US Patent Office Post-Grant Proceedings

Morgan Lewis has the technical knowledge, dispute experience, and established Washington, DC, presence to handle all types of post-grant proceedings at the US Patent and Trademark Office (USPTO), including reexaminations, reissue applications, inter partes reviews, covered business method patent reviews, derivation proceedings, and post-grant reviews.   

Our team has a long history of handling adversarial proceedings at the USPTO, including appeals, reissues, and reexaminations. We also have experience litigating complex patent matters, including routinely arguing before courts and administrative panels and taking and defending depositions. In fact, we have handled post-grant proceedings since their institution, including the second-ever inter partes review argued before the Patent Trial and Appeal Board (PTAB). More recently, we have had a number of inter partes reviews and covered business method reviews dismissed by the PTAB.

In addition to having offices in major technology hubs, we have an established presence near the USPTO in Washington. 

AN EXPERIENCED TEAM

All of our patent lawyers and agents have technical or science degrees, and many hold advanced degrees. A number of our lawyers also have worked in the industry and as USPTO examiners.

Our technical experience crosses many disciplines, including electrical, computer hardware and software, business methods (including e-commerce and financial services), mechanical, life sciences (biotechnology and pharmaceuticals), specialty chemicals, medical devices, diagnostics, semiconductors, clean technology, financial technology, and consumer products.

A Record of Success

Our team has a proven record of success, including

  • achieving a clean-sweep victory for our clients responding to 12 separate inter partes reviews, resulting in all patents determined to be patentable
  • obtaining early dismissal of four “covered business method” reviews targeting patents owned by the operator of one of the world’s leading container shipping portals
  • representing a major university in a district court litigation and concurrent reexamination
  • persuading the USPTO, in representing the requestor, that the codefendants in a joint defense group could share prior art and put on a joint defense in the district court without all members of the group being subject to estoppel resulting from the reexamination
  • invalidating a competitor’s inter partes reexamination proceedings on behalf of a client
  • representing a client in one of the first-ever inter partes reviews before the USPTO.

Accolades

  • Ranked #2, Most Successful Firms in Defending PTAB Challenges, Docket Navigator (2016)
  • Top 5 Law Firm, based on number of PTAB filings, Lex Machina (2016)
  • Top 5 Law Firm, based on IPR petition filings, Citrus Minds (2016)
  • Ranked #3, Top 100 Patent Firms, Juristat (2016)
  • Top 10 Law Firm, successfully overcoming Alice patent rejections, Juristat (2015)
  • Top 10, Busiest Patent Defense Firms, Law360 (2015)
  • Top Patent Firm, IP Today (2011-2015)