Inter Partes Review (IPR) and Post Grant Review (PGR)

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Rothwell Figg is a “go-to” firm for inter partes review and post-grant review (IPR/PGR) proceedings before the U.S. Patent and Trademark Office’s (USPTO) Patent Trial and Appeal Board (PTAB). Since IPR/PGR proceedings were first implemented in 2012, we have been helping our clients invalidate bad patents that never should have issued in the first place, as well as protect their own patents from competitors attempting to enter the market and take market share. Because of their unique nature, IPR/PGR proceedings demand a degree of experience and a strategic capability few firms can deliver. Rothwell Figg's IPR and PGR practice can, and does, making us one of the nation’s leading IPR/PGR practitioners.

Our experience is built on a foundation of much more than simply years of practice. IPRs and PGRs, like interference practice, are highly specialized and operate differently than other USPTO and district court proceedings. From motions practice, to timetables, to evidence, to how hearings are conducted, these proceedings are unique. Firsthand experience is essential for a successful IPR/PGR. Even the judges are different – they have technical and scientific training unlike many judges in district courts. The Rothwell IPR and PGR team is conversant with every facet of hearings, procedures, deadlines, and requirements.

IPR and PGR proceedings do, however, resemble another category of USPTO cases – interferences. Interference proceedings are a specialty practiced by a very limited number of experienced firms, ours among them. Our prior interference experience before the PTAB is a significant advantage, as by the USPTO’s own procedures, IPR and PGR and interference proceedings have a great deal of similarity. In other words, we know this territory very well, and are highly skilled at guiding clients through it.

We are also skilled at thinking like litigators when it comes to these matters. Despite their specialized nature, IPR and PGR hearings are fundamentally trials, albeit of a unique type. Effectively handling them requires a strong litigation foundation. Litigation experience is critical, because IPR and PGR hearings typically take place during the course of patent litigation, which may be stayed during the pendency of an IPR or PGR. Thinking through the interplay between these two forums is an essential element of a strong strategy.

Finally, and perhaps most importantly, there is always the possibility of an appeal from an IPR or a PGR decision, to the U.S. Court of Appeals for the Federal Circuit (CAFC). Managing these cases well includes preparing and preserving issues for appeal, thinking through the strengths and weaknesses of follow-on litigation, and planning like a litigator all the way along. Because many of the attorneys on the team are both patent prosecutors and trial lawyers, we are uniquely capable of taking a comprehensive approach for our clients, and their matters.

Thanks to our knowledge of IPR and PGR practice, we are also skilled at working with clients on the strategy associated with this work. We develop cost-effective, real-world approaches to protecting or challenging patents and overseeing portfolios, and can frequently resolve IPR and PGR matters quickly and definitively. We’re also skilled at evaluating whether an IPR/PGR is an appropriate vehicle for a client at all, or whether alternatives, such as derivation proceedings or even settlement, would be more suitable. Where many firms will simply, and perhaps reflexively, recommend an IPR/PGR in a given situation, we think more carefully and deeply about possible pitfalls, outcomes, and alternatives. Our clients benefit from our thoughtful, experienced approach.

Because Rothwell Figg has several former USPTO patent examiners in our firm, we also have a unique level of insight into how patent examiners are likely to think and act. Potential strategies are evaluated by this metric, which, for example, allows us to make certain that the prior art and unpatentability arguments on which our Petitions are based are likely to be successful.

All of our experience and knowledge come together in our day-to-day work with our clients. Because these are unique, sometimes even arcane, intellectual property proceedings, we know that it is vitally important to communicate with clients with both candor and lucidity.

As counselors, we need to advise our clients on where to commit resources and on what we believe are the likely outcomes. This is the case in any legal situation, of course, but in IPR/PGR matters it is especially acute. We need to both explain the nature of the proceedings in sufficient detail, and provide an honest assessment of possible outcomes, alternatives, and consequences. Our commitment to doing this is the true test of a trusted legal advisor, and the reason our firm is the resource of choice for clients engaged, or potentially engaged, in IPR or PGR hearings.




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