Post Grant ProceedingsU.S. law makes it attractive to attack patents at the Patent Office. Merchant & Gould has a mix of litigators and prosecutors that take advantage of these options for clients. Recent changes in U.S. patent law have made it much more attractive to attack patents at the U.S. Patent and Trademark Office (PTO) instead of the courts, even when litigation has already begun. Because Merchant & Gould has a deep bench of both patent litigators and specialists admitted to practice before the PTO, the firm is uniquely positioned to take advantage of these new options to the benefit of its clients. Merchant & Gould has successfully attacked many patents at the PTO in recent years. Many of these attacks were on behalf of clients sued for infringing the patents. Instead of facing multi-million dollar damages claims or expensive litigation, clients saw their lawsuits brought to a halt or favourably settled or resolved. We even secured a multi-million dollar payment from the patent owner to our client due in large part to a successful attack of the competitor’s patent at the PTO. We have also successfully defended our client’s patents against challenges at the PTO. Patents that survive a reexamination challenge emerge stronger than ever, enabling our clients to successfully enforce their patent rights. PTO procedures include traditional ex parte and inter partes re-examination, as well as new review procedures made available by the America Invents Act such as inter partes review and covered business method procedures. These new procedures are particularly well suited to patents enforced by Non Practicing Entities or Patent Assertion Entities, some of which are sometimes referred to as “patent trolls.” We also have experience with traditional interference procedures that are precursors to some of the new procedures including the new derivation procedure. Merchant & Gould attorneys are also well-versed in trademark opposition and cancellation procedures. We work with our clients to employ procedures to strengthen our clients’ patents and trademarks and challenge competitors’ patents and trademarks in the most effective way. PTO challenges to patents can help to avoid or reduce the cost of litigation. In some cases these PTO procedures can be used before litigation begins. In other cases, these procedures can be used during litigation. Even if the process does not invalidate the patent entirely, in almost every case our clients have benefited from the process because it also efficiently resolves critical issues bearing on patent infringement and assists in supporting other defenses. Our attorneys have extensive experience helping clients consider and employ these procedures as complements or alternatives to federal court litigation for resolving patent disputes in the right situations. Merchant & Gould attorneys have experience in handling post grant review procedures for patents in diverse industries and technologies including:
- Mechanical Engineering (e.g., underground storage tanks, construction and telecommunication equipment, air and liquid filter technology, lawn care and maintenance products, high security locks, window frames, and power tools)
- Software and telecommunications systems (e.g., e-commerce, messaging systems, and security encryption products)
- Chemistry and Chemical Engineering (photo-resists to pesticides and numerous other commercial processes)
- Biotechnology/Pharmaceutical and Therapeutic Products and Applications (e.g. protein engineering, molecular diagnostics and assays, antibodies, gene therapy, vaccines and immunomodulators)
- Consumer products, such as food products and home organizers, and
- Medical devices such as telehealth systems
Successful Post Grant Procedures Undertaken by Merchant & Gould Our firm’s attorneys and technical staff have a broad range of scientific and engineering experience. Our ability to team court, PTO, legal and technical resources leads to optimized strategy and results in all forums. Other Resources Below please find helpful resources related to these strategies including:
- Brief descriptions of USPTO post grant review procedures for patents
- Links to statutes governing patent reexamination procedures
- Links to articles by Merchant & Gould attorneys who handle post grant review proceedings for patents.
Available procedures
Ex Parte Reexamination is a proceeding that can be initiated at any time during the enforceability of a patent by any person filing a request for the USPTO to conduct a second examination of any claim of the patent on the basis of prior art patents or printed publications which that person states to be pertinent and applicable to the patent and believes to have bearing on the patentability. In order for the request for reexamination to be granted, a substantial new question of patentability must be present with regard to at least one patent claim. In this type of proceeding, a request can be made by any person, but excludes a third party from participating in the ex parte proceedings beyond the filing of a reply to the patent owners statement under 37 CFR § 1.530, if the patent owner files a statement.
Reissue is a Patent Office procedure involving surrender of an unexpired patent deemed to be wholly or partly inoperative or invalid due to errors that occurred without deceptive intent, and Patent Office review to address and correct defects in the patent.
Inter Partes Review is a trial-like proceeding that allows any third party to challenge the enforceability of patent claims by filing a request for the USPTO to conduct further examination of specified claims of the patent on the basis of prior art patents and printed publications. In order for the request to be granted, a reasonable likelihood that at least one challenged claim would be found invalid has to exist. The patent owner will have a chance to narrow the claims of his/her patent, while the patent challenger can then serve discovery and file motions directed to these validity issues. An inter partes review proceeding has to be initiated by a third party within a year of being named in a lawsuit. This procedure in part replaces the former inter partes reexamination process, which is no longer available for new challenges, although pending reexaminations will continue.
Post grant review is a new trial proceeding conducted at the Board to review the patentability of one or more claims in a patent on a broad array of grounds, including indefiniteness and enablement. In many ways other than the scope of the review, post grant review is expected to operate much like inter partes review with respect to time limits, availability of discovery and claim amendment, and other issues.
Covered Business Method Proceedings are trial-like proceedings that allows a named defendant in a lawsuit relating to a business method to challenge the enforceability of patent claims by filing a request for the USPTO to conduct further examination of specified claims of the patent. In order for the request to be granted, a reasonable likelihood that at least one challenged claim would be found invalid. The Covered Business Method proceedings can be brought at any time by a named defendant if the patent in question does not describe a “technological invention” but once instantiated generally follows similar procedures to those involved in inter partes review.
Interference is a Patent Office proceeding to determine priority of invention between a pending application and one or more pending applications and/or one or more unexpired patents. Interference proceedings remain available for any patents having an effective filing date prior to March 16, 2013.
Derivation proceedings take the place of interference proceedings for applications filed on or after March 16, 2013, and are a new trial proceeding conducted at the Board to determine whether (i) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application, and (ii) the earlier application claiming such invention was filed without authorization. An applicant subject to the first-inventor-to-file provisions may file a petition to institute a derivation proceeding only within 1 year of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention.
Post Grant Proceedings Practice Group Chair, Andrew J. Lagatta
View Related Professionals
Examples of Specific Post-Grant Review ProceduresMerchant & Gould has successfully attacked many patents at the PTO in recent years. Examples of specific post-grant review procedures we have successfully invoked for clients can be found in the table below. Merchant & Gould has successfully attacked many patents at the PTO in recent years. Examples of specific post-grant review procedures we have successfully invoked for clients can be found in the table below.
Patent Number |
Title |
Reexamination Number |
Result |
6,412,628 |
Apparatus and Method for Preventing the Formation of Metal Tarnish |
90/006411;
90/006881 |
We represented the accused infringer and brought two ex parte reexams. We succeeded in cancelling all asserted claims. The patent owner’s infringement claim was dismissed with prejudice. We settled the case with a payment form the patent owner to our client of $4.3 million. |
6,055,516 |
Electronic Sourcing System |
90/009636 |
We represented the accused infringer and brought this ex parte reexam. Final rejection affirmed on appeal to POBA, appealed to CAFC (Lawson). Meanwhile, underlying lawsuit was decided with a finding of no infringement of any claims of the patent. |
6,505,172 |
Electronic Sourcing System |
95/000487 |
We represented the accused infringer and brought this ex parte reexam. Final rejection of claims issued. On appeal awaiting decision. Meanwhile, the lone asserted claim found to infringe at the trial level was found invalid on appeal. |
6,023,683 |
Electronic Sourcing System and Method |
90/008104;
90/011066 |
We represented the accused infringer and brought this ex parte reexam. Final rejection of all claims. On appeal awaiting decision. Trial court precluded award of any damages, Federal Circuit affirmed award of $0 damages. |
7,501,357 |
Vapor Permeable, Liquid Impermeable Composite Fabric and Fabrication Process |
95/001258 |
We brought this reexam on behalf of a client whose customer was notified of infringement by a competitor. We successfully canceled all asserted claims. |
5,533,325;
5,715,664 |
All Wheel Hydraulic Drive System |
90/008,583;
90/008,575 |
We, with co-counsel, put our own client’s patents into ex parte reexamination to overcome litigation defendant’s prior art arguments. Both patents were confirmed. The reexaminations lead to favorable case settlement for our client. |
6,047,530; 6,336,311; 6,336,312; |
Gang-Type Rotary Lawn Mower |
90/000,245; 95/000,244; 90/009,308 |
We, with co-counsel, filed ex parte and inter partes reexaminations against patents asserted against our client in litigation. After all claims were initially canceled, the case settled favorably and we stopped participating in the reexams. |
6,935,093;
7,439,931 |
Power Lawn Mower Including Shortened Control Arms for Use in Deck Lift System |
95/001,742; 95/001,741 |
We, with co-counsel, filed reexaminations against patents asserted against our client in litigation. All claims were canceled, the case is on appeal. |
6,488,034;
6,694,988 |
File, Particularly Nail File |
90/011,944;
90/011,945 |
We represented the Patent Owner. Unidentified party brought ex parte reexaminations against the patents asserted by our client/ Patent Owner in litigation. All claims were initially rejected but we successfully overcame the rejections and obtained confirmation of all but one claim. |
5,504,072;
5,438,042 |
Enteral Nutritional Composition Having Balanced Amino Acid Profile |
90/004,226; 90/004,227 |
Reexaminations on behalf of Patent Owner during litigation. Litigation stayed for reexamination after which, both patents received Reexamination Certificates. As a result of reexamination, summary judgment no inequitable conduct granted and defendant’s litigation prior art invalidity defense viewed as not providing a basis for obviousness by the Patent Office. The reexamination led to a highly favorable case settlement for our client/patent owner. |
6,999,938 |
Automated Reply Generation Direct Marketing System |
90/012501 |
Filed on behalf of accused infringer. Patent asserted against dozens of companies. Pending – reexamination ordered November 26, 2012. |
6,990,660 |
Non-Invasive Automatic Offsite Patch Fingerprinting and Updating System and Method |
95/001190 |
Relevant claims either canceled or amended, eliminating threat of damages for past infringement. Case settled favorably. |
8,015,025 |
Method and Apparatus for Remote Health Monitoring and Providing Health Related Information |
95/002276 |
Client sued for infringing these six patents by a large competitor. After initiating reexaminations on all asserted patents, the court granted our motion to stay the lawsuit. The reexams have been granted with rejections of hundreds of claims, and all are pending. |
6,968,375 |
Networked System for Interactive Communication and Remote Monitoring of Individuals |
95/002237 |
See above. |
8,140,663 |
Networked System for Interactive Communication and Remote Monitoring of Individuals |
95/002221 |
See above. |
7,941,327 |
User Monitoring |
95/002199 |
See above. |
7,252,636 |
Networked System for Interactive Communication and Remote Monitoring of Individuals |
95/002234 |
See above. |
6,368,273 |
Networked System for Interactive Communication and Remote Monitoring of Individuals |
90/012474 |
See above. |
7,729,528 |
Automated Wafer Defect Inspection System and a Process of Performing Such Inspection |
95/001874 |
We represent a patent owner in an inter partes reexam. Accused infringer initiated reexamination. We avoided reexamination of several claims. Matter is reaching appeal stage. |
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