Post Grant Proceedings

Since its inception in 1999, the inter partes reexamination procedure has been a boon to patent challengers. Since the 2011 enactment of the America Invents Act (AIA), the reexamination landscape has again been altered, and our team is on the forefront of this new framework.

The AIA adds procedures for post-grant review, inter partes review and supplemental examination.

Post-Grant Review. Post-grant review provides a high-speed option for challenging the validity of a patent shortly after it issues. A unique aspect of this process, and certainly one that legal counsel and businesses must consider, is that post-grant review petitioners are estopped from raising with courts, the International Trade Commission (ITC) or the USPTO “any ground that petitioner raised or reasonably could have raised during the review”—raising the bar for the need to consult with an experienced patent team. 

Inter Partes Reexamination/Review. The inter partes reexamination was replaced by inter partes review in September 2012. The new inter partes review proceeding has time limits on filing when the patent is currently in litigation, which can lead to “enactment defendants” losing their option to challenge the patent at the USPTO. The inter partes review also provides limited options for discovery, making this proceeding a hybrid between patent prosecution and litigation. 

Supplemental Examination. The AIA permits parties to attempt to avoid or purge potential inequitable conduct claims by utilizing the supplemental examination procedure described in new 35 U.S.C. § 257. There are exceptions to this procedure.

To be most effective, companies taking advantage of the new AIA procedures need lawyers with both patent prosecution experience representing companies before the USPTO and patent litigation experience dealing with discovery and parallel litigation matters. The patent practitioners at Alston & Bird are uniquely qualified to provide a one-stop resource for full-spectrum patent strategy.

• We represent InVue Security Products Inc. in the following inter partes review proceedings:
  • Case No. IPR2014-00457 involving patent number 7,737,843 entitled “Programmable alarm module and system for protecting merchandise”.
  • Case No. IPR2013-00122 involving patent number 7,909,641 entitled “Cable management systems for product display”.
• Case No. IPR2013-00096. We represent Honeywell International Inc. in this inter partes review proceeding involving patent number 5,590,642 entitled “Control methods and apparatus for gas-fired combusters”.
• Case No. IPR2013-00072. We represent Toys R Us Inc. in this inter partes review proceeding involving design patent number D617,465 entitled “Drinking cup”.
• Case No. IPR2013-00269. We represent Lombard Medical Technologies PLC in this inter partes review proceeding involving patent number 6,306,141 entitled “Medical devices incorporating SIM alloy elements”.
• We represent Merck & Cie and South Alabama Medical Science Foundation in the following inter partes review proceedings:
  • Case No. IPS2013-00117 involving patent number 6,011,040 entitled “Use of tetrahydrofolates in natural stereoisomeric form for the production of a pharmaceutical preparation suitable for influencing the homocysteine level, particularly for assisting the remethylation of homocysteine”
  • Case No. IPR2013-00116 involving patent number 5,997,915 entitled “Compositions for human and animal consumption containing reduced folates and methods for making and using same”
  • Case No. IPR 2013-00118 involving patent number 6,673,381 entitled “Uses for food and vitamin preparations containing the natural isomer of reduced folates”
  • Case No. IPR2013-00119 involving patent number 7,172,778 entitled “Food and vitamin preparations containing the natural isomer of reduced folates”
• We represent Navico Inc. in the following inter partes review proceedings:
  • Case No. IPR2013-00355 involving patent number 8,305,840 entitled “Downscan imaging sonar”
  • Case No. IPR2013-00496 involving patent number 8,305,840 entitled “Downscan imaging sonar”
  • Case No. IPR2013-00497 involving patent number 8,305,840 entitled “Downscan imaging sonar”
• We represent Sealed Air Corporation in the following inter partes review proceedings:
  • Case No. IPR2013-00555 involving patent number RE38,745 entitled “Laminate film-foam flooring composition”
  • Case No. IPR2013-00556 involving patent number 6,607,803 entitled “Laminate film-foam flooring composition”
  • Case No. IPR2013-00557 involving patent number 7,047,705 entitled “Laminate film-foam flooring composition”
  • Case No. IPR2013-00558 involving patent number 7,047,705 entitled “Laminate film-foam flooring composition”