PTAB Litigation

Following the introduction of the America Invents Act (AIA), new proceedings before the U.S. Patent Trial & Appeal Board (PTAB) – including inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) challenges – have disrupted the landscape of patent enforcement.  These proceedings have provided companies with additional methods for challenging U.S. patents, often in a less costly, streamlined alternative to district court litigation. As petitions continue to be filed at a record pace, it is increasingly important for both patent owners and patent challengers to rely on legal counsel with a track record of success in the nation’s busiest patent court.

Our PTAB litigation attorneys have represented petitioners and patent owners in more than 100 PTAB trials. With technical backgrounds in electrical engineering, computer science, chemical engineering, molecular and cellular biology, and engineering physics, our team is armed with the technical knowledge necessary to handle a wide variety of patent disputes.  We regularly represent both petitioners and patent owners in PTAB litigation, as well as any corresponding appeals to the Federal Circuit. Our team’s breadth of experience in patent litigation matters in district courts and the Federal Circuit, combined with our patent prosecution experience before the USPTO, enables us to develop a comprehensive, strategic approach to these complex matters.

IPR, PGR and CBM Proceedings

IPR, PGR and CBM proceedings are governed by complicated administrative guidelines, procedural nuances, and rapidly evolving case law. With an abbreviated timeline of 12 months from institution to final written decision, there are many opportunities for a procedural misstep or strategic error that can carry costly results. Our team of PTAB litigators brings the depth of experience needed to understand these unique procedures and craft an effective strategy for each case. For a patent challenger, these strategies often can result in stayed concurrent litigation pending resolution of the PTAB proceedings, eliminated or decreased exposure to damages, and improved settlement options.  And for a patent owner, our team routinely saves our clients’ patents. 

Interferences

While the disruption caused by the first-to-file provision of the AIA effectively eliminates the option of an interference for most new patent applications, interferences remain a viable option for many patents with earlier filing dates. Our team has significant experience guiding clients through complex priority fact patterns to determine the appropriate strategy. We regularly represent clients on issues of patentability, priority of invention, inventorship and ownership across a broad range of technologies and industries.

Shu Chen, Ph.D.
Associate
Terry L. Clark
Member
Michael L. Kiklis
Member
R. Gregory Parker
Member
Janelle D. Waack
Member
Matthew D. Zapadka
Associate