Inter partes review (IPR) and other post-grant proceedings before the U.S. Patent & Trademark Office have become an integral part of any patent litigation action, and a successful patent litigation outcome requires deep knowledge of IPR strategy.  Honigman’s IP litigation attorneys possess that knowledge.  We’ve handled numerous matters in the Patent Trial and Appeal Board (PTAB), including some of the very first IPR proceedings before the PTAB. Honigman attorneys have been involved in more than a 150 IPR proceedings concerning various technical areas, giving us first-hand knowledge of the most effective strategies. 

Our team includes top-ranked trial lawyers with jury and bench experience and a record of successful outcomes who are also registered to practice before the Patent Office in post-grant proceedings.  These attorneys possess the deep technical knowledge necessary to handle complex cases before the PTAB.  Our litigators who appear before the PTAB are also skilled in aligning a successful district court or ITC litigation strategy with a parallel IPR proceeding.  We have multiple attorneys who have first-chaired IPR proceedings, and argued before a panel of PTAB judges.

In addition to our litigators, our IPR practice draws on the strengths of our talented patent prosecutors, who possess not only the deep technical expertise to provide support on an IPR, but also an intricate understanding of Patent Office procedures and patent procurement.  Drawing on the separate skillsets of our litigators and prosecutors allows Honigman to zealously advocate for our clients and successfully navigate IPR proceedings to achieve successful results.

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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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