Post-Grant Proceedings (IPR, PGR...)

Since the enactment of the America Invents Act (“AIA”), contested proceedings before the PTO’s Patent Trial and Appeal Board (“PTAB”) have assumed an integral - and often dispositive - role in patent disputes. Today, the possibilities of such PTAB proceedings must be considered in all patent disputes. Lerner David’s post‑grant practice has always been active. In the early 1980s, we succeeded in ex parte reexaminations involving patents on basic laser technology that dominated an entire industry. Later, when inter partes reexamination became available, we quickly developed expertise in those proceedings as well.

Our post‑grant practice expanded almost immediately with the passage of the AIA.  For one major medical device manufacturer, Lerner David filed some of the last inter partes reexaminations just before AIA implementation in September 2012; and then, less than two months later, we filed one of the first inter partes reviews (“IPRs”) to go to hearing. That IPR, where the challenged claims were ultimately found invalid, was drafted in part by flashlight and filed just a week after Super Storm Sandy battered New Jersey.  Since then, Lerner David has been involved in over 60 IPRs on behalf of both Petioners and Patent Owners.  On the Petitioner side, we have successfully represented pharmaceutical and medical device clients, among others, while representing patent owners in the food supplement, battery, and multinational media content delivery service industries in defending against IPRs.  On behalf of Petitioners, our institution rate exceeds the PTAB averages, and we have prevailed in 90% of final written decisions rendered.  On behalf of Patent Owners, through the strategic use of preliminary responses, Lerner David has been able to forestall the institution of, stay federal litigations, and obtain prompt settlements in multiple proceedings.

Lerner David has also represented a major consumer electronic and computer company and a multinational pharmaceutical company in more than a dozen IPRs.  Many of those have also led to favorable settlements, or have been instrumental in obtaining a stay in parallel district court litigations, or both.  One such IPR was filed a year after litigation began and resulted in a settlement within weeks, saving millions of dollars in continued litigation costs.  Lerner David is also one of the few firms to have filed a “derivation proceeding” (which, under the AIA, replaced certain “interferences”) and has prepared several Post‑Grant Review petitions, which can be used to attack the validity of a patent on far more grounds than in an IPR.

Lerner David, with its experience in both patent acquisition and enforcement, possesses a unique skill set tailor made for these new Patent Office proceedings, which are neither litigations nor examination, and cannot be treated merely as either.  Because our ability to assimilate the intricacies of the technology, and our knowledge of the institution and its procedures, Lerner David is well poised to bring and defend post-grant procedures.