Post Grant Proceedings
Post-grant proceedings are specialized proceedings before the Patent Trial & Appeal Board (PTAB) of the United States Patent & Trademark Office (USPTO) through which issued U.S. patent claims may be challenged after a patent has already been granted. These proceedings allow a petitioner to seek cancellation or narrowing of issued patent claims based on statutory grounds of unpatentability, and they allow patent owners an opportunity to defend the validity of their patent rights in an accelerated administrative forum.
The primary USPTO post-grant proceedings include inter partes review (IPR), post-grant review (PGR), and ex parte reexamination. Each of these proceedings has different filing requirements, scope limitations, evidentiary standards, and strategic consequences.
At Barceló, Harrison & Walker, LLP, we have extensive experience representing both petitioners and patent owners in USPTO post-grant proceedings. Our attorneys understand the PTAB’s procedural rules, technical requirements, and litigation-like motion practice. We assist clients with all phases of post-grant proceedings, including initial strategic evaluation, petition drafting, patent owner responses, expert declarations, depositions, oral argument, and appeal.
Post-grant proceedings are often initiated in parallel with district court patent litigation, and they frequently play a decisive role in determining whether asserted patent claims survive long enough to support injunctive relief, licensing leverage, or damages claims. Because these proceedings move quickly and can have long-term estoppel consequences, they require careful planning and experienced counsel.
Inter Partes Review (IPR)
Inter partes review (IPR) is the most common and widely used post-grant proceeding before the PTAB. It is an adversarial trial proceeding in which a petitioner challenges the patentability of one or more claims of an issued U.S. patent, based only on prior art patents and printed publications (i.e., under 35 U.S.C. §§ 102 and 103).
Unlike patent litigation in federal district court, the PTAB does not presume the patent is valid, and the burden of proof is only a preponderance of the evidence. These procedural differences often make IPR a powerful mechanism for challenging patent claims that may not have been properly allowed during examination.
An IPR petition may generally be filed as early as nine months after a patent issues, and must be filed within twelve months of service of a district court complaint alleging infringement.
The patent owner may respond initially by optionally filing a preliminary response to oppose institution. If the PTAB institutes trial, the patent owner must file a full response addressing the merits of the petition’s unpatentability arguments.
Upon conclusion of an IPR trial, the PTAB issues a final written decision. If the petitioner loses, the petitioner may face estoppel preventing it from later raising in district court any invalidity grounds that were raised or could have been raised in the IPR proceeding. Because estoppel can significantly shape long-term litigation strategy, careful evaluation of the prior art record is essential before initiating an IPR.
Our firm has successfully represented clients in IPR proceedings and has defended favorable PTAB outcomes in subsequent appeals.
Post Grant Review (PGR)
Post-grant review (PGR) is an adversarial PTAB proceeding that is similar in structure to inter partes review, but broader in scope. A PGR petitioner may challenge patentability not only over patents and printed publications, but also based on additional grounds such as indefiniteness, lack of enablement, and ineligible subject matter.
PGR is available only for recently issued patents, and the petition must be filed within nine months of the patent’s issuance. Because of this limited filing window, PGR is most often used strategically when a newly issued patent is believed to present immediate business risk.
As with IPR proceedings, the PTAB does not presume the patent is valid, and the evidentiary burden is preponderance of the evidence.
The patent owner may file a preliminary response to oppose institution, and must file a full patent owner response if trial is instituted.
Upon conclusion of a PGR trial, the PTAB issues a final written decision. The petitioner may then be estopped from raising in district court any invalidity grounds that were raised or could have been raised in the PGR. Because PGR permits broader grounds for challenge than IPR, the scope of potential estoppel is also broader.
BHW attorneys are experienced in representing clients in PGR proceedings, including petitions, responses, expert declarations and depositions, evidentiary disputes, and oral argument.
Ex Parte Reexamination
Ex parte reexamination is a non-adversarial USPTO proceeding in which a third party may request that an issued U.S. patent be reexamined by a USPTO patent examiner to determine whether the claims are patentable in view of prior patents or printed publications.
A request for ex parte reexamination will be granted only if it raises a substantial new question of patentability. Unlike IPR and PGR proceedings, ex parte reexamination does not proceed as an adversarial trial between two parties. After filing the initial request, the third-party requestor typically has no further involvement. Instead, the proceeding continues primarily between the examiner and the patent owner.
During reexamination, the patent owner may amend claims, but amendments generally must be non-broadening. The proceeding may result in a reexamination certificate that upholds, modifies, or cancels patent claims entirely.
Unlike IPR and PGR proceedings, ex parte reexamination does not typically create estoppel risk for the requestor. For this reason, ex parte reexamination may be strategically attractive in certain cases, particularly where a party wishes to challenge patent claims without committing to the litigation-like structure and estoppel risks of IPR or PGR.
Strategic Considerations for Post Grant Proceedings
Post-grant proceedings can provide powerful opportunities to challenge or defend patent claims, but the choice of proceeding and timing must be made strategically.
Barceló, Harrison & Walker, LLP can competently represent either petitioners or patent owners in all types of PTAB post-grant proceedings. Often patent owners have no choice but to defend their patent rights when challenged. However, petitioners who are considering initiating post-grant proceedings may have several options, and the best approach often depends on the client’s objectives, budget, timing constraints, and the nature of the available invalidity evidence.
There are several strategic reasons why a client may elect to pursue a PTAB post-grant proceeding rather than, or in addition to, invalidity arguments in federal district court.
Accused Infringers May Obtain a More Favorable Forum for Invalidity Arguments
In many patent infringement lawsuits, the accused infringer believes the asserted patent claims are invalid because the USPTO did not consider key prior art during examination.
A post-grant proceeding before the PTAB can provide a second and potentially more favorable forum to challenge validity. The PTAB does not presume validity, and unpatentability must be proven only by a preponderance of the evidence rather than by clear and convincing evidence as required in federal district court.
The PTAB is also comprised of technically trained administrative patent judges, which may provide a favorable forum for evaluating claim construction and technical teachings in the prior art.
Two Forums May Be Available for Different Invalidity Theories
In many cases, an accused infringer may pursue an IPR to challenge patent claims based on prior patents and printed publications, while preserving other invalidity defenses for district court litigation, such as:
invalidity based on prior products
indefiniteness
lack of enablement
inequitable conduct
This can provide two independent paths to patent claim cancellation or narrowing.
Stays and Reduced Litigation Costs
When a post-grant proceeding is instituted early enough, the accused infringer may seek a stay of the district court litigation pending the PTAB outcome. If granted, this can reduce litigation expenses and delay costly discovery and trial preparation.
Post-grant proceedings are often significantly less expensive than full patent litigation through trial. For many defendants, a favorable PTAB result can eliminate or substantially narrow the litigation.
Faster Resolution
In certain situations, speed is critical. For example, a pending merger, acquisition, licensing deal, or product launch may require a faster resolution than district court litigation can provide.
The PTAB is required to reach a final decision in a post-grant trial within a defined statutory timeline, often resulting in earlier resolution than district court proceedings.
Ex Parte or Inter Partes?
One disadvantage of ex parte reexamination is that the requestor loses the ability to participate after filing the request. The patent owner continues to argue directly with the examiner without active opposition.
However, the absence of estoppel risk may make ex parte reexamination attractive in some cases.
By contrast, IPR and PGR proceedings provide a full adversarial trial structure with briefing, expert testimony, depositions, and oral argument. They also provide greater opportunity to directly challenge patent claims, but they carry the risk of estoppel after a final written decision.
The attorneys at Barceló, Harrison & Walker, LLP are experienced in helping clients decide whether to pursue IPR, PGR, or ex parte reexamination, and in assessing the strategic risks and benefits of each option.
BHW IP Law Post Grant Proceedings Services
Barceló, Harrison & Walker, LLP attorneys are experienced and competent in representing both petitioners and patent owners in PTAB post-grant proceedings. We can knowledgeably and effectively handle all aspects of representation, including:
strategic evaluation of whether to pursue PTAB proceedings
drafting and filing IPR and PGR petitions
preparing patent owner preliminary responses
preparing patent owner responses and expert declarations
preparing petitioner replies and rebuttal declarations
conducting and defending expert depositions
evidentiary objections and motions to exclude
oral argument preparation and presentation
coordinating PTAB proceedings with district court litigation strategy
defending favorable PTAB outcomes in appeals
Because inter partes review is the most commonly used post-grant proceeding, we regularly assist clients in developing IPR strategies that align with broader litigation objectives, including potential stays, settlement leverage, and long-term estoppel considerations.
Get Guidance from Intellectual Property Experts
If you are considering filing a post-grant proceeding before the PTAB, or if your patent is being challenged in an IPR, PGR, or reexamination, we can help you evaluate your options and develop an effective strategy.
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