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Law Firm WilmerHale Reaches Milestone 100th Inter Partes Review Filing

Monday, November 10, 2014

WilmerHale has filed its 100th inter partes review (IPR), marking a significant milestone in the post-America Invents Act (AIA) era. Since the bill passed three years ago, WilmerHale has emerged as an industry leader in post grant proceedings and advising clients regarding the interplay between the United States Patent and Trademark Office (PTO) proceedings and concurrent litigation.

“The AIA has significantly shifted the practice of patent law,” said Don Steinberg, chair of WilmerHale’s Intellectual Property Department. “Our 100th IPR filing reflects the depth and breadth of our expertise in this emerging and critical area of patent practice.”

WilmerHale’s Post Grant Patent Proceedings Group offers a wide range of services, including IPR and covered business methods review (CBM) to challenge or defend issued patents, and ex parte reexamination. The firm has served as IPR counsel-of-record for leading technology and healthcare corporations, as well as the most active petitioners to-date for IPRs and CBMs, and is now also serving as counsel-of-record on 11 appeals.

WilmerHale’s use of post grant procedures in connection with IP litigation strategy has yielded successful results for its clients. In each of the IPRs that WilmerHale has filed that have resulted in final written decisions, the Patent Trial and Appeal Board has determined that all of the challenged claims are unpatentable. For other IPRs that WilmerHale has filed, patent owners have disclaimed the challenged claims in the IPR, effectively acknowledging that those claims are unpatentable. Post grant proceedings have also proven successful for the firm’s clients by facilitating early settlement of litigation on favorable terms.

“WilmerHale has provided invaluable counsel to us over the years in complicated and critical patent matters,” said David Highet, Vice President and Chief Intellectual Property Counsel for BD (Becton, Dickinson and Company). “Following enactment of the AIA, the WilmerHale team didn’t miss a beat, offering us strategic guidance on how to use these new procedures in combination with our litigation efforts. In my opinion, the firm’s capabilities in this area are unsurpassed.”

“In the past several years, our group has gained tremendous experience in navigating the new procedures that govern post-grant proceedings, and advising on strategy,” said Dave Cavanaugh, chair of WilmerHale’s Post Grant Patent Proceedings Group. “We are able to best serve clients by combining our experience working with the PTO and AIA procedures, with our IP litigation expertise to provide counseling on how post grant proceedings can be used to impact pending litigation.”

Known to have a world-leading intellectual property practice, WilmerHale provides solutions to intellectual property business challenges that face companies at all stages of growth in every aspect of their business that involves the acquisition, exploitation or protection of intellectual property. The firm is consistently recognized as a leader in the market, most recently, having been named as the 2014 “IP Litigation Department of the Year” by The American Lawyer, and as the “Most-Favored IP Department” in the nation by BTI Consulting.

About Wilmer Cutler Pickering Hale and Dorr LLP

WilmerHale provides legal representation across a comprehensive range of practice areas that are critical to the success of its clients. The law firm’s leading Intellectual Property, Litigation/Controversy, Regulatory and Government Affairs, Securities, and Corporate and Transactional Departments participate in some of the highest-profile legal and policy matters. With a staunch commitment to public service, the firm is renowned as a leader in pro bono representation. WilmerHale is 1,000 lawyers strong with 14 offices in the United States, Europe and Asia. For more information, please visit

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