Post-Grant Proceedings

Proceedings before the Patent Trial and Appeal Board (PTAB) and U.S. Patent and Trademark Office can determine the validity—and sometimes the practical value—of important patent rights. Whether challenging a patent asserted in litigation or defending a patent from an administrative challenge, success requires a strategy that combines patent prosecution knowledge, litigation experience, technical understanding, and familiarity with the unique procedures governing post-grant proceedings.

At Perilla Knox & Hildebrandt, our attorneys represent patent owners and challengers in inter partes review (IPR), post-grant review (PGR), ex parte reexamination, and related proceedings before the USPTO and PTAB. We also counsel clients regarding whether and when to pursue post-grant challenges and how those proceedings should be coordinated with parallel district court litigation.

Our intellectual property focus gives us experience with patents throughout their lifecycle—from drafting and prosecution through post-grant challenges, litigation, and appeal. We use that perspective to identify the issues most likely to determine the outcome and develop strategies that account for both the proceeding before the USPTO and the client's broader business and litigation objectives.

Inter partes review and PTAB proceedings.

Inter partes review has become an important mechanism for challenging patents based on prior patents and printed publications. An IPR can provide an accused infringer with an alternative forum for challenging patentability and can significantly affect the strategy, timing, and outcome of related patent litigation.

We represent both petitioners and patent owners in IPR proceedings before the PTAB. For petitioners, our work includes evaluating potential challenges, conducting and assessing prior art searches, selecting the strongest grounds for review, developing claim constructions, working with technical experts, and preparing petitions designed to present a focused and persuasive case for institution and unpatentability.

For patent owners, we evaluate challenges from the outset and develop strategies for defeating institution or defending the challenged claims through final written decision. Our representation may include preliminary responses, patent owner responses, expert declarations and depositions, motions practice, oral hearings, and consideration of claim amendments where appropriate.

Throughout the proceeding, we focus on presenting technically accurate arguments that are grounded in the patent record and capable of withstanding scrutiny before the PTAB and, when necessary, on appeal.

Patent challenges as part of litigation strategy.

Post-grant proceedings rarely exist in isolation. IPRs and other USPTO proceedings are frequently pursued alongside patent infringement litigation and can materially affect litigation strategy.

We counsel clients regarding whether a PTAB challenge advances their broader litigation objectives, including consideration of timing, statutory deadlines, available prior art, institution risk, estoppel, litigation stays, claim construction, and the relationship between arguments presented to the PTAB and those presented in district court.

For patent owners, we likewise evaluate how a post-grant challenge may affect infringement positions, claim construction, prosecution history, damages, settlement strategy, and the overall litigation timeline.

Our patent prosecution and litigation capabilities allow us to coordinate these proceedings as parts of a single strategy rather than treating the PTAB and district court as separate disputes.

Ex parte reexamination.

Ex parte reexamination can provide another mechanism for challenging the patentability of issued patent claims based on patents and printed publications. Unlike IPR proceedings, the requester generally does not participate in the examination process after the USPTO orders reexamination, making the procedure strategically different from an adversarial PTAB proceeding.

We advise patent owners and third-party requesters regarding whether ex parte reexamination is appropriate under the circumstances and prepare requests presenting substantial new questions of patentability.

We also represent patent owners throughout reexamination proceedings, including responding to Office Actions, addressing prior art and claim interpretation issues, developing amendments where appropriate, and pursuing appeals within the USPTO. Our prosecution experience is particularly valuable in navigating the examination procedures that apply after reexamination has been ordered.

Post-grant review and other USPTO proceedings.

Depending on the patent and timing of the challenge, other USPTO procedures may provide additional avenues for addressing patent validity.

Post-grant review permits qualifying patents to be challenged on a broader range of patentability grounds than those available in IPR, subject to a limited statutory filing window. We counsel clients regarding the availability and strategic implications of PGR and represent parties in proceedings when appropriate.

We also advise clients regarding other mechanisms for correcting, strengthening, challenging, or addressing issued patents before the USPTO, including reissue proceedings and other available post-issuance procedures.

The appropriate procedure depends on the patent, the grounds for challenge, the procedural posture of any related litigation, and the client's ultimate objective.

Technical depth and patent prosecution experience.

Post-grant proceedings often turn on a detailed understanding of both the technology and the prosecution record. Prior art must be understood in its technical context, claim limitations must be carefully analyzed, and arguments must account for how the patent was originally drafted and prosecuted.

Our attorneys have experience across technologies including software and computer systems, artificial intelligence and machine learning, telecommunications and wireless communications, electronics, semiconductors, mechanical and electromechanical systems, medical technologies, manufacturing systems, and consumer products.

Because patent prosecution is a core part of our practice, we also understand how claims are developed, how amendments and arguments affect claim scope, and how the intrinsic record may influence a post-grant challenge. That experience allows us to approach post-grant proceedings with an understanding of both how patents are built and how they can be challenged or defended.

Our Clients.

We represent patent owners, accused infringers, technology companies, manufacturers, emerging businesses, and multi-national corporations in post-grant matters involving valuable patent rights and commercially significant technologies.

For parties considering a patent challenge, we help determine whether a post-grant proceeding offers a meaningful strategic advantage and which grounds provide the strongest basis for challenging the patent. For patent owners, we develop strategies designed to preserve important patent rights while accounting for related infringement litigation, licensing programs, and portfolio considerations.

We recognize that a post-grant proceeding is ultimately one component of a larger business and intellectual property strategy. Our objective is to develop a focused approach that addresses the patentability issues before the USPTO while remaining aligned with the client's broader commercial and litigation goals.