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Patent Post Grant Proceedings

AOL - Patent Post-Grant Proceedings

At  Vinson & Elkins, our Patent Post Grant Proceedings practice leverages our lawyers’ extensive experience in patent litigation with our Patent Prosecution practice before the United States Patent and Trademark Office (USPTO), positioning us to represent our clients in post grant proceedings. Whether the matter involves an AIA proceeding (e.g., Covered Business Method Review (CBM), inter partes review (IPR), or a Post Grant Review) or an ex parte re-examination, our deep bench of patent litigators helps create successful strategies to use before the Patent Trial and Appeal Board (PTAB), as well as any parallel litigation.

Combined with our practical industry experience and technical knowledge, our extensive practice before the USPTO, PTAB, U.S. district courts, and the Federal Circuit positions V&E to handle virtually any kind of patent challenge.  In addition, the majority of our IP lawyers hold a technical degree in engineering, medicine, and/or the sciences, and thus have the technical knowledge necessary to handle a vast array of post grant proceedings.  We have 15 lawyers and 1 patent agent registered to practice before the USPTO.  Since the statutory creation of AIA proceedings in 2011, our lawyers have handled 45 AIA proceedings, including 43 IPRs, representing both petitioners and patent owners.

Experience Highlights

  • (PTAB) – Represented a communications products company as petitioner in four IPR proceedings challenging patents relating to text assisted telephony; claims were held unpatentable 

  • (D. Del.); (PTAB) — Defended the world’s leading PC provider against infringement claims relating to communicating voice and data over a cellular network; succeeded in instituting inter partes review of all asserted claims; after we obtained a favorable claim construction, the plaintiffs stipulated to non-infringement; in exchange for withdrawing the instituted petitions for inter partes review, plaintiffs agreed to waive their appeal rights, broadly licensed the patents at no cost to our client, and dismissed all claims with prejudice 

  • (PTAB); (E.D. Tex.) — Represented the world’s largest personal computer company in three inter partes review petitions and district court litigation relating to keyboard functionality; following a favorable claim construction ruling in the district court case and filing of the petitions at the Patent Trial and Appeal Board, the case settled favorably 

  • (PTAB); (S.D. Fla); (E.D.N.C.) — Represented the world’s largest personal computer company in inter partes review petition and district court litigation regarding server technology; following filing of the petitions at the Patent Trial and Appeal Board, the case settled favorably

  • (USPTO) – Represented a research institution in several petitions for Inter Partes Review related to semiconductor materials manufacturing technology, each of which was instituted on all proposed grounds

  • (PTAB) – Prepared IPR petitions for a medical device distributor as part of a patent infringement litigation brought by a competitor 

  • (PTAB) – Represented a leading Chinese manufacturer of motors in two inter partes review (IPR) matters challenging patents relating to motors used in HVAC systems

  • (PTAB) – Represented a multinational technology manufacturer and patent owner in multiple related IPRs filed in connection with a licensing-out project and pending negotiations, including developing and executing strategies and coordinating between concurrent proceedings in China and the U.S.

  • (D.Del.); (PTAB) — Defending the world’s largest PC manufacturer in patent litigation related to its laptop products, including the filing of an inter partes review petition

  • (E.D. Tex.); (N.D. Cal.); (S.D. Cal.); (Fed. Cir.); (PTAB) — Defending a leading wireless handset maker in several cases relating to navigation technology; after a favorable claim construction ruling in the district court case, the case settled favorably

  • (PTAB); (E.D. Tex.) — Defended a global telecommunications provider against patent claims relating to communication standards in two inter partes review petitions and district court litigation

  • (PTAB) — Represented patent owner in three inter partes review petitions before the USPTO regarding whether patent claims related to hardware-based, real time encryption are valid

  • (E.D. Tex.) — Represented a large group of online retailers accused of infringement of a patent related to real-time transactions occurring over the Web based on a variety of web-based transactions, including the online purchase of products and/or services using the retailers’ e-commerce platforms; case successfully resolved after the filing of a CBM petition

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