Covered Business Method (TPCBM) patents became effective on September 16, 2012. Any third party that has been charged with infringing the claims of a covered business method patent, as defined in 37 C.F.R. § 42.301, may challenge the validity of that patent using this program. Petitions may be filed at any time. Upon institution, TPCBM review trial proceedings generally follow the standards and procedures of Post-Grant Review, which certain exceptions.

The rules relating to patent challenges brought under the TPCBM may be found on the USPTO website.  

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Derivation Proceedings

Derivation proceedings became effective on March 16, 2013, and replace interferences as to any challenged patents and patent applications subject to the first-inventor-to-file system. The USPTO will institute a derivation proceeding if there is a dispute over priority of inventorship. Specifically, the new derivation procedure will apply when a later-filing applicant files a petition seeking to prove that the first-filing applicant or patentee derived the invention from one or more of the named inventors on the later-filed application and filed the earlier application without authorization.

The final rule may be found on the USPTO website.  

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Ex Parte Reexamination

Ex parte reexamination is largely unchanged under the AIA and remains available for requesting an additional examination of already-granted patents. The reexamination must be based solely on published patents and printed publications and may be filed at any time during the enforceability of a patent. In the filing, the requestor must establish that those documents submitted with the request establish a “substantial and new question of patentability.” Third-party filers have little involvement beyond the earliest stages of the proceedings, and are unable to comment or participate in the examination process. This leads many to view the ex parte reexamination process as biased toward the benefit of the patentee.

The full procedures for ex parte reexamination may be found on the USPTO website.  

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Supplemental Examination

Supplemental examination is a post-grant patent review proceeding established by the AIA and incorporated into the Patent Act at 35 U.S.C. § 257. Effective as of September 16, 2012, the statute permits a patent owner to have the USPTO “consider, reconsider, or correct information believed to be relevant to the patent.” Information “relevant to the patent” includes any category of information that is material to patentability under 37 C.F.R. § 1.56(b), which may include patents, printed publications, and information concerning patent eligibility under 35 U.S.C. §101 or validity under 35 U.S.C. §112.

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USPTO Resources

Frequently Asked Questions

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