Post-Grant Proceedings

Post-Grant Proceedings

The Post-Grant Proceedings practice at Fenwick & West is built with seasoned patent practitioners and litigators with deep experience in patent disputes at the U.S. Patent and Trademark Office, U.S. federal courts and the International Trade Commission (ITC). The practice covers all aspects of dealing with administrative patent disputes, including trials at the U.S. Patent and Trademark Office, post-grant reviews, inter partes reviews, ex parte reexaminations, derivation proceedings, covered business method reviews, and also covers cross-over patent litigation strategy. The practice members leverage their years of extensive experience in patent reexamination proceedings and parallel litigation to develop cost-effective, business-focused strategies for dealing with patent disputes under the new PTO rules mandated by the America Invents Act (AIA) and the evolving IP management landscape.

The cost of defending and enforcing patents has grown prohibitively high. To help manage these costs, Congress introduced the AIA with new laws designed to streamline awards of patents, raise the quality of examination processes and cost effectively resolve disputes over validity. Under the umbrella of the newly created Patent Trial and Appeal Board (PTAB), core aspects of resolving validity disputes are now governed by newly designed post-grant opposition proceedings. The PTAB has been designed to leverage the U.S. Patent and Trademark Office’s regulatory and technical expertise in patent reexamination by expanding its scope to include other validity disputes in quasi-litigation contexts. This will potentially allow parties to resolve validity disputes without introducing the high costs and complicated proceedings of in-court litigation to the opposition process.

To help clients strategically navigate these new waters, the Fenwick & West Post-Grant Proceedings practice leverages its extensive experience in collaboratively representing third-party challengers and patent holders in ex parte and inter partes patent reexamination proceedings that cross over with parallel litigation. Moreover, the group includes practitioners who regularly represent and advise companies from startups up to large enterprises in cross-over disputes, thereby providing an understanding of the unique business goals and challenges facing companies at different stages. This experience brings with it unique insights for developing cost-effective, and as importantly, business-focused, strategies for dealing with patent disputes.

What You Can Expect with Fenwick on Your Team

A Focus on Business Goals

Fenwick’s intense focus on technology industries allows us to become deeply familiar with the market realities and competitive landscape of our clients. Because we understand the subtleties of our clients’ businesses, we are able to participate on a business strategy level, not just an individual dispute level, and work with you to drive dispute resolution towards your business goals.

A Multi-Disciplinary Approach

Fenwick’s size and practice mix provides our practitioners with broad-based business experience: litigators jump in to resolve problems on corporate deals; licensing and patent prosecution attorneys work on strategy and analysis with litigators. With a well-rounded bench who understand the business context in which our work is applied, we are able to efficiently work with you to develop post-grant proceeding strategies that incorporate an array of factors and potential paths for resolving disputes.

Take Action

For more information on how best to leverage the new post-grant proceeding rules to reduce costs and better extract value from your patent portfolio, contact the Co-Chairs of the Post-Grant Proceedings practice Stuart Meyer (smeyer; +1.650.335.7286), Michael Sacksteder (msacksteder; +1.415.875.2450) or any of our other practitioners in this practice.