Inter Partes Review Lawyers

Patent disputes often involve complex issues that few firms are equipped to handle due to the specialized knowledge requires, as well as the meticulous planning and strategizing that goes into each dispute.

At PV Law LLP, our team of experienced and highly skilled patent attorneys are keenly focused when they engage in disputes on behalf of our clients, leveraging all of their efforts to obtain a successful outcome. Such strategies may involve use of post-grant review and inter partes review proceedings before the Patent Trial and Appeal Board (PTAB).

Our team of attorneys has represented clients through inter partes reviews since their inception in 2012. This representation has spanned different technology areas on both the petitioner’s and patent owner’s sides. Our team of attorneys includes members that have been recognized by Patexia Insights for their skill in this area of patent law. In 2024, Patexia named PV Law as a Top 100 Most Active Law Firm and a Top 100 Best Performing Law Firm for PTAB proceedings. In 2023, Patexia named PV Law as a Top 50 Most Active Law Firm and a Top 100 Best Performing Law Firm for PTAB proceedings. In addition, individual members of our team have been recognized by Patexia as the Top 250 Most Active Attorneys and Top 250 Best Performing Attorneys for the PTAB proceedings in 2024 and 2023.

Inter Partes Review

Inter Partes Review is an administrative proceeding before the PTAB challenging the validity of a patent under 35 U.S.C. § 102 or § 103 (i.e., anticipation or obviousness) 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 challenged claim. The owner of the patent has three months after the PTAB issues a notice that a filing date for the petition has been granted to file a preliminary 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 from institution to adjudicate the matter.

During the pendency of this proceeding, concurrent patent litigation in the Federal District Court may be stayed.

What Role Does Expert Testimony Play In Your Inter Partes Review?

In the forum of the Patent Trial and Appeal Board (PTAB), a sophisticated expert declaration transforms abstract theories into a concrete technical roadmap for the presiding administrative patent judges (APJs).

An expert should provide granular evidence on:

• Claim construction and technical context: The expert must anchor the proposed construction of claim limitations, including means-plus-function terms, in the context of the understanding of a person having ordinary skill in the art (POSITA). This ensures that the boundaries of the claim are neither unfairly expanded nor artificially narrowed.
• Analysis of prior art teachings: Experts provide the connective tissue between the prior art’s disclosures and the claim elements. They ensure that the PTAB understands not only what a reference says but also what it does and does not teach to a POSITA.
• The motivation to combine under 35 U.S.C. § 103: Beyond identifying claim elements in the prior art, the expert must articulate or evaluate a proposed reason to combine prior art. This involves navigating the KSR framework to explain why a POSITA would have or would not have been prompted to modify a reference or integrate multiple references with a reasonable expectation of success.
• Evaluating secondary considerations: Experts must analyze objective indicia of nonobviousness. This includes evidence of commercial success, long-felt but unresolved need, or the failure of others and determining whether a nexus exists between these factors and the claimed invention.

At PV Law LLP, we rigorously oversee the development of expert declarations, ensuring that the expert’s opinions are effectively presented within the relevant legal framework. Among other things, we avoid the pitfalls of conclusory statements, which the PTAB frequently disregards.  We further work with experts in advance of their depositions, to ensure they are best positioned to defend their opinions against the probing of cross-examination. By aligning technical mastery with trial-tested legal strategy, we aim to have our client’s  expert voice as the most credible one in the room.

The cornerstone of any successful IPR strategy is the proper definition and application of the POSITA. Because the patent and prior art are properly viewed from the perspective of this hypothetical artisan, the expert must meticulously fashion a lens for the PTAB to see the evidence in the same light.

What Is The Impact Of Statutory Estoppel?

Initiating or defending an IPR has consequences beyond the PTAB. Under 35 U.S.C. § 315(e), the doctrine of statutory estoppel potentially creates a one-and-done environment designed to promote judicial economy.

These doctrines require a deep understanding of how PTAB outcomes crystallize into permanent bars in parallel district court litigation or International Trade Commission (ITC) investigations.

Estoppel Against The Petitioner

Pursuant to § 315(e)(2), a petitioner in an IPR that results in a final written decision is estopped from asserting in a civil action that a claim is invalid on any ground that the petitioner raised or reasonably could have raised during the IPR. What grounds a petitioner “reasonably could have raised” is a potential danger zone for petitioners. It encompasses not only the grounds presented but also any ground that a diligent search would have uncovered. When representing a petitioner, our firm focuses on identifying and proceeding with the best prior art. We take precautions to avoid triggering an estoppel that leaves a client with limited defenses in infringement litigation.

Estoppel Against The Patent Owner

While much of the focus of estoppel centers on the petitioner, IPRs can create estoppel against the patent owner. A patent owner is precluded from taking positions in the USPTO that are inconsistent with the final written decision regarding canceled claims. The doctrine of prosecution history estoppel also looms large. If the patent owner makes statements during the IPR to distinguish the prior art, it can limit the scope of the claims, including under the doctrine of equivalents, in future enforcement actions. When representing patent owners, our firm carefully crafts arguments to avoid or limit estoppel that could hurt licensing and enforcement actions.

Can The Parties Involved In An Inter Partes Review Settle?

Parties involved in an Inter Partes Review (IPR) can and often do settle. If a settlement is reached, the parties involved must file a written agreement with the PTAB, along with a copy of the settlement agreement, which then typically leads to the termination of the review. At PV Law, we will guide you through the negotiation and settlement process.

Can A Final Inter Partes Review Be Appealed?

After the conclusion of an inter partes review, you usually can appeal the final written decision by the PTAB. Parties wishing to challenge the PTAB’s decision can appeal to the United States Court of Appeals for the Federal Circuit. This appeal must be filed within a specific timeframe following the decision. The Federal Circuit reviews the administrative record established in the PTAB’s proceedings and considers legal arguments from both parties before issuing a decision.

Sophisticated And Effective Representation

At PV Law, our seasoned attorneys, with our deep industry experience and technical knowledge, stand ready to represent clients throughout the appellate process, ensuring meticulous preparation and strong advocacy during the appellate process.

No matter the challenge, our team of attorneys based in Washington D.C. has the skills to take on any patent dispute for our clients.