Patent owners enforcing their patents in the United States District Courts increasingly face the hurdle of overcoming concurrent invalidity challenges before the Patent Trial Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO). From the petitioner perspective, PTAB challenges can be one of the most efficient ways to knock out patent claims relatively early. Often these proceedings are parallel or as an adjunct to patent litigation in other forums. Challenges can take the form of inter partes review (IPRs), post grant review (PGR), or covered business method review (CBM). Given that the potential impact of PTAB challenges, it is imperative to select the right team.
Experienced Patent Litigators
Obtaining successful outcomes requires attorneys that are both experienced in patent litigation and have a grounding in substantive patent law and procedure. Our Patent Office litigators are all registered patent attorneys, some of whom have more than 20 years of experience devoted to litigating patents. Engineers by training, we have the technical acumen to handle complex technologies, cross examine technical experts, and distill the subject matter into clear and engaging stories for PTAB judges. On one end of the spectrum, we frequently face opposing counsel with a patent prosecution or reexamination background. These individuals often lack the litigation chops to aggressively cross examine witnesses, develop documentary evidence, and advocate their case before a panel. On the other end of the spectrum, general litigators that dabble in patent litigation lack a core understanding of patent law and procedure, lack the technical background to digest complex technology, and are often ill suited to engage with PTAB judges, many of whom are former patent examiners.
Success With Parallel Proceedings and Appeals
We have obtained successful results for clients by overlapping staffing with both PTAB and parallel district court proceedings. Having one firm handle proceedings before the district courts and the USPTO, reduces client costs, is more efficient, and creates a unified team that can respond to rapid developments on two fronts. In appeals to the Federal Circuit, we have a winning track record that helps crystalize and distill the issues on appeal.
Flexible Fee Structures
In addition to offering competitive hourly rates, our firm is able to offer a variety of alternative fee structures for trials before the Patent Office, including fixed-fee-by-phase, fix-fee, and variations with benchmark incentives. Alternative fee structures can be particularly attractive to patent owners facing a large number of challenges and can create a more-predictable control of resources.