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Patent Post-Grant Proceedings

Miles & Stockbridge’s Post-Grant Team represents clients in proceedings before the Patent Trial and Appeal Board (PTAB) and the Court of Appeals for the Federal Circuit (CAFC). The team is well-versed in Patent Office litigation, including inter partes review (IPR), covered business method review (CBM), post-grant review (PGR) and reexamination proceedings. With the ability to support clients in district court, the CAFC and the PTAB, we are well-positioned to help clients address the unique issues presented by the procedures for challenging U.S. patents under the America Invents Act (AIA).

Our Post-Grant Team typically works in close collaboration with the client’s team to develop and implement a post-grant strategy designed to be efficient and effective. We focus on quality service that leads to excellent results, rather than the quantity of cases processed. We understand our clients’ needs to manage risks and control costs, and our experience in legal project management allows us to develop a strategic plan to achieve these ends.

In light of the changing interpretations of the AIA, we recently defended a client’s interests in a concurrent two-tiered approach that included both the district court and the PTAB. The district court granted our motion to dismiss based on lack of patentable subject matter, and the PTAB granted our petition to institute trial on the asserted patent in a corresponding IPR.

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 Based on the team’s arguments, the claim was found unpatentable and withdrawn.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

A majority of our Post-Grant Team lawyers have advanced technical degrees and management-level engineering, business and research backgrounds. Currently, the group is engaged in a wide range of technologies, including communications, computer systems, computer software, electronics and electronic devices, semiconductors, medical devices, metallurgy, packaging materials, mechanical systems, biotechnology, pharmaceuticals, biologics, and associated methods of manufacture and use.