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

The new inter partes review (IPR) proceeding created by the America Invents Act (AIA) of 2011 is rapidly growing in importance. The number of software patents being challenged through the new IPR process is growing as many petitioners have met with success in having patent claims amended or canceled by the Patent Trial and Appeal Board (PTAB). The PTAB, which is a new body within the US Patent and Trademark Office (USPTO) created by the AIA, has shown a willingness to invalidate software patent claims.

The procedures and rules that apply to expert testimony in IPRs are different than those in district court. Although IPRs only started a few years ago, Quandary Peak experts have already participated in IPRs by authoring expert declarations. One of Quandary Peak’s clients even made headlines by becoming the first patentee ever to have all challenged claims re-affirmed by the PTAB, with no claims being amended or canceled.

What We Do

Quandary Peak experts:

  • Perform prior art research for inter partes review (IPR) and post-grant review (PGR)
  • Analyze highly technical prior art references
  • Author strong, technically sound expert declarations for PTAB trials
  • Help counsel prepare to depose opposing experts and make the best use of the short discovery period in IPRs and PGRs
  • Offer expert testimony by deposition or (if necessary) at oral hearings before the PTAB
  • Assist in the preparation of preliminary responses and motions to amend claims

What We Know
  • The differences between the new IPRs and PGRs and the old inter partes and ex parte re-exam proceedings
  • How to draft effective expert declarations in IPRs
  • Estoppel considerations raised by IPRs and PGRs that should be considered by petitioners
  • Whether a patent owner should file a preliminary response
  • How a PHOSITA would understand patent claims

Pre-AIA Inter Partes Re-examination

Quandary Peak’s first-hand experience with the implications of claim language and references in patent infringement cases gives us a unique perspective to assist with various USPTO inter partes re-examinations. Our unique combination of skill in cutting-edge software technology and experience in legal proceedings gives our clients the best chance to protect their intellectual property and defend against infringement accusations. Our experts have authored declarations in both pre-AIA inter partes re-examination and post-AIA inter partes review (IPR) proceedings.

What We Do

Quandary Peak experts:

  • Perform prior art and reference research for patent re-examinations
  • Assist in technical responses to the US Patent and Trademark Office (USPTO)
  • Present technical research for post-grant review processes

What We Know
  • Ex parte and inter partes patent re-examinations
  • Supplemental examinations and patent reissues
  • The Central Reexamination Unit (CRU) and Board of Patent Appeals and Interferences (BPAI)

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