Honigman’s Patent Office Trial team brings a creative, innovative and value-based approach to challenging and defending the validity of issued patents before the Patent Trial and Appeal Board (PTAB).

Inter partes reviews (IPR) and other post-grant proceedings before the U.S. Patent & Trademark Office have become an integral part of any patent litigation action.  They are also a sharp tool for clients engaged in pre-litigation and other freedom-to-operate scenarios.  A successful patent litigation outcome—and more generally, a successful IP defense and enforcement strategy—requires adept navigation of PTAB practice. 

Honigman’s team brings exactly that.  We’ve handled numerous matters in the PTAB, including some of the very first IPR proceedings. We are litigation attorneys with engineering and scientific degrees and training, and have handled PTAB trials across various technical areas.  We have delivered case-defining success to our clients, representing both Patent Owners and Patent Challengers. 

Our team includes top-ranked trial lawyers with a record of successful outcomes at the PTAB and in related district court and ITC actions.  Our IPR practice also draws on the strengths of our talented patent prosecutors, who bring added technical expertise as well as an intricate understanding of Patent Office procedures and patent procurement.  Combined, we blend the right litigation and prosecution expertise to deliver outstanding results.

Our team is also skilled in aligning successful district court or ITC litigation strategy with a parallel IPR proceeding, and in coordinating an IPR strategy among various parties.  Finally, our team includes appellate advocates seasoned in defending a successful PTAB result on appeal at the Court of Appeals for the Federal Circuit. 

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Representative Matters

  • Represented a branded pharmaceutical company in the first-ever successful defense of a pharmaceutical patent in an AIA review; after the oral hearing, the PTAB ruled that a generic challenger had not proven that claims in three related patents covering controlled release formulations were unpatentable for obviousness over the prior art
  • Represented a branded pharmaceutical company in an inter partes review where the validity of a patent covering an anti-nausea drug patent was challenged by a generic Abbreviated New Drug Application (ANDA) filer; after filing of the preliminary patent owner response, the PTAB decided not to review the patent
  • Representing a medical device company in eight inter partes reviews involving client’s patents covering medical-imaging technology

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