Post Grant Review Proceedings

Intellectual property can be vulnerable throughout its lifecycle. Our team is there every step of the way. For post-grant challenges, you can trust Alston & Bird to handle complicated matters under inter partes review (IPR) and post-grant review (PGR) proceedings.

What makes us different from other firms with post-grant practices? Our team is a hybrid of both patent prosecutors and IP trial lawyers, a seamless blend of professionals with the right experience and background to guide you to the right results. Combined with our proficiency in technical and scientific subjects and knowledge of your business, we can solve even the toughest problems.

On one hand, you benefit from the experience of our patent lawyers, agents and specialists, who help develop a strategy for protecting your IP and prepare and file patent applications with the U.S. Patent and Trademark Office (USPTO) and the Patent Trial and Appeal Board (PTAB).

You’re also guided by dedicated IP litigators who have represented plaintiffs and defendants in federal and state courts across the country, before the Federal Circuit, other regional circuit courts and the International Trade Commission (ITC).

When we represent you in post-grant proceedings—including IPRs, PGRs and reexaminations, derivations and interferences—we’re bringing all of these skills to the table. We guide you through these litigation-like procedures, including discovery, expert declarations, depositions and oral hearings.

In addition, we’re often called upon and ready and able to represent you in any parallel litigation. We often handle post-grant proceedings in cases involving co-pending complex litigation in district courts and before the ITC.

• As petitioner’s counsel, Alston & Bird used IPR and CBM proceedings as a mechanism for disrupting co-pending litigation and asserting pressure on patent owners, especially patent owners that are nonpracticing entities.
• Alston & Bird’s teams have investigated and argued statutory bar issues in IPR proceedings, addressing issues involving prior complaint dismissals, successor-in-interest eligibility, subsidiary and customer suits, and indemnity agreements on behalf of IPR and CBM petitioners.
• Alston & Bird has a well-developed practice for filing an IPR as a means to stay co-pending USPTO proceedings being used by a patent owner to “whitewash” prior art.
• Alston & Bird’s post-grant teams have aided patent owners by using International Trade Commission proceedings to gain leverage and reduce the sting of multiple IPR petitions.
• Alston & Bird’s post-grant teams have experience and proficiency in an array of subject areas, such as data communications, image sensors, airbag technology, sonar technology, image processing, rare earth magnets, laminates, medical devices, food and vitamin preparations, and gas-fired combustors.
• Alston & Bird is one of the few firms that has successfully instituted an IPR proceeding against a design patent.