PTAB Invalidation Proceedings: IPR and PGR
About
PTAB pioneers representing both petitioners and patent owners
Our professionals have handled more than 1,400 cases before the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office (USPTO)—we know our way around the PTAB’s unique procedures and potential pitfalls. In handling inter partes review (IPR), post-grant review (PGR), and covered business method review (CBM) proceedings, there are many opportunities for a procedural misstep or strategic miscalculation. The administrative patent judges are patent attorneys with science and technology backgrounds. They can and often do get into the weeds about the patented technology, prior art, and PTAB procedures. When arguing before the Board, a detailed understanding of both the technology and the law is essential. While we have been recognized as the most experienced firm in representing petitioners, a distinguishing feature of our practice is that we also devote a significant portion of our practice to defending patent owners. Our experience on both sides of the table allows us to be an objective resource for clients facing post-grant challenges.
Contacts
- Cory C. Bell
- Partner
- Boston, MA
- +1 617 646 1641
Experience
Obtained complete victory against Carrum on appeal of the District of Delaware’s claim construction to the Federal Circuit following Carrum’s stipulation of non-infringement under the claim construction, thereby exonerating BMW’s ACC system, first sold in 2000, against Carrum’s 2004 patents. Invalidated several asserted claims through post-grant efforts before the U.S. Patent Office, including IPRs and EPRs, and pursued claims through proceedings before the Eastern District of Virginia to vindicate BMW’s patent challenges.
1:18-cv-01645, D. Del., Judge Andrews
21-1435, 24-1480, Fed. Cir., Judges Clevenger, Cunningham, Lourie, Moore, Prost, Taranto
IPR2019-00902, -00903, -00904, -00905, -00927, 00928, PTAB, Judges Browne, Scanlon, Tornquist
90/019,010, CRU
Finnegan represented Bausch & Lomb’s licensee Eye Therapies, LLC in an appeal at the U.S. Court of Appeals for the Federal Circuit from a Patent Trial and Appeal Board (PTAB) decision finding Eye Therapies’ patent directed to a low-dose brimonidine treatment for eye redness (Lumify®) to be unpatentable. In a precedential decision, the Federal Circuit agreed with Finnegan’s arguments and found that the Board had wrongly invalidated the patent based on an incorrect claim construction, vacating and remanding the case back to the PTAB. The proceeding settled shortly thereafter
23-2173, Fed. Cir., Judges Taranto, Stoll, Scarsi
Representing FaceTec, Inc. in four inter partes reviews (IPRs) relating to groundbreaking 3D liveness detection technology.
IPR2025-00106, -00107, -00108, -00109, PTAB, Judges Khan, Hoang, Baer
Secured a covenant-not-to-sue and zero-dollar walkaway for BMW Group in a declaratory judgment action, concluding Arigna’s high-profile patent enforcement campaign involving current amplification technology. This outcome follows a decisive ITC victory, the dismissal of parallel District Court litigation, and multiple concurrent patent office challenges pending at the time of resolution.
1:23-cv-01190, D.D.C., Judge Contreras
2:21-cv-00173, E.D. Tex.
IPR2021-01531, PTAB, Judges Baer, Fenick, Iftikhar
23-1931, Fed. Cir.
90/019,261, USPTO
2:24-cv-00260, E.D. Tex., Judge Gilstrap
IPR2025-00592, -00593, -00594, -00595, PTAB
337-TA-1367, ITC, Judge Moore
2:23-cv-10783, C.D. Cal., Judges Anelle-Rocha, Eick
IPR2023-01414, PTAB, Judges Abraham, Cass, Hamann