Axinn is a go-to firm for post-grant challenges. Pairing our extensive litigation expertise with the numerous IP attorneys who are registered to practice before the U.S. Patent and Trademark Office (USPTO) and who hold advanced technical degrees, Axinn is particularly well-suited for handling litigation before the Patent Trial and Appeal Board (PTAB), including inter partes review (IPR), covered business method (CBM) review, and post-grant review (PGR). Axinn attorneys have handled cases on behalf of plaintiffs and defendants in a multitude of jurisdictions, including federal and state courts, United States Court of Appeals for the Federal Circuit (CAFC), regional circuit courts, and the International Trade Commission (ITC). Attorneys who know their way around a courtroom, who understand complex technologies, and know the ins and outs of patent law are able to adeptly and efficiently handle matters before the administrative judges at the PTAB who themselves are former patent attorneys. This is what distinguishes Axinn from other peer firms and is what gives us the expertise to guide our clients through patent disputes before the PTAB.
Axinn attorneys have handled more than 20 PTAB trial proceedings in many strategic ways. As petitioner’s counsel, Axinn has used IPR petitions to exert settlement pressure on patent owners, and, upon institution, forcing patent owners into favorable settlements for our clients. Axinn’s PTAB teams have filed IPRs in the midst of co-pending district court litigation, obtaining stays of such litigation until the IPRs have been resolved. We have also taken petitions to the final written decision stage whereby all claims of the patent were invalidated.
Representative matters handled by Axinn lawyers before the PTAB include:
- On behalf of Par, Axinn obtained an IPR Final Written Decision invalidating Horizon’s patent on methods of treating urea cycle disorders. Par Pharm., Inc. v. Horizon Therapeutics, LLC, IPR2015-01127 (P.T.A.B.).
- On behalf of a generic drug manufacturer, filed multiple IPRs and secured a favorable settlement for our client and the dismissal of each litigation and IPR. Par Pharm., Inc. v. Horizon Therapeutics, LLC, IPR2018-01550 (P.T.A.B.); Par Pharm., Inc. v. Horizon Therapeutics, LLC, IPR2017-01768 & -01769 (P.T.A.B.).
- On behalf of a generic drug manufacturer, served as lead IPR petition counsel orchestrating the drafting of multiple IPR petitions for three REMS patents, leading to invalidity of all claims on obvious grounds. The holding was later affirmed by the CAFC. Jazz Pharm., Inc. v. Par, Pharm., Inc., IPR2015-00548, -00551, & ‑00554 (P.T.A.B.).