Proceedings before the Patent Trial and Appeal Board have become a popular strategy to combat assertions of patent infringement. Many cases in federal court are now accompanied by a concurrent Inter Partes Review or covered business method proceeding. Plaintiffs who assert their patent must now always be prepared to defend the patentability of their patent in a PTAB proceeding.
As a defendant, deciding to file a Petition for Inter Partes Review is a major strategic consideration. In some cases, filing can be the difference between defeating a patent claim and a business-crushing loss. Deciding whether or not to file a petition for IPR must be based on a delicate balance of many strategic and inter-related considerations, including the nature of the patent challenge, the type of technology at issue, the availability of other invalidity defenses at trial, the strength and nature of the non-infringement defense, the costs of the IPR relative to the litigation, the estoppel effects of IPR, and the likelihood of securing a stay of the litigation — to name only a few concerns.
Harness Dickey attorneys are pioneers and experts in Patent Trial and Appeal Board proceedings. Our attorneys were lead counsel for the patent owner in two of the first three Inter Partes Review Final Written Decisions to result in claims being maintained valid by the PTAB. Since then, we have handled dozens of IPRs for our clients. As experienced experts in both federal court litigation and PTAB proceedings, we offer a complete, world-class skill set with which we develop cohesive strategies for both federal court litigation and related proceedings. In those cases where rival companies have already hired other legal counsel for representation in federal court litigation matters, many of our clients come to us to handle or consult on their PTAB matters because of our demonstrated expertise in this practice area.
When we pursue a challenge, we offer far more than just an immediate and aggressive attempt at unpatentability. We establish our clients’ footing in multiple, on-the-record positions that draw attention to important distinctions or contradictions that highlight our position. We leverage PTAB proceedings in support of pending litigation stays, as well as gain advantages through negotiation and potential settlement.
Devising a clear course of action at the onset of a matter allows us to continuously evaluate both litigation and PTAB positions. Because we understand all aspects of the strategic interplay of PTAB proceedings and federal court litigation, as well as Patent Office procedure, we are able to identify and capitalize on the weakness and oversights of our opponents who may be less well versed in these intricate areas of the law. We are particularly adept at steering clear of pitfalls that might create opportunity for our opponent.
We also recognize that PTAB proceedings are not limited to use as a counter-punch related to co-pending litigation. Our clients have effectively used the proceedings as part of a patent clearance strategy, to eliminate blocking patents that would otherwise pose as an obstacle to entry into a particular market. Even when litigation has not been threatened, PTAB proceedings can and have served as valuable tools to open new markets and generate market share.
In this new and ever-changing area, we maintain our expertise by actively reviewing decisions from the Patent Trial and Appeal Board. We look closely for new trends that can give us an advantage and help our clients achieve the best results in the most efficient manner.
Inter Partes Review
Created by the America Invents Act, Inter Partes Review proceedings have already changed the face of patent litigation. Lower cost, lower burden of proof to invalidate, broader claim scope, among other advantages to patent challengers, means that there may be no greater opportunity and true reform to come from the America Invents Act than these post-grant proceedings.
While the initial Final Written Decisions were decidedly in favor of Petitioners (a 96.4% cancellation rate as of March 16, 2014), more recent decisions have increasingly sided with Patent Owners, bringing down the total number of canceled claims to 82%. Critics of IPR proceedings try to argue the various ways in which the proceedings are skewed toward Petitioners. It is becoming increasingly clear, however, that the Inter Partes Review process has added an efficient and cost-effective avenue to test the patentability of patent claims outside of expensive District Court litigation.
Moneyball for IPRs. Harness Dickey clients benefit from the firm’s expansive and ongoing statistical analysis of IPR decisions. We have analyzed the reasons why a Petition has not succeeded, either at the Decision to Institute or at the Final Written Decision stage. By analyzing the results, as a petitioner, we can “pressure test” a draft petition against the data to ensure the highest possible level of success. As a patent owner, we evaluate a petition against this data to determine the best avenues for attacking the petition, including the identification of key cases that support our argument. In an advanced analysis, we can learn by judge or by subject matter what are the most common mistakes made in Petitions. In short, Harness Dickey clients take advantage of our enhanced metrics and are given the highest chance of success in Inter Partes Review proceedings.
Post Grant Review
Closely mirroring IPR, Post Grant Review has the potential to expand and extend the already profound legacy of IPR. PGR has a similar format to IPR, but with a higher cost, additional patentability challenges to implement, a more narrow timeframe to file, among other differences. Many of the lessons of IPR can, therefore, be applied to PGR proceedings. To date, however, few PGR proceedings have been filed, likely due, at least in part, to the limited population of patents that are eligible for PGR proceedings (only post-AIA) patents.