We draw on our deep knowledge of patent law and wide-ranging IP dispute resolution experience to successfully represent our clients in PTAB proceedings. Our lawyers have extensive experience with IPRs and PGRs, as well as ex parte reexamination. Members of our team were among the first lawyers to represent clients in IPRs and PGRs when they became available. Our lawyers have been involved in over a hundred proceedings, representing both petitioners and patent owners in some of the highest-profile, complicated proceedings to date.

In addition, our team has also handled parallel litigation outside of the USPTO and has a strong track record of successfully coordinating such litigation with corresponding post-grant procedures under an overarching litigation strategy.

• Our practice vice-chair, Naveen Modi, has been recognized as the PTAB Bar Association’s interim vice-president.
• Practice vice-chair Naveen Modi named Outstanding IP Litigator of the Year – PTAB by Managing IP.

In our Q&A, Intellectual Property partners Naveen Modi and Joseph Palys discuss the changes to post-grant proceedings brought about by the passage of the America Invents Act (AIA), and what those changes mean for our clients.

What are the different options available for challenging patents before the Patent Trial and Appeal Board (PTAB)? What benefits or challenges do these options present for our clients?

The validity of a patent can be challenged before the PTAB by inter partes review (IPR), post-grant review (PGR), and post-grant review of covered business method (CBM) patents. These proceedings are intended to be less costly and time consuming than typical district court and ITC litigations. Clients, however, should carefully consider the interplay of these proceedings with related litigations, including, for example, estoppel issues that may arise.

How does challenging a patent before the PTAB differ from pursuing civil litigation? 

While sharing many similarities with district court litigation, such as motions practice and depositions, patent trials before the PTAB involve many differences including the threshold for review, burden of proof, claim construction standard, and scope of discovery. In addition, pursuing a challenge before the PTAB may result in estoppel. As a result, clients should make sure their counsel has experience navigating the PTAB and its unique rules and procedure.

What options are available for patent owners seeking to strengthen existing patents?

Patent owners have a variety of options. They can file a reissue application or a request for ex parte reexamination to strengthen the patent and pursue claims of varying scope. They can also file a request for supplemental examination on an issue relevant to patentability.

Are there other issues clients should consider when evaluating whether to challenge a patent at the USPTO, or whether to attempt to strengthen a patent at the USPTO?

Clients should consider the standard they have to meet in any given proceeding, what grounds can be raised, estoppel, who will conduct the proceeding (i.e., an examiner or PTAB), what discovery is available, what are the appeal rights, and the timeframe for resolution. In addition, they need to consider the effect on validity and infringement arguments as well as the possibility of stay if there is a corresponding litigation.

Do you see further changes on the horizon in terms of how the PTAB handles contested cases?

Yes. The law and rules will evolve as the PTAB continues to handle these proceedings and the Federal Circuit addresses many questions left open by the AIA.