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Patent Post-Grant Proceedings

Miles & Stockbridge’s growing Intellectual Property & Technology Group includes 21 registered patent lawyers.  Our Post-Grant Team, which is led by our former Administrative Patent Judges (APJs) of the United States Patent and Trademark Office (USPTO), brings unique experience and perspective to one of the newest areas of patent law practice.  

Our team’s lawyers have advanced technical degrees and management-level engineering and research backgrounds.  Specifically, seven are former USPTO patent examiners, three have PhDs, eight have Masters of Engineering degrees and one is a medical doctor (M.D.).  Currently, the group is engaged in a wide range of technologies, including computer systems, computer software, electronic devices, semiconductors, medical devices, metallurgy, packaging materials, mechanical systems, agricultural chemistry, polymer chemistry, small molecule chemistry, genetic engineering, biotechnology, pharmaceuticals, biologics, and associated methods of manufacture and use.

Our Post-Grant Team represents clients in inter partes review, reexaminations and interferences and has handled hundreds of post-grant proceedings, both as counsel and as APJs. With two former APJs at the helm, we are well-positioned to help clients address the unique issues presented by the new procedures for challenging U.S. patents under the America Invents Act (AIA). We provide clients with unique insight to the PTAB’s culture and rules and a nuanced understanding of how to present cases in the fast-paced, post-grant system.

Miles & Stockbridge is regularly selected by other law firms, many in the AmLaw 100, to handle or consult on inter partes matters for their clients.  

Moreover, our Post-Grant Team has given highly acclaimed CLE presentations on inter partes review to various organizations including Inside Counsel SuperConference, All Ohio Annual Intellectual Property Conference, American Intellectual Property Law Association, and Fordham University IP Summit.  The Team’s presentations resulted in favorable press coverage and further invitations from in-house counsel to speak.

We represent clients in inter partes reviews, reexaminations and interferences.  Our clients enjoy the collective experience of our management of over 200 post-grant proceedings.  

Our former PTAB judges are regularly called on to testify in federal court as expert witnesses on post-grant procedures.  Their testimony has helped plaintiffs secure hundreds of millions in patent infringement damages, and has helped defendants win dismissals.

We also represent clients in patent infringement lawsuits.  In a recent case before the U.S. District Court for the Central District of California, Miles & Stockbridge represented the defendants.  In parallel, our Post-Grant Team successfully challenged the only patent claim originally asserted.  Based on the team’s arguments, the claim was subjected to final rejection and withdrawn.  We used our successful post-grant result to procure summary judgment of no willful infringement from the Court.

We understand our clients’ needs to manage risks and control costs.  Our experience and training in legal project management allows us to develop a strategic plan and structure for the management and presentation of post-grant cases.