With significant experience in all types of post-grant proceedings before the United States Patent and Trade Mark Office (USPTO), Steptoe's lawyers strategically advise clients on the advantages and disadvantages of pursuing one type of review over another, including:
- For Patent Holders
- Supplemental examinations to strengthen an existing patent
- For Patent Challengers
- Post-grant reviews (PGRs)
- Inter partes reviews (IPRs)
- Ex parte reexaminations
- Derivation proceedings
We guide clients through important strategic considerations associated with each option like the timing of filing the petition, the threshold requirements to be met, the available invalidity grounds, and the interplay of post-grant proceedings with other potential litigation.
Since September 2012, post-grant proceedings have been heard by the Patent Trial and Appeal Board (PTAB). These contested proceedings have taken on features of litigation, with opportunities for limited discovery including document requests and depositions, availability of sanctions, and mechanisms for settlement. Representing petitioners, we boast a particularly strong record of convincing the PTAB to institute IPRs. Representing patent owners, we have consistently helped clients avoid institution against key claims. Our experience and skill in both patent prosecution and patent litigation empowers clients by providing a full service team able to handle any type of post-grant proceeding before the PTAB.
Noteworthy
- Asian Legal Business, China Law Awards, Shortlisted, Intellectual Property Law Firm of the Year – International (2020-2024)
- Asian Legal Business, China IP Rankings, Patents, Tier 1 International Firm (2021, 2022)
- Chambers USA, Intellectual Property: Patent, New York (2022-2024)
- China Business Law Journal, China Business Law Award: IP (Patent) (2018-2024)
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China Law & Practice, International Firm of the Year: Intellectual Property Award (2024, 2020); Shortlisted (2021-2022)
- IAM 1000, United States: DC Metro Area, Patent Litigation, Bronze (2019-2024)
- IAM 1000, United States: New York, Patent Prosecution, Recommended (2019-2024)
- IAM 1000, United States: New York, Patent Litigation, Bronze (2019-2024)
- IAM 1000, United States: Illinois, Patent Litigation, Silver (2019-2024)
Representative Matters
- Representing Express Mobile as it asserts several of its website design and publishing patents against Shopify, Web.com, GoDaddy, Wix, and Adobe for their sales of wysiwyg (what you see is what you get) website building tools. These are important cases relating to ground breaking web development technology against the largest web design and development companies in the world. Our representation has also included 25 separate IPRs.
- Representing Corrigent Corporation as it asserts several of its patents against Dell Technologies, Arista Networks, Inc., and Cisco Systems. These are important cases relating to significant developments and advancements in computer networking technology. Our representation has also included nine separate IPRs, including successfully arguing for denial of institution several IPRs and obtaining affirmance of claims in several final written decisions.
- Represented Panduit as lead counsel in numerous district court, ITC, IPR and US Court of Appeals for the Federal Circuit (CAFC) proceedings against Corning. Through Steptoe’s efforts, Panduit successfully resolved all matters between the parties and reached a favorable settlement. These cases involved fiber optic equipment and were of the highest importance, given that Panduit is a leading manufacturer in the area.
- Representing Fendgo in a patent infringement case against Samsung related to phone safety features. The patented technology relates to important new mobile phone features that capture location, video, and audio information and send to an emergency contact when a panic button is triggered. We are also representing Fendgo related to two IPRs that Samsung filed.
- Represented American Axle in a multi-patent infringement suit against one of its competitors involving automotive drive line noise and vibration technology. The Federal Circuit Court of Appeals vacated and remanded an important case regarding patent eligibility. On remand we won summary judgment that the patent was patent eligible. After a nine year battle, the case finally proceeded to trial where a jury delivered a verdict in favor of our client on all issues.
- Represented patent owner Broadcom in multiple IPR proceedings related to global positioning systems, multi-standard video decoders, and various other technologies.
- Represented VTech in a five-patent infringement suit involving telecommunications products. Successfully resolved all claims resulting from the sale of Nortel’s patent portfolio to Rockstar Consortium and Spherix, including invalidating all instituted claims from multiple IPR proceedings.
- Defended Realtek Semiconductor Corp. in a multi-patent case brought by Andrea Electronics at the ITC and the Eastern District of New York involving five audio processing patents. After filing six IPR petitions, the case was settled favorably for Realtek.
News & Publications
Media Mentions
May 13, 2025
Press Releases
Steptoe Secures Significant Damages Award on Behalf of Judge Michael Fitzpatrick from MSPB
May 5, 2025
Press Releases
Steptoe Receives China Law & Practice Firm of the Year Award – Intellectual Property
February 14, 2025
Publications
Director Vidal Addresses Serial IPR Petitions
PTAB Bar Association Appellate Year in Review 2024
January 2025
Publications
Inherency and Expectation: Federal Circuit Charts New Path in Obviousness Analysis
PTAB Bar Association Appellate Year in Review 2024
January 2025
By: Lawrence Kass
Publications
Fed. Circ. Inherency Ruling Refines Obviousness Framework
Law360
January 29, 2025
By: Lawrence Kass
Press Releases
Vishal Gupta Honored with LMG Life Sciences' General Patent Litigator of the Year (New York) Award
September 6, 2024
Publications
FRAND Litigation in an Evolving Technological and Global Political Environment
ABA Landslide Magazine
July 11, 2024
By: Katherine D. Cappaert, Christopher Suarez, Joseph F. Ecker