Understanding Key Elements Of Patent Litigation: Inter Partes & Post-Grant Review Proceedings
Patent litigation is a complex process that few firms are equipped to handle due to the specialized knowledge that it can require, as well as the meticulous planning and strategizing that goes into each of these cases. At PV Law LLP, our team of experienced and highly skilled patent attorneys are keenly focused when they engage in litigation on behalf of our clients, leveraging all of their efforts to obtain a successful outcome. One strategy is to leverage Post-Grant Review and Inter Partes Review proceedings before the Patent Trial and Appeal Board (PTAB). Our team of attorneys includes members that have been recognized by Patexia Insights for their skill in this area of law.
Our team of attorneys has been participating in Post-Grant Reviews and Inter Partes Reviews since their inception in 2012, and have litigated them involving multiple different types of technology areas on both the petitioner and patent owner’s side.
Inter Partes Review
Inter Partes Review is an administrative proceeding, similar to a trial in many ways, that a party can initiate before the PTAB challenging the validity of a patent under 35 U.S.C. § 102 or § 103 (i.e., anticipation or obviousness over prior art) based on prior art. However, the prior art that may be used in these proceedings is limited to patents or other printed publications. For an Inter Partes Review to be instituted, the petitioner must show that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged. The owner of the patent at issue has three months after the PTAB issues a notice that a filing date for the petition has been granted to file a response to the petition. The PTAB then has three months to decide whether to institute review. If the proceedings are instituted, the PTAB will have one year to adjudicate the matter.
During the pendency of this proceeding, concurrent patent litigation in Federal District Court may be stayed, a strategy that we have used successfully in many cases.
The Post-Grant Review process is similar to Inter Partes Review but exists to allow third parties to request review by the United States Patent and Trademark Office (USPTO) of the patentability of claims recently granted by the USPTO. A request for Post-Grant Review must be filed within nine months of the initial granting of the patent or a reissue of the patent. The petition can raise any ground of invalidity available in 35 U.S.C. § 282(b)(2) or (3). This includes invalidity under 35 U.S.C. § 112 (e.g., indefiniteness and lack of enablement or written description), which is not available in Inter Partes Review.
For a Post-Grant Review proceeding to be initiated, the challenging party must show that the challenged patent claims are more likely than not to be unpatentable. The owner of the patent at issue has three months after the PTAB issues a notice that a filing date for the petition has been granted to file a response to the petition. The PTAB then has three months to decide whether to institute review. If the proceedings are instituted, the PTAB will make a final decision within one year, with a possible extension for good cause no longer than six months.
Sophisticated And Effective Representation
No matter the challenge, our team of attorneys has the skills to take on any intellectual property dispute for our clients. Our Washington D.C. office is positioned perfectly to assist our clients and swiftly handle matters for them.