Practice Groups

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Post-Grant Patent

Brinks Gilson & Lione has significant experience in USPTO administrative proceedings including re-examinations, interferences, and the new proceedings created by the AIA including inter partes reviews (IPR) and Covered Business Method patent reviews (CBM).

Although IPRs and CBMs have only been available for a few years, Brinks has jumped to the forefront of this new type of proceeding and has served as lead counsel in approximately 40 cases before the Patent Trial and Appeal Board (“PTAB”) and several subsequent appeals to the Federal Circuit.

To view a listing of representative Post-Grant Patent proceedings matters, several of which are discussed in the following paragraphs, click here.

To view a Summary Comparison of Post-Grant Proceedings click here.

In four petitions for IPRs filed on two patents for client FLIR Systems, Brinks obtained complete victory.  Brinks’ experience in post-grant proceedings enabled it to successfully navigate what proved to be a very procedurally-complex IPR, which included 14 depositions over a compressed schedule, as well as numerous motions and conferences with the PTAB judges.  Brinks prevailed when the PTAB held unpatentable each of the 76 claims of the two patents challenged by our client.

In a petition for IPR filed for a client in the automobile industry, Brinks successfully invalidated the majority of claims of a patent covering tire pressure monitoring systems for automobiles, including the lone independent claim. Brinks employed narrow, targeted anticipation and obviousness arguments based on a select handful of prior art references to succeed at the PTAB.

In three petitions recently filed for a chemical company, Brinks is currently challenging a competitor's patent claims for the manufacture of fluorinated olefins, which are touted as the next generation of refrigerant and as the worldwide replacement for HFCs.

Flash Docket

Flash Docket is a proprietary software solution that automatically updates clients' patent information by directly connecting Brinks' docketing technology to the Patent Application Information Retrieval (PAIR) system at the United States Patent and Trademark Office (USPTO).

Client Portals

Client Portals offer 24/7 access to your domestic and foreign matters. The Client Portals are implemented as web portals that provide secure access from virtually anywhere to your applications, USPTO correspondence, docket information, and due date reports. Your Client Portal is extensible.

Custom Analytics

Our docketing system captures detailed USPTO data from the PAIR system, including art unit and examiner data. Our docketing system enables client specific analysis of your portfolio to help obtain a better understanding of how your applications are progressing through the USPTO and to identify potential roadblocks in advance.

Forward Thinking
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Those who were hoping for a clear standard to emerge as a result of the Federal Circuit’s grant of en banc review on the issue of burdens of proof for motions to amend in post-grant proceedings under the American Invents Act (“AIA”) may be disappointed by Aqua Products, Inc. v. Matal, No. 2015-1177, which issued October 4, 2017...

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In affirming a District Court vacatur of a jury verdict of infringement under the doctrine of equivalents, the Federal Circuit held that patent owner Dr. Jang failed to prove that his equivalents theory did not ensnare the prior art...

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Under 35 U.S.C. § 315(e), a final written decision in an inter partes review (“IPR”) by the Patent Trial and Appeal Board (“PTAB”) results in estoppel of certain actions by the petitioner...

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In Ultratec, the Federal Circuit cited several problems with the Board’s permissive rules of trial proceedings and held the Board abused its discretion in its consideration of supplementary evidence...

in the media
On September 1, 2017, Miyoung Shin authored an article for Law360 entitled, "Questioning PTAB Due Process In Fed. Circ. Appeals."  Please click here to read more.
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On appeal of the district court’s dismissal of Visual Memory, LLC’s patent infringement complaint against NVIDIA Corporation, the Federal Circuit concluded...

Press Releases

CHICAGO—Fifteen attorneys at Brinks Gilson & Lione, one of the largest intellectual property law firms in the United States, have been selected by their peers for inclusion in The Best Lawyers in America 2018...

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In late June 2017, Sen. Chris Coons (D-DE), Sen. Tom Cotton (R-AR), Sen. Dick Durbin (D-IL) and Sen. Mazie Hirono (D-HI) co-sponsored and introduced in the U.S. Senate the Support Technology and Research for Our Nation’s Growth and Economic Resilience  Patents Act of 2017...

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On Wednesday, July 26, 2017, at 12:00pm CT, Danielle Phillip, Allyn Elliott, and Peter Lee, attorneys with Brinks' Post-Grant Patent practice group, will present the webinar, "Keeping Up With the PTAB: How to...

Press Releases

CHICAGO—Danielle Anne Phillip, Allyn B. Elliott, and Peter Lee, attorneys in the post-grant patent practice group at intellectual property law firm Brinks Gilson & Lione, will present the webinar “Keeping Up With the PTAB: How to Win When the Rules Seem to Change” at noon CDT on July 26, 2017...

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On June 23, 2017, the Federal Circuit held that a party appealing a decision from the Patent Trial and Appeal Board (“PTAB”)...

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The June 15 decision by the Federal Circuit, EmeraChem Holdings, LLC v. Volkswagen Group of Am., Inc., highlights the power of a procedural challenge to a final written decision by the PTAB...

Press Releases

CHICAGO—For the fourth consecutive year, Managing Intellectual Property, publisher of the annual comprehensive legal directory IP STARS, has accorded a Highly Recommended ranking to the Illinois office of intellectual property law firm Brinks Gilson & Lione, and a Recommended ranking to the firm’s office in North Carolina. Managing IP also ranked Brinks’ office in Ann Arbor, Mich., office as Recommended...

Press Releases

CHICAGO—Chambers USA, an annual guide to the world’s best lawyers and law firms, has again ranked Brinks Gilson & Lione, one of the largest intellectual property law firms in the United States, in Band 1 in the intellectual property practice area for Illinois, and has recognized four Illinois-based Brinks attorneys for their notable contributions to the practice of IP law...

multimedia

On Thursday, May 18, 2017, attorneys from Brinks' Post-Grant Patent practice group presented the webinar, PTAB and the District Courts...

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On December 1, 2016, the U.S. Copyright Office launched its new electronic registration system ...

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In Unwired Planet, LLC v. Google Inc., the Federal Circuit recently held that the Patent Trial and Appeal Board’s (PTAB) definition of a “Covered Business Method” (CBM) was inconsistent with the statutory language of the America Invents Act (AIA)...

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In its recent In re: Nuvasive, Inc. decision, the Federal Circuit on November 9, 2016 ...

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In Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., the Federal Circuit discussed the non-appealable...

 

Press Releases

ANN ARBOR—Jon Beaupré, a shareholder in the Ann Arbor office of Brinks Gilson & Lione, one of the nation’s largest intellectual...

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Earlier this month, the Federal Circuit held a software-based patent to be eligible under 35 U.S.C. § 101 in...

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On July 25, 2016, the Federal Circuit, in In re Magnum Oil Tools Int’l, reversed the final decision of an inter partes ...

in the media

On July 20, 2016, Chicago attorneys, Miyoung Shin and Peter Lee, wrote a guest article for Law360 entitled, "Finding ...

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On June 23, the United Kingdom (UK) voted to exit the European Union (EU) – a decisive move whimsically known ...

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The U.S. Court of Appeals for the Federal Circuit recently ruled in Amgen Inc. v. Apotex Inc. that a biosimilar-product ...

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In vacating a District Court grant of summary judgment that a patent directed to a cryopreservation process was ...

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On June 21, 2016, the Federal Circuit, in Immersion Corp. v. HTC Corp., held that a patent application filed as a continuation of an earlier application on the issue date of the earlier application has been “filed before the patenting” of the earlier application, and therefore is entitled to the earlier application’s filing date under 35 U.S.C. § 120...

Press Releases

CHICAGO—For the eighth year in a row, intellectual property law firm Brinks Gilson & Lione has been recognized in The Legal 500 United States 2016 as one of the top U.S. firms for patent prosecution, including for re-examination...

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The Supreme Court on June 20, 2016, upheld the AIA provisions allowing the USPTO’s Patent Trial and Appeal Board (“PTAB”) to interpret claims under the broadest reasonable construction (BRI) standard during an inter partes review...

in the media
On June 17, 2016, IP Frontline published an article entitled, “Never Late is Better: PTAB Denies Petitioners Motion in IPR After Missing Filing Deadline By Minutes” written by Oluwafemi Masha, Kent E. Genin and Jennifer Fox.  Please ...
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The U.S. Supreme Court’s recent decision in Halo Electronics v. Pulse Electronics, Inc., and Stryker Corp. v. Zimmer, Inc...

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On May 23, 2016, the Patent Trial and Appeal Board (PTAB) issued a decision denying motions...

Press Releases

CHICAGO—National law firm Brinks Gilson & Lione is “at the top of the list” again this year for intellectual property according to IAM Patent 1000 2016—The World’s Leading Patent Professionals, Intellectual Asset Management (IAM) magazine's guide to leading private practice patent professionals and firms.

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On May 13, 2016, the Federal Circuit, in Merck & Cie v. Watson Labs., Inc., held that an offer for sale that qualifies as a commercial offer under the law governing contracts...

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President Obama signed into law yesterday the Defend Trade Secrets Act, establishing for the first time an ostensibly uniform national trade secret protection standard...
 

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On March 15, Robert Mallin and Laura Beth Miller will participate on the panel, "PTAB and the District Courts" at the Managing Intellectual Property's US Patent Forum in Palo Alto, CA. The session will ...
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Join Brinks Gilson & Lione attorneys, Jim Sobieraj, Mark Remus, Amy Fix, Bill Frankel and Laura Beth Miller as they discuss the issues that will be front and center on the minds of Intellectual Property Departments and Attorneys in 2016, ...
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The Patent Trial and Appeal Board (“PTAB”) recently designated as precedential its prior decisions in LG Electronics ...

Press Releases

ANN ARBOR, MI—Chicago-based Brinks Gilson & Lione, one of the largest intellectual property law firms ...

multimedia

The Brinks Post-Grant Practice Group held the fourth in a series of webinars on recent developments in ...

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As a follow up on our client alert sent on September 11, 2015, available here, the Patent Trial and Appeal Board (“PTAB”) on September 25, 2015 declined to sanction Coalition for Affordable Drugs (“CAD”), the petitioner of ...
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Since the launch of Inter Partes Review (“IPR”) in 2012 pursuant to the American Invents Act (“AIA”), the general issues before the Patent Trial and Appeal Board (“PTAB”) have been straight forward. First, the ...
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On August 19, 2015, the U.S. Patent and Trademark Office (PTO) announced a second round of proposed changes to the rules for America Invents Act (AIA) proceedings based on comments and feedback the PTO has received in the past year. As PTO Director ...
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The seeming unwillingness of the Patent Trial and Appeal Board (PTAB) to grant motions to amend patent claims in Inter Partes Review (IPR) proceedings has left many patent owners wondering whether the purported ability to amend claims is merely ...
in the media
On August 7, 2015 Jim Sobieraj and Gary Ropski were mentioned and quoted in the Law.com article, 'Facing Tsunami of Cases, Federal Circuit Gives PTAB Wide ...
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The Federal Circuit affirmed the PTAB’s finding that the challenged claims in a Covered Business Method (CBM) Patent Review are unpatentable for lacking patentable subject matter under 35 U.S.C. § 101. Versata Development Group, Inc. v. ...
in the media
On July 16, 2015 Jon Beaupre was mentioned in the Ann Arbor news briefs section of MLive. Click here to read more.
in the media
On July 13, 2015 Brinks was mentioned in the Wastenaw County Legal News article, 'Brinks Gilson & Lione attorneys earn Kudos.'  The article mentioned Brinks recent IAM Patent 1000 recognition. Click here to read more.
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On June 16, 2015 the Federal Circuit decided en banc to overturn a panel decision of the Federal Circuit that held the term “module” in the context of a computer software patent did not invoke means-plus-function claiming under 35 U.S.C. ...
in the media
On June 18 and June 22, 2015 James Cleland was mentioned in the Detroit and Washtenaw Legal News article, ' Attorney looks at impact of Alice one year later.' Click here to read the Detroit Legal News article. Click here to read the ...
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The Senate Judiciary Committee voted early this month to approve patent reform legislation while the House Judiciary Committee approved a similar bill last week. Both the Senate and House bills attempt to improve procedures created by the 2011 ...
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In a rare occurrence for an inter partes review proceeding, the Patent Trial and Appeal Board (“PTAB” or “Board”) recently granted a motion to amend, finding the patent owner’s substitute claims to be patentable. In REG ...
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Almost one year ago, the Supreme Court issued its decision in Alice v. CLS Bank, a decision that fundamentally changed the way software claims are analyzed for patent eligibility. Following the decision, Alice has been used aggressively by litigants ...
Press Releases
ANN ARBOR – Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., announces three attorneys from the Ann Arbor office are among 10 Brinks attorneys selected by Managing Intellectual Property magazine to ...
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On March 27, 2015, the U.S. Patent and Trademark Office (PTO) announced a three-part roll-out plan. The first rule package of “quick fixes” will be released in full later this spring, but part of the first package is effective ...
multimedia

The Brinks Post-Grant Practice Group held the second in a series of ...

Press Releases
ANN ARBOR– A report titled Patent Related Trends in the Automotive Industry, released today by Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., reviews patent filings and litigation activity from 2008 ...
Press Releases
ANN ARBOR – Jon H. Beaupré, a shareholder in the Ann Arbor office of Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., will serve as a presenter at the second IP Counsel Exchange on Post-Grant ...
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In the first ruling of an appeal of a final decision in an inter partes review (IPR), the Court of Appeals for the Federal Circuit held in In re Cuozzo Speed Technologies, LLC, No. 14-1301 (Fed. Cir., Feb. 4, 2015) that it does not have jurisdiction ...
publication
On January 28, 2015 Ryan Marshall wrote, 'Faster to Protection. Faster to Profits?' for CIO Magazine. Click here to read more.
in the media
On November 6, 2014, the firm was mentioned in MLive’s “Ann Arbor Area Business Briefs” section regarding being recognized as a top-tier law firm by U.S. News & World Report and Best Lawyers in its 2015 list of “Best Law ...
in the media
Brinks' attorneys, Gary M. Ropski, Kori Anne Bagrowski, James G. DeRouin, James K. Cleland, Jon H. Beaupre and John A. Lingl were mentioned in the Law360 article 'Fed. Circ. Affirms Bosch Car Tester Patent As Invalid,' as counsel for ...
Press Releases
CHICAGO—In response to the sweeping changes to post-grant proceedings brought about by the Leahy-Smith America Invents Act (AIA), intellectual property law firm Brinks Gilson & Lione has established a post-grant patent practice group with ...
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One of the benefits to the post-grant proceedings created by the American Invents Act (“AIA”) is that parties may settle before the completion of the proceeding. However, as explained below, several recent PTAB decisions make clear that ...
Press Releases
CHICAGO -- Brinks Gilson & Lione, one of the nation’s largest intellectual property law firms, has announced the 2014 chairpersons of its legal and industry practice groups and geographic task forces. The firm added a new practice group ...
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On November 13, 2013, the Patent Trial and Appeal Board (PTAB) issued its first final written decision under the new inter partes review (IPR) proceedings in Garmin International Inc. et. al. v. Cuozzo Speed Technologies LLC, case number ...
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