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.
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?
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
How does challenging a patent
before the PTAB differ from pursuing civil litigation?
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?
owners have a variety of options. They can file a reissue application or a
request for ex parte
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?
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.