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Post-Grant Patent Group

Greenblum & Bernstein’s Post-Grant Patent group specializes in representing its clients in all proceedings available before the USPTO that involve an issued patent, including Inter Partes Review (IPR), Post Grant Review (PGR), Covered Business Method proceedings (CBM), Ex parte and Inter partes Patent Reexaminations, Supplemental Examination, Reissue proceedings and the related appeals.

The attorneys at Greenblum & Bernstein actively represent patent owners and third party petitioners in Inter Partes Review proceedings before the Board.  Inter Partes Review proceedings have been available under the America Invents Act (AIA) to issued patents since September 16, 2012.  The AIA also gave rise to the Post Grant Review proceeding, only available for patents with a priority date no earlier than March 16, 2013.  Greenblum & Bernstein, nevertheless, represented a petitioner in one of the first Post Grant Review proceedings.

Our team consists of both PTAB veterans as well as seasoned practitioners and litigators, making us especially qualified to represent both patent owners and third party petitioners in Post-Grant proceedings.  Our team includes former PTAB patent judges, whose experience and perspective is directly applicable to handling the post-grant proceedings. Importantly, our team has significant experience representing parties in interference proceedings, which are governed by the Standing Order that served as the basis for the rules that govern the Inter Partes Review and Post-Grant Review proceedings. Our team also includes practitioners with significant experience in patent litigation, which enables us to develop winning strategies for patents involved in both court proceedings and post-grant proceedings, including the use of post-grant proceedings to support negotiations between the parties in litigation.

In addition to the current IPR/PGR proceedings, the group has handled well over 100 inter partes and ex parte reexamination proceedings, many of which involved patents that were simultaneously involved in court proceedings.  For example, Greenblum and Bernstein has:

  • Successfully defended (without claim amendment) on behalf of Patentee against 11 reexaminations, 10 of which involved a patent in litigation;
  • Successfully defended (without claim amendment) against 5 patent reexamination requests, wherein all patents were in litigation, obtaining a favorable settlement based on the outcome of the reexamination requests;
  • Substantially enhanced the sale price of a patent portfolio utilizing the ex parte reexamination process.

Our Post-Grant Patent Group includes:

  • Bruce Stoner, with 33 years at the USPTO, including 17 years on the Board and 8 years as Chief Judge;
  • Gary Harkcom, with 26 years at the USPTO, including 14 years at the Board, and 13 years as Vice Chief Judge;
  • Arnold Turk, who served at the U.S. USPTO in various positions including Office of the Director for over 15 years;
  • Michael J. Fink, who has litigated numerous patent disputes in district courts and the Federal Circuit for over 30 years, as well as served as counsel in inter partes and post grant review proceedings, interferences and inter partes reexaminations;
  • Jill Browning, who has litigated patent disputes in district courts for over 20 years, and served as counsel in interferences and inter partes reexaminations.