Inter Partes Review, Post-Grant Review & Other PTO Proceedings

Harness Dickey delivers the experience, insight and resourcefulness needed to gain the edge when guiding patent owners and challengers through Inter Partes Reviews (IPR), Post Grant Reviews (PGR) and other PTO proceedings. Building upon decades of prosecuting and defending reexaminations, the Firm is a pioneer in designing and executing effective strategies for the new world of post grant patent validity challenges. In fact, Harness Dickey was counsel of record for the Patent Owner in two of the first three Final Written Decisions where one or more claims were upheld by the Patent Trial and Appeal Board.

Since the time that IPRs and PGRs were introduced in 2012, Harness Dickey has become a recognized leader in these proceedings. Harness Dickey publishes a respected and often cited Report on IPR-PGR practice, which includes many of the over 100 statistics we track regarding these proceedings. Our attorneys closely monitor each decision from the Board to identify changes in trends and strategy given the infancy of IPR and PGR.

We draw upon our proven and undeniable strength in patent dispute resolution to effectively navigate our clients through the complex and variable strategic issues involved in balancing IPR and PGR proceedings with co-pending patent litigation. Our strategy is multi-dimensional when it comes to Post-Grant Review (PGR), Inter Partes Review (IPR), Covered Business Method (CBM) and Derivation proceedings.

When we pursue a challenge, we offer far more than just an immediate and aggressive attempt at invalidation. We establish our client’s footing in multiple, on-the-record positions that draw attention to important distinctions or contradictions that highlight our position. We leverage post grant proceedings in support of pending litigation stays, as well as gain all possible advantage through negotiation and potential settlement.

Devising a clear course of action at the onset of a matter allows us to continuously evaluate both litigation and PTO positions. Because we fully understand all aspects of the strategic interplay of IPR and PGR proceedings with Federal Court litigation, as well as all aspects of Patent Office procedure, we are able to identify and capitalize on the weakness and oversights of many of our opponents who are less well-versed in these intricate areas of the law. We are particularly adept at steering clear of pitfalls that might create opportunity for our opponent.

We also recognize that post-grant proceedings are not limited to use as a counter-punch related to co-pending litigation. Our clients have effectively used IPR as part of a patent clearance strategy, to eliminate blocking patents that would otherwise pose as an obstacle to entry into a particular market. Even when litigation has not been threatened, IPR and PGR can and have served as valuable tools to open new markets and generate market share.

Our counsel is honed, focused and useful. IPR, PGR and other PTO proceedings are not the answer to every problem. Harness Dickey understands when these proceedings should or should not be integrated into the overall dispute resolution plan. We work with our clients to balance both the risks and rewards of effectively leveraging these proceedings. We have found that, when employed properly, such proceedings can allow for a more cost-effective and expeditious way to invalidate weak patents and obtain freedom to operate in a particular field.

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