Post-Grant Challenges
Inter partes review and ex parte reexamination counsel for patent owners and parties evaluating challenges to issued patents
An issued patent challenge is rarely just a Patent Office matter. The proceeding can affect litigation positions, settlement leverage, licensing strategy, claim scope, and the value of related patents.
AddyHart represents patent owners, IPR petitioners, and ex parte reexamination requesters. We combine PTAB advocacy, patent prosecution, technical analysis, litigation coordination, and appellate experience to address both the immediate proceeding and its broader commercial consequences.
Two Proceedings.
Different Strategic Demands.
Inter Partes Review Representation
Inter partes review is a contested PTAB proceeding in which a petitioner challenges patent claims under §§ 102 or 103 based on patents or printed publications. Patent owners may respond before institution, and both sides participate actively if the PTAB institutes trial.
We represent:
✓ Patent owners defending challenged claims
✓ Petitioners preparing and pursuing IPR challenges
✓ Parties coordinating IPR strategy with district-court or ITC litigation
✓ Parties considering rehearing or Federal Circuit appeal
Ex Parte Reexamination
Ex parte reexamination allows the USPTO to reconsider issued claims when patents or printed publications raise a substantial new question of patentability. Anyone may submit a request, but after reexamination is ordered, the third-party requester’s active role generally ends early and the matter proceeds primarily between the patent owner and the USPTO.
We represent:
✓ Patent owners responding to reexamination requests
✓ Third parties preparing reexamination requests
✓ Patent owners prosecuting claims before the Central Reexamination Unit
✓ Patent owners pursuing PTAB and Federal Circuit appeals
Not Sure Which Proceeding Fits?
IPR and ex parte reexamination differ in forum, procedure, challenger participation, available strategies, and potential effects on related litigation. We evaluate the asserted patent, prior art, prosecution history, timing, litigation posture, and business objectives before recommending a course of action.
One Strategy Across the Patent Office and the Courts
An inter partes review or ex parte reexamination rarely exists in isolation. Positions taken before the USPTO may influence claim construction, infringement, validity, damages, settlement discussions, and appellate strategy in parallel proceedings. We work closely with litigation counsel to develop coordinated strategies that consider both the immediate Patent Office proceeding and its potential impact on broader enforcement and business objectives.
Before recommending a particular course of action, we evaluate how prosecution decisions may affect related litigation, including stay strategy, prior-art defenses, expert testimony, claim amendments, estoppel, intervening rights, and opportunities for continuation or reissue practice. Our goal is to maintain consistent positions while protecting the long-term value and enforceability of the patent portfolio.
Responding to a Unified Patents Reexamination Request?
Qualifying patent owners may be eligible for AddyHart’s success-based Unified Defense Program.
The AddyHart Unified Defense Program offers qualifying patent owners success-based representation in ex parte reexamination proceedings initiated by Unified Patents.
For accepted matters, the program offers a $20,000 success-based professional fee, payable only if the representation is successful and at least one challenged claim is confirmed as patentable, as defined in the written engagement agreement.
Program eligibility is subject to conflicts clearance, case evaluation, and a written engagement agreement. USPTO fees, experts, vendors, litigation, Federal Circuit proceedings, and other expenses are excluded unless expressly included. Prior results do not guarantee a similar outcome.
Why AddyHart for
Post-Grant Challenges
Integrated Patent & Dispute Experience
Our attorneys draw on patent prosecution, PTAB, litigation, licensing, and appellate experience rather than treating the Patent Office proceeding in isolation.
Technical Depth
We handle disputes involving software, artificial intelligence, semiconductors, telecommunications, medical devices, industrial systems, consumer products, and advanced manufacturing.
Evidence-Driven Advocacy
We develop legal arguments together with the technical record, including prior-art analysis, expert declarations, testing, deposition testimony, and prosecution-history evidence.
Portfolio Perspective
We evaluate each procedural decision in view of related patents, pending applications, continuation opportunities, asserted products, and longer-term licensing or enforcement objectives.
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Relevant Team
The professionals below combine IPR, reexamination, appellate, litigation, prosecution, and technical experience relevant to challenges involving issued patents.
Meredith Martin Addy
President & Co-Founder · Registered Patent Attorney · Electrical Engineer
An electrical engineer and registered patent attorney, Mimi draws on more than 100 district-court patent cases and more than 100 Federal Circuit appeals to advise on prosecution strategy, PTAB proceedings, licensing, and portfolio durability.
Gregory B. Gulliver
Partner · Registered Patent Attorney · Former Software Engineer
A former software engineer with nine years of industry experience, Gregory has prepared and prosecuted hundreds of applications involving wireless communications, software, computer hardware, semiconductors, and network technologies.
Brandon R. Theiss
Partner · Registered Patent Attorney · Licensed Professional Engineer
A licensed professional engineer and former industrial-control and medical-device engineer, Brandon advises on patent prosecution, § 101 strategy, portfolio development, and post-grant proceedings involving AI, software, cloud systems, medical devices, and automation.
Craig McLaughlin
Senior Counsel · Registered Patent Attorney · Biology Background
A registered patent attorney with a biology background and nearly 30 years of experience, Craig handles utility and design-patent matters involving medical devices, mechanical systems, consumer products, computer hardware, and related post-grant and appellate issues.
Get In Touch
Whether you are developing a new patent portfolio, transferring existing prosecution work, preparing for a product launch, or responding to a challenge against an issued patent, we would welcome the opportunity to discuss your objectives.
Please do not include confidential information in an initial inquiry. An attorney-client relationship is formed only through a written engagement agreement.