Overview

We have a long history of successfully representing both patent holders and patent challengers in proceedings before the US Patent & Trademark Office (USPTO), specifically before the Patent Trial and Appeal Board (PTAB) in cases covering medical devices, consumer electronics, computer technology, chemicals, and pharmaceuticals. Our experience includes doing so in parallel with ongoing litigation in the federal courts and at the International Trade Commission (ITC).

The Leahy-Smith America Invents Act (AIA) has been in effect since September 2012. Mayer Brown was one of the first firms retained and has since been retained to represent clients in more than 100 inter partes review (IPRs) or covered business method (CBMs) proceedings. In those proceedings, Mayer Brown has represented clients from pre-filing counseling all the way through the final oral hearings. We have argued more than 20 final hearings covering more than 45 proceedings and have had more than 50 proceedings go to a final written decision.

We are therefore well-positioned to represent clients in all facets of these trial proceedings, including IPRs, post-grant review (PGR) and the transitional program for covered business method patents (CBM). We are actively representing clients in pending IPR and CBM proceedings, know the rules and practices before the PTAB and have been on the cutting edge of the evolving law related to such proceedings. Where any proceeding has resulted in an appeal to the Federal Circuit, Mayer Brown has handled the appeal.

Our People

Mayer Brown’s IP litigators have the breadth and depth of experience to assist clients in protecting their business processes and patents, including before the PTAB. Our team includes leaders in the patent bar, as well as several former patent examiners and lawyers with technical backgrounds and advanced scientific degrees. Our lawyers are frequent speakers on post-grant procedures and strategy and have served on panels with PTAB judges and other USPTO officials. A number of our lawyers have argued final oral hearings before the PTAB, which includes a diverse group of partners and associates and men and women.

Experience

Our patent litigators have represented clients in over 150 IPR and CBM matters. Our diverse group of lawyers, many of whom are registered before the United States Patent Office, have a broad array of technical knowledge and backgrounds. We strategically staff IPR and CBM matters with lawyers that have that technical knowledge related to the subject matter in question, giving our clients with a distinctive advantage. Our lawyers have degrees in Electrical Engineering, Chemical Engineering, Industrial Engineering, Mathematics, Physics, Biomedical Engineering, Civil Engineering, Mechanical Engineering, Computer Engineering, Chemistry, Biology, Pharmacy, Biochemistry, Organic Chemistry, Chemical Biology, Organometallic Chemistry and Life Sciences. Several of our lawyers have advanced degrees in those areas.

Our deep bench of patent litigators has significant experience in the following technology areas:

Consumer Electronics