PTAB Reviews

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Intellectual Property and TechnologyPatent

We file and defend inter partes reviews, post-grant reviews, and other proceedings before the Patent Trial and Appeal Board.

Challenging and Defending Patents at the PTAB

The Patent Trial and Appeal Board provides administrative proceedings for challenging patent validity. Our PTAB practice files and defends inter partes reviews, post-grant reviews, and other PTAB proceedings.

Inter Partes Review

IPR challenges patent claims based on prior art patents and printed publications. We develop petitions presenting the strongest invalidity arguments, identify compelling prior art, and present expert testimony supporting unpatentability. We also defend patents against IPR challenges, opposing institution and presenting validity arguments.

Institution Strategy

Not all petitions are instituted. We develop petitions that meet institution standards, presenting clear and compelling invalidity arguments. When defending, we file preliminary responses arguing against institution. Understanding institution dynamics improves outcomes in both roles.

Post-Grant Review

PGR allows broader validity challenges but must be filed within nine months of issuance. We evaluate PGR opportunities and timing constraints. PGR is available only for patents with post-AIA effective filing dates.

Covered Business Method Review

CBM review addressed business method patents under a now-expired program. We handled numerous CBM proceedings and continue to address legacy matters.

Coordination with Litigation

PTAB proceedings often accompany district court litigation. We develop coordinated strategies leveraging PTAB proceedings for overall advantage. We pursue stays of district court cases pending PTAB resolution and manage estoppel effects.

Appeals

PTAB decisions are appealable to the Federal Circuit. We handle appeals from adverse PTAB decisions and defend favorable outcomes on appeal.

Frequently asked questions

IPR challenges patent validity based on prior art patents and publications. It provides faster, less expensive validity determination than litigation.

IPR can be filed anytime, but must be filed within one year of being served with infringement claims in litigation.

Petitioners succeed in invalidating claims in roughly 60-70% of instituted proceedings. However, institution rates vary.

File preliminary responses opposing institution, then respond with claim construction arguments, expert declarations, and amended claims if appropriate.

Courts have discretion to stay litigation pending IPR. Stay decisions consider timing, overlap, and simplification potential.

PGR must be filed within 9 months of issuance and allows any validity challenge. Available only for post-March 2013 patents.

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