Meunier Carlin & Curfman LLC

"Value Without Compromise"

Post Grant Proceedings

The America Invents Act (“AIA”) made sweeping changes to post-grant patent proceedings. The AIA created new opportunities for clients to strengthen an issued patent, or challenge a competitor’s patent without the need for more expensive, time-consuming litigation.

Meunier Carlin & Curfman has represented both patent owners and challengers in these new proceedings. We can use our experience to effectively and efficiently represent you in these proceedings.

Inter Partes Review

Inter partes review (IPR) is an alternative to litigating patent validity in federal courts and is limited to validity challenged based on published references. Challengers fully participate in the trial process before a panel of administrative law judges from the Patent Trial and Appeal Board (PTAB). The review proceedings allow for discovery by the parties. Challengers are prevented from raising any issue which was or reasonably could have been raised during the IPR in any further proceedings before the USPTO, International Trade Commission, or federal courts. Our firm has counseled and represented patent owners and petitioners in these proceedings and has experience with the many issues associated with IPR practice.

Post-Grant Review

Post-grant review (PGR) is akin to opposition practice in Europe and elsewhere and is another alternative to litigating patent validity in federal courts. Unlike IPR proceedings, PGR proceedings allow validity challenges based on any ground that can be litigated in federal court. PGR petitions can only be filed on patent applications that are subject to AIA rules and must be filed within nine months from a patent grant or reissue. Like IPR proceedings, challengers are prevented from raising any issue which was or reasonably could have been raised during the PGR in any further proceedings before the USPTO, International Trade Commission, or federal courts. There are only a few patents currently that can be challenged using PGR practice, but our firm has already begun to counsel clients on these proceedings.

Ex parte reexamination

The AIA did not change the ex parte reexamination process. Ex parte reexamination is the most inexpensive way for a challenger to attack a patent using patents or other printed publications. The patent owner can also file an ex parte reexamination to have its patent reconsidered. If a request for ex parte reexamination is granted, the review process involves only the PTO and the patent owner and is not conducted before the PTAB. Unlike in inter partes reviews, there is no estoppel and the same patent challenges can be brought in a future proceeding.

Supplemental Examination

The AIA created supplemental examination as a method for the patent owner to have the PTO reconsider a patent based on any information that could affect the validity of the patent. Thus, supplemental examination is not limited to printed publications like ex parte reexamination. Supplemental examination can be filed at any point while the patent is enforceable. If the request is granted, the supplemental examination proceeds as an ex parte reexamination. If the request is denied, the patent owner receives a supplemental examination certificate.

Reissue

The patent owner can file a reissue proceeding to correct an error in a patent. The patent owner can file a reissue to have a patent reconsidered based on any aspect of patentability. If the patent owner files the reissue proceeding within two years of the grant of the patent, the patent owner also has the possibility of broadening the claims of the patent. However, the patent owner cannot broaden the patent to cover subject matter that was the surrendered during prosecution to overcome prior art. Multiple reissue applications can be filed for distinct and separate parts of the patent to be reissued. Reissues are conducted before a patent examiner and result in a reissued patent.

Our Experience

Client

Assignee

Patent No.

Proceeding (client)

Date completed

Outcome

Scientific Atlanta

Scientific Atlanta

5,225,925

Ex parte reexam (patent owner)

5/5/2009

Claims maintained and new claims added

Webvention

Webvention

5,251,294

Ex parte reexam (patent owner)

10/12/2011

Claims maintained based on distinguishing arguments over prior art

Edwards Lifesciences Corporation

 

Edwards Lifesciences Corporation

 

6,004,330

Ex parte reexam (patent owner)

3/4/2014

Ex parte reexamination certificate was issued

Edwards Lifesciences Corporation

 

Medtronic, Inc.

 

6,306,141

Inter partes review (petitioner) 

TBD

Settled prior to institution

B.F. Goodrich

B.F. Goodrich

6,250,587

Ex parte reexam (patent owner)

6/29/2010

Claims maintained and new claims added

Wireless Remote Systems

Wireless Remote Systems

6,317,039

Inter partes review (patent owner)

1/5/2015

Patent reassigned to inventor during proceedings

BASF SE

BASF SE

6,454,902

Inter partes review (patent owner)

TBD

Ongoing

InMotion Imagery Technologies, LLC

InMotion Imagery Technologies, LLC

6,526,219

Ex parte reexam (patent owner)

9/19/2011

Claims maintained with amendment

Syntune

JDS Uniphase

6,654,400

Inter partes review (requestor)

3/27/2013

Reexam instituted; settled with litigation

Syntune

JDS Uniphase

6,658,035

Inter partes review (requestor)

4/1/2013

Reexam instituted; settled with litigation

Syntune

JDS Uniphase

6,687,728

Inter partes review (requestor)

9/4/2012

Reexam instituted; settled with litigation

Wireless Remote Systems

Wireless Remote Systems

6,690,273

Inter partes review (patent owner)

1/5/2015

Unpatentable

Utility Associates, Inc.

Utility Associates, Inc.

6,831,556 (I)

Inter partes review (patent owner)

11/16/2015

Partial institution; patentable/unpatentable

Utility Associates, Inc.

Utility Associates, Inc.

6,831,556 (II)

Inter partes review (patent owner)

12/9/2015

Not instituted; Board declined to institute trial on all requested claims

Infinity Computer Products

Infinity Computer Products

6,894,811 (I)

Ex parte reexam (patent owner)

7/31/2012

Claims maintained with amendment

Infinity Computer Products

Infinity Computer Products

6,894,811 (II)

Ex parte reexam (patent owner)

2/5/2014

Claims maintained based on distinguishing arguments over prior art

Infinity Computer Products

Infinity Computer Products

7,489,423 (I)

Ex parte reexam (patent owner)

5/1/2012

Claims maintained with amendment

Infinity Computer Products

Infinity Computer Products

7,489,423 (II)

Ex parte reexam (patent owner)

2/5/2014

Claims maintained based on distinguishing arguments over prior art

Ignite USA, LLC

Ignite USA, LLC

7,546,933

Inter partes review (patent owner)

11/13/2015

Partial institution; unpatentable

Verint

Verint

7,613,290

Inter partes review (patent owner)

2/25/2014

Proceedings terminated in favor of patent owner

Verint

Verint

7,852,994

Inter partes review (patent owner)

2/25/2014

Proceedings terminated in favor of patent owner

Ignite USA, LLC

Ignite USA, LLC

7,997,442

Inter partes review (patent owner)

9/28/2015

Partial institution; unpatentable

Infinity Computer Products

Infinity Computer Products

8,040,574

Ex parte reexam (patent owner)

2/5/2014

Claims maintained based on distinguishing arguments over prior art

BASF SE

BASF SE

8,067,215

Inter partes review (patent owner)

TBD

Ongoing

Board of Regents, The University of Texas System

Board of Regents, The University of Texas System

8,188,012

Ex parte reexam (patent owner)

10/2/2015

Reexamination certificate granted on amended claims

Board of Regents, The University of Texas System

Board of Regents, The University of Texas System

8,211,837

Ex parte reexam (patent owner)

12/22/2015

Reexamination certificate granted on amended claims

Infinity Computer Products

Infinity Computer Products

8,294,915

Ex parte reexam (patent owner)

2/5/2014

Claims maintained based on distinguishing arguments over prior art

Irwin Industrial Tool Company

Irwin Industrial Tool Company

8,579,554

Inter partes review (patent owner)

TBD

Ongoing

Irwin Industrial Tool Company

Irwin Industrial Tool Company

8,579,555

Inter partes review (patent owner)

TBD

Ongoing

Verint

Verint

RE43,324

Inter partes review (patent owner)

2/25/2014

Proceedings terminated in favor of patent owner

AirDefense

AirDefense

10/160,904

Interference (Senior Party)

11/7/2007

Decision for Junior Party based on determination of support under 35 U.S.C. § 112, first paragraph

 

Representative Professionals
Larry Aaronson
Greg Carlin
John Harbin
Jason Huff PhD
Gibson Lanier PhD
Trey Levie
Drew Meunier
David Moreland
Rebecca Rudich
Warren Thomas
AJ Zucchero

"Value Without Compromise"

Contact Information

999 Peachtree Street NE, Suite 1300 Atlanta, Georgia 30309

P: 404-645-7700 | F: 404-645-7707