Patent Counsel

Arent Fox's patent law blog examines the latest news, trends, and legal developments in the patent world.

Patent Counsel

Post-Grant Proceedings

A post-grant proceeding is one that refers to a practice before the United States Patent & Trademark Office (USPTO) where a patentee attempts to strengthen an issued patent or a third party challenges the validity of an issued patent after the original prosecution has closed.

Arent Fox’s Post-Grant Proceedings practice group draws on the strength of its patent lawyers and litigators to strategically assist clients with reexaminations, reissues, supplemental examinations, and the new procedures under the America Invents Act (AIA) to challenge the validity of issued patents using Post Grant Review (PGR), Inter-Partes Review (IPR) and Covered Business Method (CBM) procedures. The AIA of 2011 ushered in a number of new rules regarding how issued patents can be reviewed or challenged by the USPTO. These changes include, for example:

  • As of September 16, 2012, Inter-Partes reexaminations are replaced by Inter-PartesReview.
  • The Board of Patent Appeals and Interferences has been replaced with the Patent Trials and Appeals Board (PTAB) which utilizes administrative law judges to handle PGRs, IPRs, CBMs, and derivation proceedings.
  • The new post-grant procedures such as PGRs and IPRs have expedited schedules by statute to conclude the review of patents in no later than 12-18 months.
  • Post-grant procedures allow for limited discovery, document productions, depositions and trials on validity, with appeals taken directly to the US Court of Appeals for the Federal Circuit (the Federal Circuit).
  • Post-grant procedures can be settled any time during the proceedings, allowing clients greater leverage when using the post-grant procedures when faced with litigation.

Arent Fox’s attorneys can assist clients in strategically planning for defensive patent litigation or to defend against attacks on the validity of their patents by carefully navigating these new rules and procedures.

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Recent PTAB Decisions on Motions for Additional Discovery

On a motion for additional discovery, various factors inform the Board’s determination of whether the discovery requested meets the standard of “necessary in the interest of justice” under 35 U.S.C. § 316(a)(5), including the factors set forth in Garmin Int’l., Inc. v. Patent of Cuozzo Speed Techs, LLC, Case IPR2012-00001 (PTAB Mar. 5, 2013) (Paper No. 26) slip. op.

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Joinder Decisions

An inter partes review challenging the validity of a patent is normally barred after one year from service of a complaint. However, 35 USC § 315(b) indicates that the time limit doesn’t apply to a motion to join, which has been interpreted to allow filing an IPR after one year with a motion to join the other IPR. The window for doing this is within one month of institution of the IPR to be joined (37 CFR § 42.122(b)). This situation often occurs in multicase, multidefendant litigation.

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USPTO’s Decision to Not Institute Inter Partes Review of a Patent is Final and Nonappealable

Addressing 35 U.S.C. § 314(d), the US Court of Appeals for the Federal Circuit (the Federal Circuit) determined that, in recent precedential orders in inter partes review proceedings, the Federal Circuit does not have authority to hear appeals of the United States Patent & Trademark Office (USPTO) decisions to not institute inter partes review of an issued patent. St. Jude Medical v. Volcano Corporation (Fed. Cir. Order, April 22, 2014) (Prost, O’Malley, Taranto, J.).

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Arent Fox LLP, founded in 1942, is internationally recognized in core practice areas where business and government intersect. With more than 350 lawyers, the firm provides strategic legal counsel and multidisciplinary solutions to clients that range from Fortune 500 corporations to trade associations. The firm has offices in Los Angeles, New York, San Francisco, and Washington, DC.