
Inter Partes Review and Post Grant Review Practice Group
Our Inter Partes Review (IPR) and Post Grant Review (PGR) Practice Group works hand-in-hand with our patent litigation bench to provide excellent results for our clients whether challenging the validity of a patent or facing a challenge to a patentโs validity before the U.S. Patent Trial and Appeal Board (PTAB).
IPR and PGR proceedings are streamlined proceedings before the USPTO that are brought for the purpose of invalidating patent claims in a manner similar to conventional litigation. However, both IPR and PGR proceedings provide a quicker and more cost-effective alternative to conventional litigation, because both proceedings typically conclude within a one to one-and-a-half-year periodโfaster than traditional venues for challenging patents, such as District Court litigation. Using the USPTO as a forum for validity challenges means that the invalidity arguments are considered by an expert panel of experienced technical judges, rather than a jury.ย Bringing an IPR or PGR can also, under the right circumstances, allow a party to ask for a stay of an infringement action against them until the PTAB decides the validity issue. They can also be used to advance difficult license negotiations.
Our attorneys have the special expertise to handle these proceedings. All our attorneys in the IPR and PGR Practice Group have technical backgrounds โ from electrical engineering to computer science to physics to biomedical engineering. We also have experience in appearing before the USPTO and have the litigation skills necessary to achieve successful results at the preliminary phase of IPRs and PGRs and at the eventual hearing.
Wiggin and Danaโs lawyers have decades of experience addressing patent-related obstacles quickly and cost-effectively from both sides โ patent holder and potential infringer. Wiggin and Danaโs IPR and PGR Practice Group creates innovate, cost-effective, and tailored legal strategies to enable innovative companies to avoid patent pitfalls.ย
Among the patent post grant proceedings practiceโs areas of expertise are:
- Inter Partes Review,
- Post-Grant Review,
- Covered Business Method Patent Review (CBM),
- Interferences/Derivation, and
- Supplemental Examination.
Wiggin and Dana patent attorneys have helped clients initiate proceedings to challenge patents in a wide range of technologies, from software systems to medical devices. We have a strong track record of defeating problematic patents. ย We have also been successful in defending our clientsโ challenged patents.
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Experience
- Represented Visionsense Corp., a medical device start-up, in successfully initiating an inter partes review against a competitor who had asserted patents that were interfering with its funding and eventual acquisition.
- Represented The Mangrove Partners Fund before the U.S. Patent Office in inter partes review proceedings brought to challenge the validity of certain Virnetx Patents that are the subject of ongoing litigation against Apple, where Virnetx is seeking $700M in damages. The PTAB originally ruled in favor of Mangroveโs petitions, finding the challenged VirnetX claims to be invalid. After VirnetX appealed to the Federal Circuit and the Federal Circuit remanded, the PTAB recently affirmed their invalidity decision on these Virnetx Patents.
- Brought and won a series of inter partes and ex parte reexaminations against patents held by Kimberly Clark.