Inter Partes Review Representation
PTAB counsel for patent owners and petitioners in inter partes review proceedings
Inter partes review is rarely just a dispute over prior art. The proceeding can affect claim construction, litigation strategy, settlement leverage, estoppel exposure, and the value of the challenged patent and related portfolio.
AddyHart represents both patent owners and petitioners in IPR proceedings. We combine PTAB advocacy, technical analysis, expert development, litigation coordination, and appellate experience to guide matters from early case assessment and institution through trial, rehearing, and potential Federal Circuit appeal.
IPR Representation for
Patent Owners
A patent owner’s defense should begin as soon as a possible petition becomes apparent. Early preparation creates time to evaluate the prior art, prosecution history, claim-construction issues, potential witnesses, related litigation, and the commercial importance of each challenged claim.
Pre-Petition & Immediate Case Assessment
We assess:
✓ The challenged patent and related family members
✓ Asserted and reasonably foreseeable prior art
✓ Prosecution-history and claim-construction issues
✓ Potential statutory and procedural defenses
✓ Related district-court or ITC proceedings
✓ Expert, testing, and evidentiary needs
✓ Amendment and continuation options
Patent Owner Preliminary Response
The preliminary response is the patent owner’s first opportunity to explain why the PTAB should not institute review.
We develop focused responses addressing the petition’s legal, procedural, evidentiary, and technical deficiencies while considering how each position may affect the remainder of the proceeding and any parallel litigation.
Instituted Trial
When review is instituted, we develop the merits record through:
✓ Patent owner responses
✓ Expert declarations
✓ Objective evidence of nonobviousness
✓ Claim-construction evidence
✓ Cross-examination of petitioner witnesses
✓ Discovery and evidentiary motions
✓ Sur-reply briefing
✓ Motions to amend when strategically appropriate
We evaluate any proposed amendment in light of infringement positions, damages, intervening rights, pending applications, and the future value of the patent family.
Oral Argument, Rehearing, & Appeal
We prepare PTAB oral arguments around the legal and technical issues most likely to determine the outcome. We also advise on requests for rehearing, Director Review where available, and Federal Circuit appeal. The USPTO identifies reconsideration and Federal Circuit appeal as potential post-decision paths in AIA proceedings.
IPR Representation for Petitioners
An effective petition must tell a complete, technically coherent story from the outset. Material gaps generally cannot be repaired by relying on later briefing.
We help petitioners with:
✓ Assessment of whether IPR is the appropriate proceeding
✓ Patent, claim, and prosecution-history analysis
✓ Prior-art searching and reference evaluation
✓ Selection and development of proposed grounds
✓ Claim charts and technical mapping
✓ Expert selection and declaration preparation
✓ Petition drafting
✓ Reply briefing and discovery
✓ Depositions and oral argument
✓ Rehearing and appellate strategy
The goal is not simply to assemble references. The petition must explain how the references teach the challenged limitations, why the proposed combinations are supported, and how the evidence fits the governing legal standards.
Coordination With
Parallel Litigation
An IPR may affect more than validity. Positions taken before the PTAB can influence:
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Claim construction
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District-court invalidity theories
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Infringement positions
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Expert testimony
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Litigation stays
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Estoppel
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Settlement and licensing discussions
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Appellate strategy
We work with litigation counsel to maintain a coordinated record and avoid unnecessary inconsistencies between the PTAB and the courts.
Why AddyHart for IPR
Technical & Evidentiary Depth
Successful IPRs are built on a persuasive technical record. We work closely with inventors, engineers, and expert witnesses to evaluate the asserted prior art, develop claim-by-claim analyses, and present evidence that addresses both the technology and the governing legal standards. From expert declarations and cross-examination strategy to objective indicia of nonobviousness, we focus on developing a record that supports our clients' positions throughout the proceeding.
PTAB & Oral-Argument Experience
IPRs demand advocacy that is both technically rigorous and procedurally precise. Our attorneys have experience representing clients before the PTAB, coordinating with district-court litigation, and handling patent appeals. We prepare every stage of the proceeding—from institution through oral hearing and post-decision review—with an eye toward preserving the strongest record for any subsequent appeal.
Broader Patent-Family Strategy
The outcome of an IPR can affect far more than the challenged claims. We evaluate each strategic decision in the context of the client's broader patent portfolio, including related patents, continuation applications, licensing opportunities, ongoing enforcement efforts, and future product development. By considering both the immediate proceeding and its long-term implications, we help clients protect the value of their intellectual property beyond a single case.
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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.