Patent Office Invalidation Proceedings
About
In competitive markets, innovative companies are often defending the validity of their patents or challenging the validity of their competitor’s. Proceedings to review a patent office’s decision to grant a patent are complex and often involve parallel litigation, requiring counsel to have a deep understanding of the interplay between proceedings and how to optimize the overall strategy for success across each forum. Whether through post-grant review before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), opposition before the Patent Division of the German Patent and Trademark Office (DPMA) or the European Patent Office (EPO), or nullity action before the Federal Patent Court in Germany, Finnegan is one of the most experienced firms representing clients in these proceedings. Our experience spans not only volume, but also variety, as we have represented more than 200 clients across industries and with varying strategic goals.
Practice Areas
Derivations
Derivation proceedings provide an exception to the otherwise absolute first-to-file provisions of the America Invents Act (AIA).
Ex Parte Reexamination (EPR)
Reexamination allows anyone to test the validity of a U.S. patent.
Interferences
Interferences remain viable for many patent applications containing claims entitled to filing dates prior to the America Invents Act (AIA) effective date–March 16, 2013.
Nullity Actions
In Germany, the validity of a patent can be challenged only by means of a nullity action with the Federal Patent Court or, if still admissible, in an opposition with the Patent Office.
Patent Oppositions and Appeals
Patent opposition or revocation procedures offer third parties an opportunity to attack a European or German patent within a limited time after grant.
PTAB Invalidation Proceedings: IPR and PGR
Trial strategy and procedures differ significantly in proceedings before the Patent Trial and Appeal Board (PTAB) depending on your position—as a petitioner challenging a patent's validity or as a patent owner defending your rights.
Third-Party Observations
Anyone can file a third-party observation against an application or patent for which proceedings are pending at patent offices in Europe, Germany, and the UK.
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
