Oblon Spivak’s Post Grant Patent practice group is the leading such practice in the U.S., having recovered more patents from reexamination in the past two years than any other law firm. The group routinely recovers patent portfolios made subject to post issuance disputes as a result of high-profile, concurrent litigation valued at hundreds of millions of dollars.

The group’s practice embraces all aspects of United States Patent and Trademark Office (USPTO) post-issuance proceedings. Such proceedings include ex parte and inter partes patent reexamination and patent reissue, as well as related appeals to the USPTO Patent Trial and Appeal Board (PTAB) and beyond. The group has handled in excess of 300 reexaminations, representing both patent owners and third-party reexamination requesters. The group’s unparalleled post-grant expertise is leveraged to favorably conclude reexaminations/reissues in our clients’ favor.

Strategic Use of Reexamination/Reissue as a Litigation Tool

Working collaboratively with our litigation team, as well as outside counsel, our team is skilled at addressing the challenges faced in reexamination and reissue cases that often arise concurrently with litigation. Our practitioners develop strategies that often result in stayed litigation pending resolution of reexaminations, decreased damage exposure, improved claim construction and non-infringement postures, as well as improvement of the overall settlement and dispute resolution prospects.

Additionally, the group is often called upon to defend validity or advocate invalidity of patents that are subject to high-profile litigation disputes. We counsel clients on the offensive and defensive use of reexamination to advance their business goals, guiding them on ways to use the reexamination process to strengthen their patents' validity prior to litigation or to preempt attacks on their patents.