Post-Grant Proceedings

Steptoe has significant experience in all types of post-grant proceedings, and this experience affords us the ability to strategically advise clients on the advantages of pursuing one type of review over another.  Patent holders can take advantage of supplemental examinations to strengthen an existing patent.  Patent challengers can engage in:  post-grant review (PGR), inter partes review (IPR), ex parte reexamination, derivation proceedings, and covered business methods (CBM) to attack a patent right in an administrative setting.  Each of these options requires focused consideration of the timing to file the petition, the threshold requirements to be met, the available grounds to assert invalidity, and discovery-relevant options.

The enactment of the America Invents Act (AIA) in 2011 brought several changes to the US patent system, including significant changes to post-grant proceedings.  Since September 16, 2012, post-grant proceedings have been heard by the Patent Trial and Appeal Board (PTAB), and these contested proceedings have taken on features of litigation, with opportunities for limited discovery including document requests and depositions, availability of sanctions, as well as mechanisms for settlement. 

Our post-grant team is well-attuned to the needs of our clients, and can efficiently establish the right path to take in the post-grant environment.  Representing petitioners, we have a particularly strong record of our IPRs being instituted by the PTAB.  Representing patent owners, we have a strong track record of avoiding institution against key claims.  We combine our experience and skill in both patent prosecution and patent litigation to give clients a full service team that can handle any type of post-grant proceeding before the PTAB.  

Representative Matters

  • American Honda Motor Co., Inc. et al v. Intellectual Ventures II LLC (2017), IPR2018-00347, -00348, -00349, -00350 – Steptoe is representing petitioner American Honda Motor Co. Inc. in inter partes review proceedings related to encapsulated motors.
  • Vizio Inc. et al. v. Broadcom Corporation (2017), IPR2018-00013 – Steptoe is representing patent owner Broadcom in an inter partes review proceeding involving a patent related to video compression technology.
  • Panduit Corp. v. Corning Optical Communications LLC (2017), IPR2017-01073, -010374 – Steptoe is representing petitioner in inter partes review proceedings involving patents related to optical fibers.
  • Elysium Health, Inc. v. Trustees of Dartmouth College (2017), IPR2017-01795, -01796 – Steptoe is representing patent owner Trustees of Dartmouth College in inter partes review proceedings involving patents related to nicotinamide riboside kinase compositions.
  • LG Electronics, Inc. v. Broadcom Corporation (2017), IPR2017-01596, -01624, -01637, -01675 – Steptoe is representing patent owner Broadcom in inter partes review proceedings involving patents related to video compression technology.
  • Mylan, Inc. et al. v. MonoSol Rx, LLC (2017), IPR2017-01949 – Steptoe is representing patent owner MonoSol in an inter partes review proceeding involving a patent related to film products and methods of preparation.
  • Dr. Reddy’s Laboratories, Inc. et al. v. MonoSol RX, LLC (2017), IPR2017-01582 – Steptoe is representing patent owner MonoSol in an inter partes review proceeding involving a patent related to rapid dissolve thin film drug delivery compositions.
  • Endo Luxembourg Holding Company S.a.r.l, et al. v. MonoSol RX, LLC (2017), IPR2017-01557 – Steptoe is representing patent owner MonoSol in an inter partes review proceeding involving a patent related to rapid dissolve thin film drug delivery compositions.
  • Mylan, Inc. et al. v. MonoSol Rx, LLC (2017), IPR2017-00200 – Steptoe is representing patent owner MonoSol in an inter partes review proceeding involving a patent related to rapid dissolve thin film drug delivery compositions.
  • LG Electronics, Inc. v. Broadcom Corporation (2017), IPR2017-01544 – Steptoe is representing patent owner Broadcom in an inter partes review proceeding involving a patent related to video compression technology.
  • Hamaton Automotive Technology Co., Ltd., et al. v. Continental Automotive Systems, Inc. (2017), IPR2017-00509, -00508 – Steptoe is representing patent owner Continental in inter partes review proceedings involving patents related to tire pressure monitoring.
  • MonoSol Rx, LLC v. ICOS CORP (2017), IPR2017-00412 – Steptoe is representing petitioner Monosol Rx, in an inter partes review proceeding involving a patent relating to the use of enzyme inhibitors in drug delivery systems.
  • Dr. Reddy’s Laboratories Ltd. v. Monosol Rx, LLC (2016), IPR2016-01111 – Steptoe represented patent owner Monosol Rx in an inter partes review proceeding involving a patent relating to a dissolving film drug delivery system. 
  • Dr. Reddy’s Laboratories Ltd. v. Monosol Rx, LLC (2016), IPR2016-01112 – Steptoe is representing patent owner Monosol Rx in an inter partes review proceeding involving a patent relating to dissolving film products and methods.
  • Acura Pharmaceuticals Inc. et al. v. Purdue Pharma L.P. et al. (2016), IPR2016-00849 – Represented patent owner Purdue Pharma, in an inter partes review proceeding involving a patent relating to abuse resistant pain medications. The matter was settled in July 2016.
  • Realtek Semiconductor Corp v. Andrea Electronics Corporation (2015), IPR2015-01391, -01396, -01395, -01394, -01393, -01392 – Represented petitioner Realtek Semiconductor Corp, in inter partes review proceedings involving five patents relating to audio signal processing. The matter was settled.
  • Medtronic, Inc. v. UAB Research Foundation (2015), IPR2015-01200, -0119 – Represented petitioner, Medtronic Inc., in two inter partes review proceedings involving a medical device patent relating to a surgical tool used to create lesions in body tissues such as the heart. The matter was settled.
  • Nanoco Technologies, Ltd. v. Massachusetts Institute of Technology (2015), IPR2015-00528, 00532 – Represented patent owner Massachusetts Institute of Technology in inter partes review proceedings involving two patents relating to semiconductor nanocrystals (quantum dots) and light emitting diodes (LED).
  • VTech Communications, Inc. v. Spherix Incorporated (2014), IPR2014-01432 – Successfully represented petitioner, VTech Communications, Inc., in an inter partes review proceeding involving a patent relating to intelligent telephones that have the capability to update a local directory from a directory server on an IP network. The Board found all instituted claims invalid.
  • VTech Communications, Inc. v. Spherix Incorporated (2014), IPR2014-01431 – Successfully represented petitioner, VTech Communications, Inc., in an inter partes review proceeding involving a patent relating to a caller identification and phone directory features. The Board found all instituted claims invalid.
  • Hyundai Mobis Co., Ltd., et al. v. Autoliv ASP, Inc. (2014), IPR2014-01006 –  Represented petitioners, Hyundai Mobis Co., Ltd. and Mobis Alabama, LLC, in an inter partes review (IPR) proceeding involving patents on automotive passenger airbag systems, which have been instituted by the USPTO Patent Trial and Appeal Board (PTAB).  The PTAB's final written decision held all contested claims unpatentable. 
  • Hyundai Mobis Co., Ltd., et al. v. Autoliv ASP, Inc. (2014), IPR2014-01005 –  Represented petitioners, Hyundai Mobis Co., Ltd. and Mobis Alabama, LLC, in an inter partes review (IPR) proceeding involving patents on automotive passenger airbag systems, which have been instituted by the USPTO Patent Trial and Appeal Board (PTAB).
  • BioDelivery Sciences International, Inc. v. MonoSol Rx, LLC  (2014), IPR2014-00794 – Successfully represented patent owner, MonoSol Rx, in an inter partes review proceeding involving a patent relating a dissolving film drug delivery system.
  • American Honda Motor Co., Inc v. Vehicle Operation Technologies, LLC (2014), IPR2014-00600, -00601, -00594, -00602, -00603 – Successfully represented petitioner, American Honda Motor Co., Inc., in inter partes review proceedings involving a single patent relating to systems and methods for displaying the operating conditions of a vehicle. The Board instituted all five inter partes review proceedings.
  • Clariant Corporation v. CSP Technologies, Inc (2014), IPR2014-00375 – Representing patent owner, CSP Technologies, in an inter partes review proceeding involving CSP's patent relating to a moisture proof container and lid assembly.
  • American Honda Motor Co., Inc. v. Cruise Control Technologies LLC (2014), IPR2014-00289, -00279, -00280, -00281, -00291 – Successfully represented petitioner, American Honda Motor Co., Inc., in inter partes review proceedings involving a single patent relating to cruise control products and services.  The patent owner filed a preliminary response and a motion for joiner in each of the proceedings.  The Board denied the motion for joinder and instituted all five inter partes review proceedings.
  • Crocus Technology S.A. v. New York University (2014), IPR2014-00047 – Representing petitioner, Crocus Technology, in an inter partes review proceeding involving a patent relating to magnetic memory devices.       
  • Regions Financial Corporation v. Retirement Capital Access Management Company LLC (2014), CBM2014-00012 – Representing petitioner, Regions Financial, in a covered business method patent review proceeding involving a patent relating to a system and method for creating a source of funds based on present value of future retirement payments.
  • BioDelivery Sciences International, Inc. Rx v. MonoSol Rx, LLC (2013), IPR2013-00315, -00316 – Represented patent owner, MonoSol Rx, in two inter partes review proceedings, each involving a different patent owned by MonoSol Rx relating to dissolving medicated film drug delivery system. Both petitions were denied.
  • Ikaria, Inc v. GeNO LLC (2013), IPR2013-00253 – Represented patent owner, GeNO, in an inter partes review proceeding involving GeNO's patent relating a delivery system that converts nitrogen dioxide to nitric oxide.
  • Chi Mei Innolux Corporation v. Semiconductor Energy Laboratory Co., Ltd (2013), IPR2013-00064, -00065, -00066, -00068 – Represented patent owner, SEL, in inter partes review proceedings involving SEL's patents for an electro-optical device and thin film transistor. The matter was settled.
  • Chi Mei Innolux Corporation v. Semiconductor Energy Laboratory Co., Ltd (2013), IPR2013-00028, -00038, -00060 – Represented patent owner, SEL, in inter partes review proceedings involving SEL's patents on a contact structure for electrically conducting lines. The matter was settled.
  • Nissan North America, Inc. v. Collins, et al. (2012), IPR2012-00035, -00037 – Represented petitioner, Nissan, in two inter partes review proceedings, each involving a different patent directed to diamond-like carbon films. Both matters were settled.

Select News & Events

More News »

More Seminars & Events »

Publications

More Publications »