The Leahy-Smith America Invents Act (AIA), enacted in 2011, established post-grant proceedings available on or after September 16, 2012, for challenging the validity of issued U.S. patents. Marshall, Gerstein & Borun LLP can help you use these proceedings to challenge the validity of patents, resolve existing or threatened litigation, or defend your patents whose validity has been challenged.
These post-grant proceedings are administrative trials that take place before the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office (USPTO), and include the following:
PTAB trials have been popular with petitioners challenging patent validity, because they are simpler, faster, and significantly less expensive in comparison to federal court litigation, and because most cases that proceed to final written decision result in cancellation of many or all challenged claims.
The firm also has a long history in counseling clients and challenging patents through ex parte reexamination proceedings. That history dates to the very first reexamination certificate the U.S. patent and Trademark Office ever issued to our then-client who wished to have certain prior art assessed by the Patent Office before asserting the patent in federal court litigation.
Today, ex parte reexamination is an even more cost-effective way to challenge a competitor’s patent and also results in substantively identical cancellation statistics achievable with IPRs and PGRs. The firm’s attorneys have experience in preparing and filing reexamination requests and also in prosecuting reexamination applications where our client’s competitor has requested reexamination.
Representative Experience
Our Firm has successfully represented clients before the PTAB (and its predecessor, the Board of Patent Appeals and Interferences), and used PTAB trials and reexamination in connection with related court litigation, including the following:
- Obtained stays of litigation by filing IPR petitions and reexamination requests
- Used IPRs and CBMs to settle litigation
- Successfully defended patents in IPRs
- Successfully represented parties in patent interferences, and in appeals of interference decisions to district courts and the U.S. Court of Appeals for the Federal Circuit