Post-Grant Challenges
Inter partes review and ex parte reexamination counsel for patent owners and parties evaluating challenges to issued patents
An issued patent may become the subject of a challenge before the Patent Trial and Appeal Board or the USPTO’s Central Reexamination Unit. These proceedings can affect infringement litigation, settlement leverage, licensing, damages, continuation strategy, and the long-term value of an entire patent family.
AddyHart represents clients in inter partes review and ex parte reexamination proceedings. Our attorneys combine patent prosecution, PTAB, appellate, litigation, and technical experience to address both the immediate USPTO proceeding and its consequences outside the Patent Office.
Patent Owner Defense
A patent owner should begin developing its defense as soon as a potential challenge becomes apparent. Waiting until a formal petition or reexamination request is served can sacrifice valuable time needed to investigate the prior art, retain an expert, preserve testimony, and coordinate positions with related litigation.
Our Services Include:
Early assessment of threatened or filed challenges
Review of asserted prior art and claim charts
Claim-construction analysis
Evaluation of statutory and procedural defenses
Development of technical distinctions
Selection and preparation of expert witnesses
Coordination with parallel district-court or ITC litigation
Assessment of amendment and continuation options
PTAB briefing and oral argument
Ex parte reexamination prosecution and appeals
Federal Circuit appellate strategy
Our objective is not limited to prevailing in one USPTO proceeding. We seek to preserve the enforceability, commercial significance, and broader portfolio value of the challenged patent.
Inter Partes Review
An IPR is a contested proceeding in which a petitioner asks the PTAB to cancel one or more patent claims as anticipated or obvious based on patents or printed publications. The proceeding is front-loaded, technically demanding, and conducted on a compressed schedule.
Patent-Owner Representation
We represent patent owners through all stages of an IPR, including:
Pre-Petition and Early Case Assessment
The strategy for an inter partes review is often determined before the petition is ever filed. We evaluate the asserted patent, available prior art, prosecution history, claim-construction issues, and related litigation to identify the strongest grounds for challenge or defense. This early assessment helps clients understand the strengths, risks, and commercial implications of pursuing or responding to an IPR.
Patent Owner Preliminary Response
The Patent Owner Preliminary Response is the patent owner's first opportunity to explain why the PTAB should decline to institute inter partes review. We develop focused responses that evaluate the petition's factual and legal support, identify procedural and substantive deficiencies, and position the patent owner for the remainder of the proceeding. Our strategy considers not only institution, but also the potential impact on related litigation, licensing, and long-term enforcement objectives.
Patent Owner Response and Expert Evidence
If review is instituted, we develop a complete merits record addressing the petitioner’s legal and technical theories. This may include expert declarations, objective evidence of nonobviousness, deposition testimony, claim-construction evidence, and arguments directed to deficiencies in the petitioner’s asserted combinations.
Depositions and Discovery
Expert testimony often becomes central to the PTAB’s analysis. We prepare patent-owner witnesses, depose petitioner experts, and use the resulting testimony to test whether the petition’s technical assumptions withstand scrutiny.
Motions to Amend
Amending claims during IPR can create significant consequences for pending litigation, damages, intervening rights, and the value of the patent. We evaluate amendment only in the context of the patent owner’s broader enforcement and portfolio strategy.
Oral Argument and Appeal
Our attorneys prepare and present PTAB oral arguments focused on the issues most likely to determine the outcome. We also advise clients concerning rehearing and Federal Circuit appeal.
Petitioner Representation
An effective IPR petition must present a complete and well-supported case from the outset. We work with clients to evaluate prior art, develop detailed technical and legal arguments, prepare expert declarations, and draft petitions designed to maximize the likelihood of institution. Throughout the proceeding, we coordinate our strategy with related litigation, licensing, and broader portfolio objectives to help clients achieve meaningful commercial results.
Ex Parte Reexamination
Ex parte reexamination permits the USPTO to reconsider issued patent claims in view of patents or printed publications that raise a substantial new question of patentability. A patent owner or third party may request reexamination, but the requester’s active participation is generally limited after the USPTO orders the proceeding.
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That structure makes the initial request exceptionally important for the requester and makes prosecution strategy essential for the patent owner.
Patent-Owner Representation
Our ex parte reexamination defense services include:
Immediate Request Assessment
We analyze the request, assert substantial new questions, prior art, prosecution history, related proceedings, and the commercial importance of each challenged claim.
Patent-Owner Pre-Order Submissions
For qualifying requests, the current USPTO procedure permits a patent owner to submit a pre-order paper addressing whether the request establishes a substantial new question of patentability. We develop focused submissions directed to whether the asserted teachings would be considered important by a reasonable examiner.
The pre-order stage is not a substitute for a full merits response. Its purpose and available arguments must be considered carefully in light of the governing procedure.
Patent-Owner Statements & Office Action Responses
​If reexamination is ordered, we develop a comprehensive prosecution strategy before the Central Reexamination Unit that addresses both the asserted prior art and the broader objectives of the patent owner. Our responses challenge unsupported factual and legal positions, develop technical distinctions, coordinate expert evidence where appropriate, and preserve important issues for appeal. Every response is prepared with consideration for its potential impact on related litigation, licensing, and portfolio value.
Expert Declarations
Expert testimony can play a significant role in resolving complex technical disputes during ex parte reexamination. We work closely with qualified experts to develop declarations supported by the underlying technology, relevant literature, testing, and the perspective of a person of ordinary skill in the art. Our objective is to present persuasive technical evidence that complements the overall prosecution strategy rather than simply responding to individual rejections.
Claim Amendments & Litigation Coordination
Claim amendments during reexamination may affect infringement positions, damages, intervening rights, and the value of related patent assets. Before recommending amendments, we evaluate their potential impact on existing enforcement efforts, continuation strategy, and broader portfolio objectives. Where parallel litigation exists, we coordinate prosecution strategy with litigation counsel to maintain consistent positions and protect long-term commercial value.
Appeals
When the Central Reexamination Unit maintains a rejection, we represent patent owners before the Patent Trial and Appeal Board and, when appropriate, coordinate subsequent Federal Circuit appeals. Our appellate strategy focuses not only on the issues presented in the reexamination but also on preserving the long-term enforceability and commercial significance of the challenged patent.
Requester Services
For third-party requesters, the initial reexamination request is often the most important filing in the proceeding. We evaluate the prior art, develop detailed claim analyses, and prepare strategically organized requests designed to establish a substantial new question of patentability from the outset. We also advise clients when inter partes review, district court litigation, or another post-grant strategy may better align with their technical, legal, and commercial objectives.
Coordination With Parallel Litigation
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.
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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.
Unified Defense Program
Success-based representation for patent owners facing Unified Patents reexamination requests
Unified Patents has increasingly used ex parte reexamination to challenge issued patents. These requests can place substantial financial pressure on patent owners, particularly when the patent is already involved in enforcement or licensing activity.
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
Prosecution Experience
Ex parte reexamination follows a specialized prosecution process that differs in important ways from original patent examination. Our attorneys have extensive experience navigating Office Action practice, examiner interviews, claim amendments, expert declarations, PTAB appeals, and the procedural requirements unique to reexamination. This prosecution background allows us to develop practical strategies that strengthen the patent owner's position while preserving long-term portfolio value.
PTAB & Oral Argument Experience
Inter partes review requires persuasive written advocacy supported by strong technical analysis and expert testimony. We represent clients throughout PTAB proceedings, including petition and response briefing, expert development, depositions, and oral argument before technically trained administrative patent judges. Our objective is to present clear, well-supported arguments that advance the client's broader legal and commercial goals.
Litigation Perspective
Post-grant proceedings often occur alongside patent litigation, making strategic consistency essential. We evaluate every argument, amendment, and procedural decision in light of its potential impact on claim construction, infringement, damages, intervening rights, settlement, and future enforcement. By coordinating Patent Office and litigation strategy, we help clients avoid unintended consequences that may extend beyond the USPTO.
Technical Depth
Our attorneys represent clients across a broad range of technologies, including software, artificial intelligence, semiconductors, cloud computing, medical devices, telecommunications, automotive systems, industrial automation, consumer products, and advanced manufacturing. This technical breadth allows us to quickly understand complex inventions, evaluate prior art, and develop effective legal strategies tailored to the technology at issue.
Integrated Strategy
The strongest Patent Office argument is not always the strongest overall business strategy. We consider each proceeding in the context of the client's broader patent portfolio, related family members, accused products, licensing objectives, and parallel disputes to develop coordinated strategies that protect long-term commercial value. Our goal is not simply to succeed in a single proceeding, but to strengthen the client's overall intellectual property position.
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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.