Patent Office Validity Challenges

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The firm’s intellectual property litigators are experienced and well-versed in pursuing and defending against patent validity challenges before the Patent Trial and Appeal Board (“PTAB”) such as Post-Grant Reviews (commonly known as “PGRs”), and Inter Partes Review (commonly known as “IPRs”).  PGRs and IPRs were introduced as part of the 2011 America Invents Act, and are collectively referred to as “AIA trials.” They represent a relatively recent, but oft-used, development in the field of intellectual property law, and provide an expedited and economical means to challenge the validity of a patent through review by the PTAB.  In addition, we are well-versed in the Patent and Trademark Office’s reexamination procedure, which represents another cost-effective pathway for challenging a patent before the Patent Office

Due to their relative speed and cost-effectiveness, PTAB patent validity challenges constitute one of the mainstays of the firm’s portfolio of client services, and we have a proven track record of successful practice before the PTAB.  For example, the PTAB instituted IPR proceedings based upon a petition prepared by our attorneys against a patent that was not only touted by its Fortune 50 owner to be the foundation of a billion-dollar-per-year business, but also had survived invalidity challenges in two prior litigations and an IPR action.  Despite this substantial body of adverse history, the PTAB instituted IPR upon the firm’s client’s petition, determining that there was at least a “reasonable likelihood that [our client] would prevail.”- More recently, we obtained institution of multiple IPRs and PGRs on against numerous design patents owned by our client’s Fortune 20 opponent, as well as numerous granted requests for reexamination of other design patents in the opponent’s portfolio.

Our litigators’ knowledge of PTAB proceedings, as well as substantive patent law, allow them to design sound and successful strategies for clients’ intellectual property challenges using all of the tools in the intellectual property litigator’s toolbox, including proceedings challenging or defending patents before the PTAB