Post-GrantOverviewMichael Best’s Post-Grant Practice has the experience and resources necessary to successfully navigate clients through inter partes review (IPR), covered business method review (CBM), and post-grant review (PGR) proceedings. We have achieved successful outcomes for both petitioners and patent owners and have experience with other post-grant proceedings, including ex parte reexamination. We understand there is no one-size-fits-all approach to post-grant proceedings – each client has unique challenges and business objectives. We have a dedicated team providing creative post-grant strategies, litigation prowess, and advanced knowledge in a range of complex technologies. Michael Best has obtained successful results on behalf of clients in a wide variety of industries including advanced manufacturing, appliances, auto parts, computer hardware and software, construction materials, agricultural technology, glass, industrial machinery, medical devices, recreational products, fitness equipment, and tobacco. Michael Best also has a robust Patent Prosecution practice; many on our team handle both prosecution of, and challenges to, patents and patent portfolios. Our attorneys leverage the experience and subject-matter expertise available through our cutting-edge Patent Engineer, Scientist, and Agent program. Through collaboration with these highly trained professionals, we are able to provide high-level, cost-effective services. Our Post-Grant Practice is complemented by our well-established Enforcement, Clearance & Defense practice. With a dedicated team of first-chair patent litigators, we have the resources, experience, and technical expertise to handle both proceedings before the Patent Trial and Appeal Board and any concurrent district court litigation. We are comfortable in the patent office and in the district court providing clients seamless representation in both.
Helpful Links
Experience
- We represented a petitioner in the injection molding industry in a series of three IPRs that resulted in some of the first Final Written Decisions addressing novel legal issues. One of the decisions, upheld on appeal, resulted in a precedential decision that assignor estoppel does not apply in post-grant proceedings. That same decision resulted in an opinion by the Federal Circuit Court of Appeals clarifying the application of incorporation by reference principles in IPRs. On remand, the PTAB reversed its original finding and held that the claims at issue were unpatentable.
- We represented a petitioner in the glass industry in a series of two IPRs in the wake of district court litigation. The proceeding resulted in an opinion of the Federal Circuit Court of Appeals addressing the novel issue of the extent to which a writ of mandamus is available in post-grant proceedings. Ultimately, the underlying litigation settled.
- We represented a patent owner in the medical device industry defending an IPR that was filed in the wake of district court infringement litigation. The PTAB denied the petition for inter partes review at the institution phase. The client ultimately went on to obtain a judgment of infringement against the petitioner.
- We represented a patent owner in the spot welding industry in a series of two IPR proceedings. The first petition was denied at the institution phase, and the second petition resulted in a trial on a limited number of claims. The PTAB ultimately concluded all claims were patentable.
- We represented a petitioner in the computer docking industry in an IPR proceeding. The patent-at-issue was owned by a patent owner well known for asserting its patents against a wide variety of targets. Given the technology, the Petition relied on the combination of a large number of prior art patents and publications. During pre-trial proceedings, the PTAB ruled in our client’s favor requiring the patent owner either to submit to a deposition about all paragraphs of its declaration or to withdraw certain paragraphs, which the patent owner ultimately did. The PTAB found all claims unpatentable.
- We represented two petitioners in the golf industry in an IPR proceeding. The patent-at-issue was the subject of several related district court and patent office proceedings that complicated the IPR. The petition involved complicated questions of combining disparate pieces of prior art. The PTAB found all claims unpatentable.
- We co-counseled to represent a well-known petitioner in the office products industry in an IPR involving paper shredders. The challenge was vigorously contested, and at the end of trial, all challenged claims were deemed unpatentable. This outcome avoided our client’s possible liability for patent infringement and allowed our client to sell its product going forward without fear of infringing the challenged claims.
- We represented a petitioner in the fitness industry in two IPRs involving exercise devices (e.g., treadmills) that send and receive data to and from remote locations. The results of these two IPRs was that all challenged claims were found to be unpatentable. This, along with our successful challenge of other patents by ex parte reexamination, resulted in our client avoiding a potential substantial liability for patent infringement and allowed our client to continue developing its smart technology going forward.
- We represented a world-renowned patent owner in the kitchen and bathroom fixture industry in an IPR involving shower fixtures. At the conclusion of the proceeding, all challenged claims were deemed patentable. This outcome gave our client substantial leverage in a related patent infringement lawsuit against the petitioner.
- We represented a petitioner in the fastener industry in an IPR involving a patent on self-piercing rivets. After trial was instituted, the patent owner cancelled all original claims and filed a Motion to Amend. But after receiving our Opposition to the Motion to Amend and receiving the Board’s Preliminary Guidance, the patent owner requested Adverse Judgment be entered. This resulted in all original claims being deemed unpatentable, which opened the door to our client entering the U.S. market.
Related People Preview Attorney's BiographyClients rely on Ken to help them resolve complex intellectual property and commercial disputes. Drawing on a strong technical background, particularly in the electrical, mechanical and electro-mechanical arts, Ken has successfully litigated patent infringement cases throughout the United States. He has represented clients in all phases of patent litigation and trial preparation.  Preview Attorney's BiographyDon’s outstanding track record is built on successful outcomes in complicated and high-profile intellectual property litigation across a wide range of industry sectors and in courts throughout the United States. Clients rely on his tenaciousness and excellent trial skills gained from many years of work with cases involving patents, trade secrets, trademarks, and copyrights.  Preview Attorney's BiographyClients look to Bill for his rare combination of litigation and prosecution experience. His expansive knowledge of all aspects of intellectual property uniquely positions him to provide clients with a complete range of intellectual property services. For almost 20 years, Bill has litigated patents and other intellectual property rights relating to a wide variety of technologies.  Preview Attorney's BiographyNick brings strong experience and training as a mechanical engineer to his work in patent preparation and prosecution. A creative thinker who is known for his meticulous attention to detail, he helps clients develop proactive as well as defensive patent strategies. Nick’s focus includes patent preparation, patent portfolio management, patent clearance and patentability searches and analysis, and invalidity opinions.  Preview Attorney's BiographyShane focuses his practice on intellectual property litigation and other complex litigation involving patents, trademarks, trade secrets, trade dress and licenses in a wide range of industries and technical fields in State and Federal courts across the country.  Preview Attorney's BiographyJustin assists clients in achieving their business goals by obtaining protection of their intellectual property rights and developing strategies to enforce them. Justin has extensive experience resolving IP related disputes through litigation. He has achieved positive results on behalf of his clients in cases involving utility patents, design patents, trade dress, copyrights, as well as challenging the validity of patents through Post-Grant Proceedings before the United States Patent Office (USPTO).  Preview Attorney's BiographyArthur offers clients a winning combination of trial and appellate experience gained as a federal prosecutor and more than 20 years of experience in handling trademark, copyright, patent, and trade secrets litigation. While his practice concentrates on intellectual property litigation, Arthur also has significant experience in internal investigations, False Claims Act suits, partnership and breach of fiduciary duty, breach of contract, and employment litigation.  Preview Attorney's BiographyRyan focuses his practice on intellectual property litigation. He helps clients develop effective enforcement strategies and represents them in all facets of litigation related to trademarks, copyrights, and patents.  Preview Attorney's BiographyRich has a strong track record in intellectual property law, specializing in all stages of the patenting process for mechanical arts and technologies. He helps clients build patent portfolios, avoid or invalidate competitor patents, and defend against infringement claims. Through his extensive experience with utility and design patents, Rich has become a trusted, long-term business partner to producers and manufacturers.
Related NewsPublication August 24, 2020 Publication June 29, 2020 Publication April 22, 2020 Publication April 16, 2020 News April 15, 2020 Publication April 13, 2020 Publication March 20, 2020 News February 19, 2020 Publication February 12, 2020 Publication February 10, 2020 Publication January 31, 2020 News November 1, 2019 News July 1, 2019 News June 26, 2019 News June 25, 2019 Event May 29, 2019
|