USPTO Patent Invalidity Proceedings

Third Party Submissions, Ex Parte Reexam, Inter-Partes Review, and Post-Grant Review.

Patent Office Litigation

Our team’s strong technical abilities and experience with the Patent Office have made Fountainhead an attractive solution for post-grant challenges and other USPTO proceedings. Whether representing patent owners or potential defendants, our representation gives clients a winning edge over their adversaries.

Third-Party Submissions:
When an adversary has pending patent applications considered a threat, third-party submissions may be used in some circumstances to present prior art to the Examiner to limit or even eliminate pending claims.

Ex Parte Reexamination:
For granted patents at issue, Fountainhead has successfully helped clients search for prior art and submit reexamination requests to the Patent Office, which can result in invalidation of the claims.

Inter Partes Review:
While more costly than Ex Parte Reexam, Inter Partes Review (IPR) has become a standard mechanism for asserting new prior art against a granted patent. Similar to a Federal District Court proceeding, an Inter Partes Review allows the party asserting the prior art to participate in the process and present arguments to the Patent Office in support of invalidity of the patent at-issue.

Post-Grant Review:
Once a patent is granted, members of the public have nine (9) months of issuance to challenge the patent at-issue. Post-Grant Review challenges enjoy a wider range of issues, prior art, and discovery available to invalidate a patent than an IPR.

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Ensenta, Inc. (acquired by Private Equity fund)

After linking Ensenta’s core technology innovations to its target market space, Fountainhead successfully navigated Ensenta’s patents through the Patent Office to protect their innovations and markets. Over the years, Fountainhead worked with Ensenta to successfully fend off IP attacks from competitors. These efforts culminated in a successful exit when the company was sold to a private equity firm.


Power Analog Microelectronics (acquired by Diodes Inc.)

Power Analog Microelectronics (PAM) was a multinational analog and mixed signal startup. Fountainhead’s expertise in analog, mixed signal, and global IP strategy helped PAM to build a comprehensive IP program to support their global marketing efforts, leading to a successful acquisition by Diodes Inc.


Summit Microelectronics (acquired by Qualcomm Inc.)

Summit’s battery charging technology changed the world. When Summit invented a charging algorithm that reduced battery charge time by orders of magnitude (“TurboCharge”), they turned to Fountainhead to protect these vital IP assets. Knowing that companies around the world would stop at nothing to “design around” Summit’s innovations, Fountainhead worked with Summit engineers to craft numerous claim strategies to make their IP as impregnable as possible. Summit was later sold to Qualcomm for hundreds of millions of dollars based in large part on their IP portfolio, portions of which was later asserted against Apple.


SAP is a global leader in business process software. Since the seminal Supreme Court case of Alice Corp. v CLS Bank, which significantly raised the bar for patenting business process software patents, protecting these key IP assets has been no easy task. For almost two decades, Fountainhead Law has worked with SAP to lead the field in patenting business process software patents, having successfully obtained hundreds of valid and granted patents for SAP and other clients in this nuanced and challenging technology space.


When wireless titan Qualcomm launched its seminal patent lawsuit against Apple, from over 200,000 patents in their arsenal, they selected just 12 patents deemed capable of withstanding the rigors of Apple’s rigorous patent defenses. Fountainhead Law proudly prosecuted two (2) of the selected 12 Qualcomm patents, contributing to Qualcomm’s favorable settlement with Apple of this epic patent battle.

Software Systems‚Äč

When Microsoft’s new CEO, Satya Nadella, set out to transform Microsoft’s strategic vision, the legal team turned to Fountainhead’s broad range of expertise in software, hardware, AI, and other technologies to protect the new technology areas that Microsoft was venturing into. Fountainhead has helped Microsoft preserve the wealth of innovations along their technology roadmaps from software to AI and spanning both the analog and digital semiconductor worlds.