Inter Partes Review Proceedings

Representative Experience

  • We have handled 13 inter partes review proceedings on behalf of a telecommunications client, the majority of those as the patent owner.
  • We have handled four inter partes review proceedings on behalf of a multi-national manufacturing company as both patent owner and petitioner. The four inter partes review proceedings are related to four inter partes reexaminations also being handled by Quarles & Brady, along with three pieces of ongoing district court patent litigation involving ten patents.
  •  We are currently handling two covered business method reviews on behalf of a national configuration technology company as the petitioner.
  • We have experience appealing post-grant proceedings to the Federal Circuit. For example, in 2002, Habasit Belting, Inc. sued Rexnord Corporation in the District of Delaware for infringement of two U.S. patents, USPN 6,523,680 and USPN 6,330,941. In response to the lawsuit, Quarles & Brady filed inter partes reexamination requests in the U.S. Patent Office requesting the Patent Office invalidate both patents. We also obtained a stay of the Delaware case pending the inter partes reexaminations. After several years and multiple appeals to the Board of Patent Appeals and Interferences (now known as the Patent Trial and Appeal Board), Quarles & Brady appealed the Board's final decision in the '680 Patent to the Federal Circuit. The Federal Circuit reversed the ultimate conclusion of the Board on the '680 Patent in our client's favor. Quarles & Brady has also appealed the reexamination proceeding in the '941 Patent to the Federal Circuit.