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Post-Grant Proceedings

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Patrick A. Doody
Senior Counsel, Northern Virginia
T: +1.703.770.7755
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Pillsbury IP practitioners literally wrote the book on post-grant proceedings, offering insights into past decisions and guidance on navigating the complex rules and procedures that govern the PTAB hearing process.

Blending exceptional knowledge of technologies with patent prosecution and patent litigation skills, Pillsbury IP lawyers represent clients in a wide range of proceedings before the United States Patent and Trademark Office (USPTO)’s Patent Trial and Appeal Board (PTAB). Our IP lawyers have advanced degrees in technology sectors from biotechnology to telecommunications and computer software. We assist clients from a wide range of industries regarding a vast array of technologies, including medical devices, imaging technology, mechanical and electrical devices, polymers, films, catalyst technology, fuel cells, biomass fuels, industrial manufacturing, cosmetics, pharmaceuticals, advanced telecommunications and biotechnology.

Well-versed in the PTAB procedures and strategies, its rules and their ramifications, we represent patent holders and patent challengers, utilizing post-grant proceedings to challenge competitors’ patents or strengthen a patent already granted, as well as any corresponding patent portfolio.

Our lawyers offer cost-effective counsel, advising on the strategic advantages of the various types of proceedings available at the PTAB and helping clients to evaluate their options and select the best course of action. In many instances, we have enabled clients to avoid costly patent infringement litigation and injunctions that would have severely impacted their businesses.

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Our intellectual property lawyers are experienced in all forms of post-grant review, representing clients regarding:

  • Inter partes reviews
  • Ex parte reexaminations
  • Derivation proceedings
  • Patent reissues
  • Post-grant reviews
  • Supplemental examinations
  • Interferences (applies to patent applications filed prior to March 16, 2013)

Representative Experience

  • Defended Rigetti Computing against two inter partes reviews brought against one of its foundational patents by IBM, with the PTAB determining not to institute the IPR proceeding based upon the Patent Owner Statement, which highlighted fundamental inconsistencies in IBM’s assertions.
  • Defended SweeGen and Blue California in a patent infringement lawsuit brought by PureCircle in the Central District of California involving highly soluble stevia sweeteners in which we prevailed on a Motion to Stay the case in light of a Post Grant Review filed with respect to one of the patents in suit. 
  • Represented Atlas Copco as the patent challenger in two IPR proceedings, based on two patents involved in eight cases pending in District Court of Delaware. The PTAB issued final written decisions in favor of Atlas Copco, finding all challenged claims unpatentable. Upon the patent holder’s appeal, the Federal Circuit affirmed the PTAB’s decisions, resulting in a complete victory for Atlas Copco.

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  • Represented Atlas Copco as the patent challenger in two IPR proceedings, based on two patents involved in eight cases pending in District Court of Delaware. The PTAB issued final written decisions in favor of Atlas Copco, finding all challenged claims unpatentable. Upon the patent holder’s appeal, the Federal Circuit affirmed the PTAB’s decisions, resulting in a complete victory for Atlas Copco.
  • Defended Rigetti Computing against two inter partes reviews brought against one of its foundational patents by IBM, with the PTAB determining not to institute the IPR proceeding based upon the Patent Owner Statement, which highlighted fundamental inconsistencies in IBM’s assertions.
  • Defended SweeGen and Blue California in a patent infringement lawsuit brought by PureCircle in the Central District of California involving highly soluble stevia sweeteners in which we prevailed on a Motion to Stay the case in light of a Post Grant Review filed with respect to one of the patents in suit.
  • Represented patent owner Sleep Number in an inter partes review brought by American National Manufacturing challenging claims found to infringe in a preceding ITC case and other claims asserted in a district court case relating to the electronic air controller used with an air adjustable mattress. The PTAB confirmed patentability of all but one of the infringing claims and confirmed patentability of newly added claims.
  • Achieved victory for Schrader-Bridgeport International in inter partes review with PTAB finding unpatentable several claims in a tire pressure monitoring system patent owned by two Swiss companies. The Federal Circuit affirmed the PTAB’s decision on invalidity and reversed the PTAB with respect to one claim that the PTAB found not invalid.
  • Represented MotionPoint Corp. and won a covered business method review before the PTAB by convincing the Patent Office to invalidate TransPerfect’s Scanlon patent previously found by the district court to be valid and infringed.
  • Took over representation from another law firm that filed a petition for IPR on a patent covering Cialis, a multibillion-dollar drug. After the PTAB denied institution, we filed a request for reconsideration of the denial. The PTAB ordered a briefing on the request, and we secured a favorable settlement for our client in a few weeks after the PTAB ordered briefing.
  • Represented petitioner Medtronic in three inter partes review proceedings in which all challenged claims to a “Percutaneous Aortic Valve Replacement” were found unpatentable by the Patent Trial and Appeal Board, a ruling the Federal Circuit affirmed on appeal.
  • Represented patent owner Globeride Inc. in an inter partes review proceeding in which all challenged claims of Globeride’s patent on an “Oscillate Mechanism for a Fishing Spinning Reel” were found patentable over the prior art.
  • Represented Silicon Mitus in the Northern District of California on six patents related to power management integrated circuits asserted in a Complaint filed by Maxim. Case settled after the filing of IPRs, an Order from a Markman hearing, and the filing of another patent infringement lawsuit by Silicon Mitus in South Korea.
  • Represented Inphi Corp. in three separate inter partes Currently, almost all original claims have been either canceled or amended.
  • Represented Textron in two Post Grant Reviews of a patent asserted in pending district court litigation. After nearly a year of litigation, we obtained a very favorable settlement for Textron two days after the PTAB granted the first petition for PGR.
  • Represented tool manufacturer in multiple IPR proceedings against a patent asserted in district court litigation. Obtained a final written decision invalidating the relevant claims that was affirmed by the Federal Circuit.

Practice Area Highlights

  • Ranked in Chambers USA for Intellectual Property in Northern Virginia (2011 – 2024) and Texas (2022 – 2024).
  • Ranked nationally and in Washington, DC, and Texas as one of the world’s leading IP practices across all aspects of patent law by Intellectual Asset Management’s “IAM Patent 1000,” with seven partners recognized individually (2014 – 2024).
  • Ranked nationally for patent prosecution and trademark prosecution by Managing Intellectual Property magazine, in addition to regional recognitions in California and Virginia, with four Pillsbury lawyers recognized as “IP Stars” (2024).

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  • Recognized nationally for IP Litigation, Patent Litigation, Patent Law and Technology Law by U.S. News – Best Lawyers (2025).
  • Ranked by The Legal 500 U.S. in patent prosecution, including reexamination and post-grant proceedings (2022).

Resources

IP Courts & Entities At-a-Glance
Updates (COVID-19)

Case Study

Inter Partes Victories Safeguard Client’s Innovations

PTAB Handbook

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