PTAB Trial Group
The lawyers in JMBM's PTAB Trial Group represent patent owners and petitioners before the Patent Trial and Appeal Board (PTAB) in post grant reviews (PGRs), inter partes reviews (IPRs), and covered business methods (CBMs). Our clients come from a variety of industries and their patents represent a wide range of technologies and innovation. See a list of representative IPRs handled by our Group.
Our PTAB trial lawyers have been active in representing patent owners and petitioners before the Patent Trial and Appeal Board since September 2012 when the United States Patent and Trademark Office (USPTO) revised and expanded post-grant opposition procedures for challenging the validity of patents. Often referred to as "patent office litigation", post-grant proceedings can be critical components of litigation strategies. Among other advantages, patent office litigation significantly reduces the time – and costs – of patent litigation. See a comparison of post-grant proceedings before PTAB and traditional reviews before the USPTO.
These adversarial Patent Office proceedings for invalidating patents require skills developed in conventional patent litigation and trials, e.g., brief writing, deposition taking and defending, and oral advocacy, and thus are best handled by experienced and skilled trial lawyers. Our PTAB trial lawyers have extensive patent trial experience in Federal District Courts as well as experience before the PTAB and USPTO.IPR, PGR and CBM
These proceedings before the PTAB now have become an important part of patent litigation strategy and often provide a less expensive and more efficient way to challenge the validity of a patent. According to the PTAB’s January 2019 statistics, institution rates for petitions in FY2019 are projected as 65% while final written decisions on instituted petitions result in 81% of petitions have some or all of the challenged claims being held unpatentable. See https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/statistics.Ex parte Reexams
Ex parte reexamination also can play an important role in challenging the validity of a patent. With institution rates remaining at about 92% (since 1981), challengers are able to initiate validity reviews at a rate higher than IPRs. Also, unlike IPRs, ex parte reexaminations do not prevent a challenger from raising the same or similar invalidity challenges in the district courts. And, while the proceedings limit the challenger’s participation to the initial request, challenges result in claim cancellations or amendments at levels similar to IPRs, i.e., 79% (cancelled/amended) versus 81% (at least one challenged claim cancelled). See https://www.uspto.gov/learning-and-resources/statistics/reexamination-information.Appeals of PTAB Trial Decisions
Appeals of PTAB Trial decisions remain the exclusive jurisdiction of the Court of Appeals for the Federal Circuit. See 35 U.S.C. §§ 141, 319. Affirmance rates on appeals from the Patent and Trademark Office remain relatively high at 89%. This underscores the importance of obtaining the desired result in the underlying PTAB proceeding. See http://www.cafc.uscourts.gov/the-court/statistics.
Whether in connection with defending against a patent infringement claim or proactively challenging a competitor’s patent immediately after issuance, JMBM's PTAB Trial Group focuses on achieving your long-term business goals through the strategic use of proceedings before the PTAB.