PTAB Reviews
Intellectual Property and Technology | PatentWe file and defend inter partes reviews, post-grant reviews, and other proceedings before the Patent Trial and Appeal Board.
Overview
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.
Our Services
patent_litigation
Federal registration and validity opinions
intellectual_property_litigation
Federal registration and validity opinions
appeals
Federal registration and validity opinions
Licensing & Transactions
Negotiate and draft license agreements
DMCA Services
Takedown notices and counter-notices
Enforcement
Cease and desist through litigation
Fair Use Analysis
Evaluate fair use defenses and risks
Music & Entertainment
Industry-specific copyright matters
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.
Fair use is a defense that permits limited use of copyrighted material without permission. Courts consider four factors: the purpose and character of use (commercial vs. educational, transformative vs. copying), the nature of the copyrighted work, the amount used, and the effect on the market. Fair use is highly fact-specific.
For works created today by individual authors, copyright lasts for the life of the author plus 70 years. Works made for hire and anonymous/pseudonymous works are protected for 95 years from publication or 120 years from creation, whichever is shorter. Older works may have different terms.
Yes, software code is protected by copyright as a literary work. Both source code and object code can be registered. However, copyright protects the expression of ideas, not the underlying functionality—patent protection may be more appropriate for novel methods and processes implemented in software.
Our virtual legal services offer streamlined, cost-effective solutions for common copyright needs. Services like copyright registration, assignment agreements, and DMCA takedowns are available online with fixed, transparent pricing. You get the quality of a top IP firm with the convenience of digital delivery.
Related Matters
Represented streaming platform in landmark DMCA safe harbor case. Successfully defended client's safe harbor status while obtaining injunctive relief against repeat infringers, resulting in dismissal of $500M damages claim.
Prosecuted copyright infringement claims on behalf of professional photographers whose work was used without authorization. Secured significant damages award and implementation of improved licensing procedures.
Enforced copyright and trade dress rights in mobile game against clone applications. Obtained preliminary injunction and permanent removal of infringing apps from major app stores worldwide.
Cutting-edge case addressing use of copyrighted music in AI training datasets. Negotiated comprehensive licensing framework that allows continued AI development while protecting rightsholders' interests.
Prosecuted claims against former executive who copied proprietary source code to competitor. Established ownership under work-for-hire doctrine and obtained injunction plus damages for willful infringement.
Represented academic publisher in enforcement action against site hosting pirated textbooks. Implemented systematic takedown program and pursued contributory infringement claims against operators.
Get in Touch
Connect with our copyright team to discuss your matter
Practice Contacts
Michael Roberts
Sarah Kim
