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 Northern Stamping in IPR win finding all challenged claims concerning hitch mount systems unpatentable. Convinced PTAB to deny Patent Owner’s motion to amend as well. IPR2021-01411.
  • Represented auto supplier in IPR win finding all challenged claims concerning trailer brake systems unpatentable. Case involved unique issues concerning conception and reduction to practice. Successfully defended outcome on appeal at the Federal Circuit.
  • Represented auto supplier Patent Owner in IPR concerning rear-view and side mirrors, upholding key challenged claims as not unpatentable.
  • Served as lead counsel for a Fortune 500 manufacturer and a Fortune 500 pharmaceutical company in two IPR proceedings. Achieved a complete victory resulting in the invalidation of all challenged patent claims directed to a drug delivery device, and the dismissal with prejudice of a related patent infringement lawsuit.  

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