Two avenues in which a third party can challenge the validity of an issued patent are inter partes review and post grant review.
Inter partes review is a trial proceeding conducted at the Patent Trial and Appeal Board (“PTAB”) to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications.
Post grant review is a trial proceeding conducted at the PTAB to review the patentability of one or more claims in a patent on any ground that could be raised under § 282(b)(2) or (3). Thus, post grant review can, in some cases, allow for more avenues for challenging a patent’s validity than an inter partes review.
Ex parte reexamination is a proceeding conducted at the USPTO in which an examiner reexamines the patentability of one or more claims in a patent only on the basis of prior art consisting of patents or printed publications. Unlike inter partes review and post grant review, the requester has little to no involvement after the request is filed.
Our Experience
Whether through challenging the validity of a patent, or representing patent owners whose patent’s validity has been challenged, we have strong history of winning post grant proceedings cases at the PTAB. With post-grant proceedings rising in prominence — whether as an alternative to litigation or as a central piece of a litigation strategy — winning a post-grant proceeding is now a critical step in winning a patent dispute.
We honed our skills for persuasively presenting the technical and legal issues that pervade post-grant proceedings through years of successfully procuring patents for our clients, handling ex parte reexaminations, and patent litigations.